Sega’s game Crazy Taxi, released in 2000, required players to act as a taxi driver and earn money by performing extreme stunts and shuttling passengers to their destinations as quickly as possible. The Simpsons: Road Rage was released in 2001 and features similar game play of racing to get passengers to destinations and completing missions to collect money. Sega brought this lawsuit at the end of 2003 claiming the defendants’ game was an obvious rip-off of Crazy Taxi because it copied certain gameplay elements such as using arrows to direct the player where to go and having pedestrian characters jump out of the way of cars.
Sega alleged the game was designed to “deliberately copy and imitate” Crazy Taxi and cited game reviews that noted the similarities between the games to support its accusation. One such review called Road Rage a “shameless incident of design burglary.” An author from shacknews.com noted that many lawsuits complaining about knock-off video games are “groundless” but that he knew “several people who said that Road Rage is so much like Crazy Taxi that until [he] told them otherwise, they assumed it was licensed from Sega.” Look at the screenshots below to compare the games yourself:
If I (Ross) were a betting man (oh yeah… I AM a betting man), my money would be on invalidity. Just take a look at the last independent claim in the patent:
25. An electronic device for displaying a game in which a movable object which is movable in a virtual space gets a specific object at a prescribed position in the virtual space and is moved to a destination in the virtual space, comprising:
display means for emphatically displaying a position of the specific object.
Really? Really?!?! Does Sega believe it is the first game to “emphatically display” an object to which another movable object can navigate? Yeah, I bet Fox settled cheap…
Further to the previous post on the Supreme Court’s decision in Bilski v. Kappos, here is a link to an article discussing potential impacts of the decision on the gambling industry. The article quotes Shawn Gorman and Charles Miller of Banner & Witcoff, LTD’s Chicago Office. Free registration at gamingcompliance.com is required to view the article.
It seems that Gibson’s efforts to enforce its musical concert participation patent (U.S. Patent No. 5,990,405) have officially ended. Previously we told you that Gibson’s Tennessee case against Harmonix (and its “Rock Band” game) was on its way back on track after being on hold for a while. While it was on hold, a California court ruled that the same patent did not cover Activision’s “Guitar Hero” game, and it seemed likely that the Tennessee court would end up doing the same for “Rock Band.”
On Friday, the Tennessee court dismissed the case in view of a settlement that the parties had reached. This dismissal would appear to end the battle over this patent.
Settlement terms are confidential, although we can speculate that the things that happened while the case was on hold did not make Gibson’s life easy. First, proceedings at the Patent Office suggested that the “musical instrument” required by the Gibson patent had to be capable of making music. This may have caused Gibson to drop its claims against the “Guitar Hero” and “Rock Band” guitars (I’ve never been able to make actual music with those things), and the holdout claims may have been leveled against the drums in the “Rock Band” game (on the theory that the drums could at least still make music).
Second, when the California court ruled that the Activision “Guitar Hero” game was not covered by the patent, the California court doubted whether the patent covered any interactive video game at all (the patent’s description focuses on letting a user simulate participation in a musical concert, which arguably is not an interactive game type of thing). Even if Gibson was now only focusing on the “Rock Band” drums as being “musical instruments” to get around the first issue, this finding by the California court would still have been thorny for Gibson to get around.
The vast majority of cases settle before the end of trial and appeals. Mounting evidence and court rulings developed during the case help resolve points of contention, and make the chances of success clearer for both parties to see, and eventually the parties are able to make the business decision to end it at terms they can live with. With the settlement in this case, here’s hoping Gibson, Activision, Harmonix and the others can move on and give us all the next generation in great musical games!
The Magnavox Co., et al. v. Chicago Dynamic Industries, et al.
201 U.S.P.Q. 25 (N.D. Ill. 1977)
For those of you who love home video games as much as we do, the following lawsuit will be of interest.
The case concerns the Magnavox Company (makers of the Odyssey) who released a ping-pong style game you may have heard of: Pong. The defendants in this case released similar ping-pong games and Magnavox sued for patent infringement.
At issue in the case were three similar patents that all dealt with a “Television Gaming Apparatus.” While there were several questions at issue in the case, the court focused on the issue of whether the patents were obvious or anticipated in light of one another, as either finding would lead to invalidity.
On April 17, 1973, United States Patent 3,728,408 (“the ‘408 patent”), was issued to Ralph Baer. In his oral judgment of the case, District Judge Grady commented: “The ‘408 patent, I think, is the pioneer patent in this art . . . with the players participating in the game in an environment such as a home or some place where a large computer would clearly not be available.” After issuance of the ‘408 patent, for the first time, video games would be brought to the home.
Two years later, on August 5, 1975, William Rusch received a similar television patent. This patent, United States Patent RE28,507 (“the ‘507 patent’), “discloses a movable hitting spot which is controlled by the player and which, by striking a hit spot, can change the direction of that hit spot.” The ‘507 patent used the term “distinct motion,” which Judge Grady interpreted as referring not to “a predictable motion,” but rather to motion that is different from the motion that characterized the hit spot immediately prior to the striking of the hit spot. This idea of changing the direction of the hit spot was not present in the development of games at this time. Before this patent, a player would simply turn a knob which set in motion a series of events that he had no further control over. After the ‘507 patent, however, players could now control the movement of the ball based upon the area of the hit spot the ball struck!
