Scott Kelly – Page 2 – Patent Arcade

Dec

2015

Appeal: Secure Axcess, LLC. v. Nintendo of America Inc.

Secure Axcess,
LLC. v. Nintendo of America Inc.

United States Court
of Appeals for the Federal Circuit

Filed December 2,
2015

Case No. 2015-1971

As you may
recall from an earlier post, Secure Axcess had filed suit against
Nintendo of America alleging infringement of U.S. Patent 6,522,309, entitled
“Multiscreen Personal Computer Display Method and Apparatus.” The Western
District of Washington entered a judgment of non-infringement in favor of
Nintendo.

The ‘309
patent is entitled, “Multiscreen Personal Computer Display Method and
Apparatus,” and it relates to a computer with multiple display capability. A
user can simultaneously display documents using a singular processed video data
signal source, on two or more screens. The ‘309 teaches a device termed a
“translative video adapter”, or TVA, which is used on two or more
screens to view and edit documents simultaneously. Secure Axcess asserted
that the Nintendo DS infringes the ‘309 patent with its dual-screen. As
previously reported, the district court found that Nintendo did not infringe
based on a claim construction that the TVA had to be a separate device.

‘309 Patent, Figure 1

Secure
Axcess has now filed an appeal with the Federal Circuit requesting the ruling
be vacated. Secure Axcess is primarily challenging the claim construction used
by the district court. Secure Axcess is arguing that the court improperly
interpreted the claims to include limitations that do not appear in the body of
the claims, and are otherwise inconsistent with Patent Number 6,522,309,
specifically “in holding that 1) the TVA must be a ‘detachable’ device; 2) the
TVA does not implement bidirectional communication, and 3) the TVA only
supports conversion of ‘analog’ video signals when construing the ‘309 patent
claims.” Opening Brief of Plaintiff – Appellant at 3, Nintendo of America v. Secure Axcess, LLC., No. 15-1971 (Fed. Cir.
Dec. 2, 2015).

We will keep you updated regarding future developments.Thanks to Josh Davenport for his assistance in preparing this update.

Dec

2015

Steam Under Fire – New Case: Ironburg Inventions v Valve (NDGA 2015)

Ironburg Inventions LTD vs. Valve Corp.

Northern District of Georgia, Case No. 1-15-cv-04219

December 3, 2015

In a new case, patentee Ironburg Inventions accuses Valve of infringing two game controller patents with its new Steam Controller. Ironburg operates in the US through Scuf Gaming, a manufacturer of custom video game equipment and accessories. The two patents in suit are U.S. Pat. Nos. 8,641,525 and 9,089,770 (a continuation of the ‘525 patent) and generally appear to relate to the placement of triggers on the back of a game controller. The claimed priority date of both patents is June 2011. Claim 1 of the ‘770 patent is representative:

1. A video game controller, comprising:

an outer case comprising:

a front and a back, wherein the back is opposite the front;

a top edge and a bottom edge, wherein the top edge is opposite the bottom edge;

a first handle adjacent a first side edge and a second handle adjacent a second side edge, wherein the first side edge is opposite the second side