One question presented to the court was whether the feature of patent ‘507 was obvious at the time of its production. Others had imitated the ‘507 patent in similar ping-pong style games, but Judge Grady found that the novel feature of ‘507 was not obvious. In particular, the judge relied on the testimony by people from RCA who admitted that they had the mechanical capability to create this feature, but were going in a different direction of development at the time.
The next issue concerned what knowledge, if any, the patent examiner had when the ‘507 patent was examined for re-issue. The ‘408 patent, awarded before the ‘507 patent, should have been mentioned in the application, but it was not. The court sought to determine if the patent examiner had knowledge of the ‘408 patent and was actively trying to cover it up in his issuance of the ‘507 patent. Judge Grady determined that since the ‘507 patent was neither anticipated by nor obvious in light of the ‘408 patent, the patent examiner would have reached the same conclusion and awarded the ‘507 patent.
The next issue involved another television gaming apparatus patent, United States Patent RE28,598 (“the ‘598 patent”) which was issued on October 28, 1975. This patent made improvements to the visual reproduction in ‘507. Judge Grady found that ‘507 anticipated the ‘598 patent and also that ‘598 patent was obvious in the light of ‘507. The court determined that the ‘598 patent rectified some of the visual reproduction in ‘507 which, while an improvement, was not patentable. The ‘598 patent simply used the same type of circuitry in a more efficient way to achieve better results. As a result, 28,’598 patent was found invalid by Judge Grady as being anticipated by and obvious in view of the ‘507 patent.
Finally, Judge Grady turned to the question of whether the defendant’s Pong-like games infringed the ‘507 patent. The court found that the games did infringe the claims of the ‘507 patent “to the extent that they contain or use a player-controlled movable hitting symbol which, when it coincides with a hit symbol, causes a change in direction of that hit symbol.” Because all of the defendant’s games featured this characteristic, they were all held to infringe on ‘507.
The defendants made several arguments to provide that their games differed from the ‘507 patent. The judge, however, found these arguments to be immaterial and ruled against them on all counts. The first attempt by the defendant was focused on the influence of the direction of the ball by the place on the paddle where the ball strikes. In the ‘507 patent, when a ball in the game comes into contact with a hit symbol it changes the direction of that hit symbol in a distinct way. The defendants argued that the games do not meet this claim because the direction of the ball cannot be predicted after it strikes the paddle. Judge Grady disagreed, however, ruling that “distinct” meant “simply a motion that is different from the motion characterizing the ball immediately before the coincidence.”
This early lawsuit showed that courts were prepared to handle video game patent law, and also was a testament to the strength of patents in the video game industry. For more information on Mr. Baer’s early products, check out Ralph Baer’s web site, which has many more details about his inventions and his trials and tribulations getting them produced!
Some of you may remember twin martial artists Billy Lee or Jimmy (who also went by Hammer and Spike). For those not familiar with the duo, they can be found in the 1987 beat ‘em up game “Double Dragon.” Hammer and Spike were the subject of this 1989 lawsuit. Taito is a Japanese corporation that sells video games and electronic printed circuit boards used in coin-operated video game units. Taito is the owner of United States Copyright Registration No. PA-327-710, issued June 26, 1987, for the video game audiovisual work Double Dragon.
Red Baron operated arcades where it allowed the public to play games. Red Baron, without license from Taito or Taito America, purchased circuits of Double Dragon from Japan and fitted them into their already existing game units, making the game playable to the customers. Taito took offense, arguing that they had intended the Double Dragon game to be sold in the United States as a complete video game unit, not just its circuit board. Taito claimed that each of the boards displayed the following restrictive note: “This game is for use in Japan only. Sales, exports, or operation outside this territory may violate international copyright and trademark law and the violator subject to severe penalties.”
The question in the case was whether Red Baron infringed Taito’s copyright in “Double Dragon,” when Red Baron imported the game from Japan and installed it in its video arcades for public enjoyment. The district court ruled that Red Baron did not infringe upon Taito’s copyright. This, of course, led to an appeal to the Fourth Circuit . . .
On appeal, Taito argued that it had a separate and distinct right to “perform” Double Dragon, and that it had not conferred this right on Red Baron. As a result, Red Baron infringed Taito’s copyright by its activities in making use of the circuit boards available to the public for a fee.
The court had to determine the following: 1. whether Red Baron’s use of Double Dragon constituted a public performance within the meaning of § 106 (4) and if so to consider 2. whether the first sale doctrine has any application to the performance right as distinguished from actual ownership of the copyrighted work.
A Public Performance
To “perform” a work and to perform it “publicly” are defined by the Copyright Act, 17 U.S.C. § 101 et seq.
“Perform” is defined as: “to recite, render, play, dance, or act [a work], either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.”
“Public” performance is defined as: “To perform . . . a work ‘publicly’ means- (1) to perform . . . it at a place open to the public . . . .”
The court concluded that Red Baron publicly performed Double Dragon because once a coin was inserted into the machine the television monitor displayed a series of images while the speakers made audible accompanying sounds. Also, because Red Baron’s video arcade was open to public and it was Red Baron’s aim to attract members of the public to its establishment, Red Baron’s arcade was considered a public place.
B. The First Sale Doctrine and the Performance Right
The second issue the court ruled on was Red Baron’s assertion that by selling the circuit boards, Taito intended to transfer the performance right. The court concluded that the first sale doctrine did not apply to the performance right and that Taito America possessed and retained a valid copyright in the public performance of Double Dragon in the United States. They also concluded that since Taito had not granted a performance license to Red Baron, the latter was guilty of copyright infringement.
In this early gray-market goods case, the United States Court of Appeals for the Fourth Circuit reversed the judgment of the district court and remanded the case for further proceedings.
Okor v. Atari Games Corp. et al76 Fed. Appx. 327 (Fed. Cir. 2003).
I. Statement of Facts
This case is one in a series of attempts by Joseph Kwame Okor to enforce two patents against Sony and other companies. The patents at issue, U.S. Patent Nos. 4,126,851 (“851 Patent”) and 4,127,849 (“849 Patent”) both name Okor as the sole inventor. The ‘851 Patent’ involves a programmable television game system and the ‘849 Patent’ involves a system for converting coded data into display data.
II. Procedural History
In 2002, Okor filed three separate lawsuits:
1. Alleging infringement of the ‘851 Patent’ by a number of arcade-game manufacturers (Civil Action No. 00-11503)
2. Alleging infringement of the ‘849 Patent’ by the same manufacturers (Civil Action No. 00-11504), and
3. Alleging infringement of the ‘851 Patent’ by Sega, Nintendo, Sony, and nine companies who were connected to Sega’s and/or Nintendo’s products (Civil Action No. 01-10610)
The district court granted summary judgment of noninfringment of both the ‘851’ and ‘849 patents’ to the arcade-game manufacturers, and dismissed the claims against Sega, Nintendo, Sony, and the other nine defendants on the grounds of: 1. Claim Preclusion and 2. Issue Preclusion.
Okor appealed the decision of the United States District Court for the District of Massachusetts.
The United States Court of Appeals for the Federal Court analyzed the case using the district court’s case numbers:
A. Civil Action No. 00-11503
Against the arcade-game manufacturers, Okor asserted only claim 1 of the ‘851 Patent’, which states:
“A system for generating and controlling symbol-producing signals for display on the screen of a television receiver, comprising: (e) changeable memory means providing program instruction” 851 Patent, col. 8, II. 15-49.
The Federal Court held that the accused products did not included a “changeable memory means” required by limitation (e). The court found that all arcade-game manufacturers used fixed, “read-only” memory boards that could be changed by “taking the devices apart.” The court concluded that “no reasonable juror could find the fixed memory boards in defendants’ arcade-game machines to be equivalent to the “changeable memory means” in limitation (e).
B. Civil Action No. 00-11504
Okor asserted only claim 1 of the ‘849 Patent’ against the arcade-game manufacturers which reads:
“A system for converting coded data signals for presentation as display symbols on a display devise comprising:… (g) said dot generator including x and y comparators and x and y stacks operatively connected to one another and to said display computer, said x and y comparators receiving, respectively, x and y counts corresponding to the x and y addresses of said symbols.” ‘849 Patent’, col. 14, II. 58-68, col. 15, 11. 1-19.
The district court granted summary judgment of noninfringment because defendants’ machines failed to read on limitation (g). The court found that limitation (g) described a “stack” memory system which differed from other memory systems, including “frame-buffer, bit-map” systems. The court also held that all arcade games operate by means of frame buffers and that none of the accused devises literally read on limitation (g). Because Okor had added limitation (g) through amendment, the district court held Okor was estopped from asserting infringement by equivalents.
C. Civil Action No. 01-10610
Okor alleged that Sega’s and Nintendo’s home video-game systems infringed the ‘851 Patent’, and also alleged that Sony and nine other defendants were liable for being connected to Sega’s and/or Nintendo’s systems. The district court granted a motion to dismiss on two grounds:
1. Claim Preclusion
The First Circuit has established three required elements for claim preclusion:
“(1) a final judgment on the merits in an earlier suit, (2) sufficient identicality between the causes of action asserted in the earlier and later suits, and (3) sufficient identicality between the parties in the two suits.” Mass. Sch. of Law at Andover, Inc. v. American Bar Ass’n, 142 F.3d 26, 37 (1st Cir. 1998) (quoting Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 755 (1st Cir. 1994).
Here, the district court found that all three of the factors for claim preclusion were met. Therefore, Okor’s new claims against Sega and Nintendo suing on the basis of the very same home video game consoles found not to infringe patent 851 in previous decision, are precluded.
2. Issue Preclusion
The First Circuit applies issue preclusion where “(1) an earlier decision involved ‘the same issue of law or fact’ as a later case, (2) ‘the parties actually litigated the issue’ in the earlier case, (3) the earlier court ‘actually resolved the issue in a final and binding judgment,’ and (4) the earlier court’s ‘resolution of that issue was essential to its judgment (i.e., necessary to its holding.)” Monarch Life Ins. Co. v. Ropes & Gray, 65 F.3d 973, 978 (1st Cir. 1995).
The district court determined that Okor’s claims against Sony and the other nine defendants failed because Okor was precluded from arguing that Sega’s and Nintendo’s products infringed the ‘851 Patent’, because Okor had failed to provide evidence that any of Sega’s and Nintendo’s video game consoles had been configured in a potentially infringing manner.
The United States Court of Appeals for the Federal Circuit affirmed the district court’s judgments in all three cases.
Patent Rights Protection Group, LLC (“PRPG”), a patent-holding company, previously filed suits in the District of Nevada accusing various organizations of allegedly infringing U.S. Patents No. 6,475,087 (‘the ‘087 patent) and No. 6,860,814 (the ‘814 patent). The related patents disclose video gaming machines with a video display mounted to a door. Claim 1 of the ‘087 patent is provided below.
1. A gaming apparatus comprising
a cabinet, a door moveable between a first position and a second position, said door in said first position cooperating with said cabinet to define a generally closed interior space, said door in said second position permitting access to said interior space, said door having an opening therein;
at least one support mounted to said cabinet for configuring said gaming apparatus as a reel-type game when said support supports a reel mechanism in said open space, at least one mount for mounting a display element to said door for viewing through said opening, said display element comprising either reel-screening glass or a video display, said opening aligned with a reel mechanism when said reel mechanism is mounted to said at least one support and said reel-screening glass is mounted to said door, whereby reels of said reel mechanism are viewable through said reel-screening glass when said door is in said closed position, and
whereby said gaming apparatus is configured as a video type game when a video display is mounted to said door said video display is viewable through said opening.
PRPG accused the various organizations, including out-of-state companies SPEC and (“SPEC”) and Video Gaming Technologies, Inc.’s (“VGT”), of infringing the patents by “displaying, using, and offering for sale cabinets that house gaming machines at trade shows in Nevada.” SPEC and VGT each separately filed motions to dismiss PRPG’s relevant suits in Nevada, arguing that their contacts with Nevada were insufficient for the court to exercise personal jurisdiction. Specifically, SPEC and VGT each argued that they:
were not registered to do business in Nevada;
did not manufacture any products in Nevada;
their websites were not specifically targeted to Nevada residents;
did not have sales agents, employees, manufacturing facilities, bank accounts, or telephone listings in Nevada.
VGT further asserted that it did not directly market or derive revenue from Nevada. Similarly, SPEC acknowledged mailing brochures to eight potential customers within Nevada, but only generated de minimis sales in the state. Dismissal was also sought on the grounds of improper venue and issue preclusion.
Applying 9th Circuit law, the court held that Nevada did not have personal jurisdiction over SPEC and VGT. The court also denied jurisdictional discovery, however, did not specifically address improper venue or issue preclusion, as dismissal of the suits rendered those issues moot.
PRPG appealed the dismissal of the suits and denial of jurisdictional venue to the Federal Circuit. Citing Supreme Court precedent, the Federal Circuit noted that the determination of whether personal jurisdiction may be exercised “remains whether the defendant purposefully established minimum contacts” in the relevant state and whether “personal jurisdiction would comport with ‘fair play and substantial justice.’ i.e., whether exercising jurisdiction would be reasonable.” The court found that each SPEC and VGT had minimal contacts, specifically each attended trade shows in Nevada through the 1990s, 2000s, and even as recently as 2008. The court then focused on whether exercising personal jurisdictions over SPEC and VGT would be reasonable. In answering in the affirmative, the Federal Circuit held that SPEC’s and VGT’s “admitted presence at numerous trade shows in Nevada indicates that, despite their arguments to the contrary, neither company faces a particularly onerous burden in defending itself in Nevada.”
The court further addressed arguments relating to the economic hardship (or lack thereof) upon PRPG if forced to litigate the suits outside of Nevada. “Nevada has an interest in providing a convenient forum for all Nevada citizens, not just those who might face severe economic hardship if forced to litigate outside Nevada.” The decision continued to note that “[b]y providing a forum for [PRPG’s] claims against SPEC and VGT, Nevada spares [other states] the burden of providing a forum for [PRPG].” The decision also found that the district court abused its discretion when denying PRPG’s request for jurisdictional discovery. The case, therefore, was remanded back to the District of Nevada. Its case number is: 2:08-CV-00662 (D. NV).
Nintendo of America, Inc. (Nintendo) filed suit yesterday in a Washington district court, accusing an individual, Kevin Niu, of infringing Nintendo’s copyrights and trademarks in its Nintendo DS and Nintendo Wii. Specifically, Nintendo alleges that Niu makes and sells game copiers that are designed to copy the software in the game cartridges used by the Nintendo DS, and that he uses the “DS” and “Wii” trademarks on various websites to market the copiers.
As we read the complaint, it really struck us how history repeats itself, and how the battle between IP holders and alleged hackers/copiers is neverending. This post will just highlight one example tactic from each side of the battle.
From the hacker/copier side, those guys have been trying to fake out consoles for as long as consoles have been around. In the Nintendo suit, the copier product (said to be marketed under several names, including M3 DS Real Card, DS Linker, R4 DS Revolution, etc.) allegedly included a physical interface that would fit in the slot of a Nintendo DS, and allowed owners to connect a portable memory device containing downloaded/pirated copies of games. According to Nintendo, the physical interface (and some software associated with it) would fool the console into thinking it was talking to an authentic cartridge, and the portable memory device would then be permitted to load all sorts of pirated games for play.
However, trying to fake out consoles has been around for decades. In 1983 (before the crash of that year, and on the heels of the unfortunate ET The Extra Terrestrial game), Atari, Inc. prevailed on a similar suit against a company (JS & A Group, Inc.) that allegedly marketed a device called the PROM BLASTER. The PROM BLASTER had two slots for Atari 2600 cartridges: one for an original cartridge, and another for a blank, and it let you make a “backup” copy of the original. The court in that case didn’t buy the defendant’s argument that the device was only used for legitimate backup purposes, and enjoined them from selling the product.
From the console side, console makers have their own strategies for protecting their IP. Nintendo’s complaint alleges that when the accused device runs a game on the Nintendo DS console, a NINTENDO logo first appears. Nintendo alleges that the display of this logo when playing a game using the unauthorized device is likely to cause confusion on the part of consumers.
This reminded us of an earlier case. In 1992, Sega Enterprises, Ltd. filed suit against Accolade, Inc. for making unauthorized cartridges for the Sega GENESIS system. The GENESIS console was programmed to authenticate a cartridge upon bootup, and then display the following message when an authorized cartridge was present: “PRODUCED BY OR UNDER LICENSE FROM SEGA ENTERPRISES LTD.” The Accolade cartridges were designed to function in the GENESIS console, so this message displayed there as well, and Sega argued that this display was a trademark violation that would confuse consumers. Under the facts of that case, the court ultimately found that consumers were not likely to be confused, but only time will tell how this issue is resolved in the current Nintendo case.
In summary, and as you probably all know, these kinds of IP battles will probably never go away, and I’m sure we’ll see similar facts and issues pop up along the way. They’re all interesting, and we should be sure to learn what we can from them. Thanks for reading!
Nintendo v. Niu, 10-cv-00791 (W.D. Wash, filed 5/11/2010)
Atari v. JS & A Group, 597 F.Supp. 5 (N.D. Ill, 1983)
Sega v. Accolade, 977 F.2d 1510 (9th Cir. 1992)
On Monday, April 12, 2010, Blizzard filed a lawsuit in federal court in California against Justin Marshall and five unnamed defendants for copyright infringement, circumvention of copyright protection systems in violation of the Digital Millennium Copyright Act (“DMCA”), breach of contract, and tortious interference with contract.
In its complaint, Blizzard alleges that Marshall is the leader of a sophisticated group of hackers (known as “StarCrack”) who are working together to develop “rogue” servers that can emulate Blizzard’s own Battle.net, thereby enabling people with pirated copies of the StarCraft 2 game client (which is still in a closed beta test) to enter the game’s online multiplayer environment.
According to the complaint, the real Battle.net servers validate the authenticity of a user’s StarCraft 2 game client and the user’s Battle.net account at login. If authentication fails, the Battle.net server prevents the StarCraft 2 game client from “unlocking” the copyrighted game content associated with the game’s online multiplayer environment. When a pirated StarCraft 2 game client connects to the StarCrack server, however, the StarCrack server allegedly bypasses the authentication process and unlocks the online multiplayer mode in the pirated StarCraft 2 game client. According to Blizzard, the defendants’ actions constitute copyright infringement, circumvention in violation of the DMCA, breach of contract (i.e., breach of the license agreements for StarCraft 2 and Battle.net), and tortious interference with contract (i.e., causing others to breach these license agreements).
We will continue to follow this case, which is Blizzard Entertainment, Inc. v. Marshall (Case No. 10-cv-00450-DOC-RNB), filed April 12, 2010, in the U.S. District Court for the Central District of California.
On Tuesday, April 13, 2010, the U.S. Court of Appeals for the Federal Circuit ruled in favor of Nintendo in Anascape, Ltd. v. Nintendo of America Inc. (Docket No. 2008-1500), a patent infringement case appealed to the Federal Circuit from the U.S. District Court for the Eastern District of Texas (Case No. 9:06-CV-158).
In 2008, the District Court ruled that certain Nintendo video game controllers infringed U.S. Patent No. 6,906,700 (“the ‘700 patent”), which was owned by Anascape. Nintendo subsequently appealed the District Court’s ruling to the Federal Circuit, resulting in this decision.
Writing for a three-judge panel of the Federal Circuit, Judge Newman explained that the controlling issue on appeal was whether the ‘700 patent could claim priority to an earlier Anascape patent, namely, U.S. Patent No. 6,222,525 (“the ‘525 patent”).
In particular, the ‘525 patent had a filing date of July 5, 1996, while the ‘700 patent had a filing date of November 16, 2000. Both patents deal with video game controllers that receive user input in six degrees of freedom (“DOF”), but the ‘525 patent describes a controller with a “single input member” (e.g., a single trackball), while the ‘700 patent concerns itself with a control with multiple input members (e.g., two trackballs).
The question of priority was at the core of the Federal Circuit’s decision in this case, however, because after the filing date of Anascape’s ‘525 patent but before the filing date of Anascape’s ‘700 patent, Sony released its DualShock (and DualShock 2) controller in the U.S. And as Anascape conceded, if the ‘700 patent could not claim priority to the ‘525 patent, then Sony’s DualShock controllers would be prior art to the ‘700 patent and render the ‘700 patent invalid.
Relying on established Federal Circuit precedent and a recent ruling concerning the “written description” requirement that U.S. patents must meet, Judge Newman explained that “[t]o obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Slip Op. at 3.
In deciding whether this requirement was met here, the court reviewed the claims, specification, and drawings of the ‘525 patent. In conducting this review, the court observed not only that the claims, specification, and drawings of the ‘525 patent focused solely on “single input member” controllers, but also that the specification of the ‘525 patent asserted that multiple input member controllers had “significant disadvantages.”
After discussing the differences between the ‘700 patent and the ‘525 patent in greater detail, the court ultimately decided that the Anascape’s ‘700 patent could not claim priority to its ‘525 patent. Based on this conclusion, the court ruled that Anascape’s ‘700 patent was invalid (as a result of Sony’s DualShock controllers counting as prior art) and accordingly reversed the lower court’s ruling that Nintendo infringed.
We will keep you posted of any further updates in this case.
If you’re planning to attend the 2010 Triangle Games Conference in Raleigh, NC, please stop by and say ‘hello’!
Steve, Ross, and Shawn are presenting a panel on recent developments in video game lawsuits, and lessons game developers can learn from them. Our panel’s at 9:30am on Thursday.
And while you’re here, check out the many other presentations and events on the business and development of video games. The speaker agenda is here:
See you there!
Back in 2007, Fenner Investment Ltd. sued Microsoft, Nintendo and Sony for infringement of U.S. Patent No. 6,297,751, relating to low voltage joystick port interfaces. Claim 1 is reproduced below:
1. An interface between a joystick device having a first source voltage and
a processor, comprising:
a Resistor-Capacitor (RC) network, connected to the joystick device, said
RC network having a capacitor that generates an analog joystick position
measurement signal; and
an interface circuit having a second source voltage that is lower than the
first source voltage, including
a buffer circuit, in a first operation mode of said interface, receiving
said analog joystick position measurement signal, outputting a first logic state
as a digital signal before said analog joystick measurement signal exceeds said
predetermined threshold, and outputting a second logic state as said digital
signal after said analog joystick measurement signal exceeds said predetermined
a pulse generator generating a pulse based on said digital signal in said
first operation mode of said interface, a width of said pulse representing a
coordinate position of said joystick device, the capacitance value of said
capacitor being a function of said predetermined threshold that prevents
deviation of the width of said pulse from expected values.
In 2009, the U.S. District Court in the Eastern District of Texas held in favor of the defendants, finding that summary judgment was appropriate with respect to both the issue of direct infringement and and the issue of the doctrine of equivalents. A summary of the issues and the District Court’s decision can be found here.
Subsequently and as noted here, Fenner Investments filed a notice of appeal in the U.S. District Court for the Eastern District of Texas on July 15, 2009. Specifically, Fenner appealed the final order granting summary judgment of noninfringement to Microsoft and Nintendo made in March 2009 and an August 2008 opinion interpreting the patent claim language at issue in the case.
Unfortunately for Fenner Investments (and fortunately for the defendants), the Federal Circuit issued its opinion on March 15, 2010, upholding the District Court’s decision. In addition to affirming the District Court’s findings, the opinion also indicates that the Federal Circuit does not address Fenner Investments’ arguments with respect to the construction of the term “processor.” The opinion does not provide an explanation as to why Fenner Investments’ arguments were not addressed by the court. The opinion can be found here.
On Friday, March 5, 2010, the U.S. District Court for the Northern District of California granted Sony’s motion for summary judgment in Bissoon-Dath v. Sony Computer Entertainment of America, Inc., Case No. 08-cv-012350MHP.
Bissoon-Dath and a fellow plaintiff are screenwriters who previously accused Sony of copying elements of several of the plaintiff’s stories in developing Sony’s God of War video game.
In considering this motion for summary judgment, the court evaluated the plaintiffs’ claims for copyright infringement to determine whether “no reasonable juror could find substantial similarity of ideas and expression” between the plaintiffs’ stories and God of War. In particular, the court explained that the legal standard for copyright infringement required a plaintiff to show ownership of the copyright and copying of protected elements.
This case turned on the issue of copying, and the court evaluated whether the plaintiffs’ stories and God of War were “substantially similar,” which the plaintiffs had to establish to prove copying. In doing this, the court compared the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works.
In addition, the court noted that general plot ideas and other scenes that flow naturally from “unprotectable basic plot premises” are not protected by copyright law and thus not considered when the works are compared. As the court put it:
“In such a case, it is particularly important for the court to use its own ‘Blade of Chaos’ to slice or filter out the unprotectable elements. Greek gods, dialogues among them about mortal affairs, rivalries among the gods, and mythical beasts such as the Hydra or the Nemean Lion are unprotectable elements; it is uncontroversial that they have been used widely in both ancient and modern artistic works, in the naming of astronomical bodies and spacecraft, and in other fields.” Slip Op. at 19-20.
Ultimately, after comparing all of the elements listed above (i.e., the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works), the court concluded that no reasonable juror could find substantial similarity between the plaintiff’s stories and God of War, and the court therefore ruled in favor of Sony.
So word has hit the Internet that Facebook’s U.S. Patent No. 7,669,123, entitled “Dynamically Providing a News Feed About a User of a Social Network,” issued last week, and it’s certainly created quite the buzz in chat rooms and web sites all over. Some folks seem outraged at the patent system, some are outraged at businesses who seek patents, and others seem outraged that those folks are outraged at the patent system.
This happens several times a year, whenever a high profile patent is issued, and I figured it might be helpful to provide some sort of Patent Outrage Guide, to help people understand their rage (or lack thereof). So if you’re outraged and want to know why, or if you simply want to be outraged and want to know how, please read on …
I. What’s it “Cover”?
First of all, you can’t be outraged about a patent if you don’t know what the patent actually “covers.” A patent’s scope is determined by the claims that appear at the end of the document. Think of each claim as a standalone list of things or steps that a product would have to have or do in order to infringe that claim. If your product has every limitation in one claim, then congratulations, you infringe that claim and that patent. If your product is missing at least one of the limitations of a claim, then congratulations, you don’t infringe that claim.
That sounds simple, but we’re lawyers, so it can’t be simple. The claims are not read in a vacuum. Instead, they are read and interpreted in the context of the rest of the description in the patent. So if a patent describes a “nut” as being the kind you screw on a bolt, the patentee probably can’t say that a peanut infringes that limitation.
To further complicate things, the claims are also interpreted in view of the prosecution history. The prosecution history of a patent is the back-and-forth written record between the applicant (inventor) and the patent office that ultimately resulted in the patent getting granted. As many of you know, the patent office is charged with examining patent applications, and only granting the ones that claim new and non-obvious inventions. If the applicant had to make arguments about the scope of his/her claims to get it to issue (e.g., “my claimed ‘nut’ refers only to a peanut, and not a walnut”), then the claim will be interpreted with those arguments in mind – as a member of the public, you have the right to rely on those arguments in determining the proper scope of the patent’s claims.
II. That’s Too Broad!
Ok, so now you’ve got a handle on the patent’s scope, and you think it’s too broad (e.g., you think it describes something that’s been around forever). Should you be outraged? Maybe, but let’s put things in perspective. First of all, you might be reading the claims incorrectly. A claim is interpreted as a hypothetical “person of ordinary skill in the art” would, in view of the specification and file history mentioned above, so it’s quite possible that there are one or two key words lurking in the claims that are interpreted more narrowly than you think, rendering the patent narrower than you think.
However, it’s certainly possible that the PTO has issued a claim that is too broad. But before you get outraged at this, some perspective may be helpful. The PTO handles a MASSIVE number of patent applications. Over 17,000 were issued last month, and another 26,000 were published (new applications are typically published 18 months after filing). Each application probably has, on average, about 20 different claims (since that’s what you get “for free” when you file the application), and each claim can have a dozen or more limitations. To reject these claims for not being novel, the PTO has to search for evidence that every feature in these claims can be found in the prior art, and in the arrangement claimed. It’s certainly possible that, in the relatively limited amount of time an examiner can spend searching a particular case, the examiner might be unable to find evidence for one of those words. If that happens, the applicant deserves the patent.
Don’t know if that’s outrage-worthy, though. We aren’t outraged at the postal service for occasionally losing a letter – we understand it’s a necessary cost of having the service at all. Doesn’t the PTO deserve the same understanding?
III. The Companies are Evil!
Some critics argue that the companies seeking broad patents are somehow unethical for doing so. I’m no expert on defining what is or is not ethical for a business, but it seems to me that a business’s main goal is to stay in business. Part of that involves not doing things (e.g., kicking puppies, pulling wings off of flies, etc.) that would cause it to lose customers and go out of business, but the main goal has to be to stay in business. Indeed, a public company’s directors can be SUED by their shareholders if they don’t do a good job keeping the company afloat.
Patenting its own innovations helps companies stay in business in several ways. First of all, they can assert them to keep competitors out of the same market space. Second of all, simply having a collection of patents is useful when doing business with those competitors. Nobody wants to have to sue, so if two competitors each have formidable patent portfolios, they will be more likely to find a business solution to their differences.
So I’m afraid that on the whole “evil” front, I can’t fault the companies for seeking to protect their inventions. Of course, I’m a patent attorney, so I may be biased there.
IV. Patenting Software, Are you MAD?
Some of the posters clearly feel that software should not be eligible for patent protection. I can understand where they’re coming from. Good software programming practice involves writing code and modules that can be re-used, saving time the next time around. Sharing and building on each others’ work is just an integral part of good programming practice.
The tough part for those posters, though, comes from the fact that not everyone feels the same way. The developer who spent 6 months coming up with a novel and useful software routine doesn’t always want to just share that with everyone, especially if they don’t get anything comparable in return. Sure, it could be a nice thing to do, but is it worth going out of business, or getting sued by shareholders?
If you must get outraged at the patentability of software, then the target of your outrage shouldn’t be the PTO, or the companies, it should be Congress. They’re the ones responsible for writing the laws, and they alone have the power to rewrite them.
V. Conclusion – Be Happy
So as you’ve figured out by now, this biased patent attorney happens to think that most of the patent outrage is misplaced and/or undeserved. We all live and work under the laws and rules that are in place, and everyone’s just trying to get by. Thanks for reading!
Every gamer has anxiously awaited this message to appear – you may have just beaten the final boss level after several unsuccessful attempts or you may have finally beaten a friend’s high score. As we all know, bragging rights are useless until you can prove it. Thus, we anxiously await this very message or something similar. While this message is often the saving grace, there are times when this message provides false security. For example, the memory may be corrupt. While displeasing enough, losing earlier progress on that particular game only adds insult to injury.
According to the Patent Office records, Nintendo may have protection on certain methods and systems that ensure that a failure to save recent data will not also result in the loss of earlier game data. On February 2, 2010, the U.S. Patent and Trademark Office issued U.S. Pat. No. 7,654,904, entitled “Game machine, backup control program of game data and backup control method.” The patent notes that “preventing [the] loss of game data obtained by progressing through a game for long hours is critical for the player.” Independent claim 9 appears to be targeted towards a method that ensures that the previous saved data from the game is not overwritten if the most recent attempt to save updated game data is not successful. The claim recites:
9. In a game machine having a nonvolatile memory, said memory including a plurality of electrically rewritable game data backup storage areas, a method of backing up game data, comprising:
generating latest game data corresponding to latest conditions in a game being played;
designating one of said game data backup storage areas that contains an oldest written game data relative to game data written in other backup storage areas as a write-objective target for storing said latest game data and, when a write attempt to a first write-objective target is unsuccessful after a predetermined number of attempts, designating another write-objective target of next oldest written data; and precluding a writing of said latest game data into said another write-objective target and prohibiting further attempts to write to said backup storage areas when an attempt in writing to said first write-objective target backup storage area is unsuccessful after a predetermined number of repeated unsuccessful attempts and said another write-objective target contains the only remaining instance of saved older game data; and
causing said game machine to display an error message indicative of an unsuccessful saving of said latest game data and/or a broken backup storage memory condition, wherein a failure of a memory element in said electrically rewritable non-volatile memory does not result in an attempt to store game data in a last remaining backup area containing older game data.
As previously reported, Beneficial Innovations, Inc. (“Beneficial”) filed suit in the Eastern District of Texas accusing several entities of willfully infringing claims of U.S. Pat. No. 6,712,702 entitled “Method and system for playing games on a network.” Beneficial, a patent-holding company based out of Nevada, subsequently amended its complaint to include U.S. Pat. No. 6,183,366 entitled “Network Gaming System.”
On November 30th, Beneficial and three defendants – Digg Inc., CBS Interactive Inc, and Jabez Networks Inc. indicated that a settlement had been reached and filed motions requesting dismissal. The motions, which were granted by Judge Ward, dismissed all claims, affirmative defenses, and counterclaims between the three defendants and Beneficial with prejudice. While the terms of the settlements are confidential, the court’s order indicated that each party would bear their own legal fees and costs.
The ongoing litigation is Beneficial Innovations, Inc. v. Blockdot, Inc. et al., Case No. 2:2007cv00263 (E.D. Tex. 2007). We will continue to follow the litigation.
Activision has responded in federal court to a lawsuit originally filed in California state court by No Doubt over Activision’s use of the band’s likeness in “Band Hero.” According to Activision, the case implicates federal copyright law, and thus federal court (rather than state court) is the proper place for the litigation.
Previously, No Doubt sued Activision alleging, among other things, that Activision improperly used digital representations of the band members in unauthorized ways in making “Band Hero,” such as the way that the band members sing and dance in-game.
Now, in responding, Activision is denying all accusations of wrongdoing and arguing that all uses of No Doubt’s likeness are within the licensing contracts obtained from the band before the game’s release. Interestingly, there are also allegations that No Doubt’s contract with Activision does not include certain limits on the scope of the license that the licensing contracts of other artists include.
We will continue to follow this case.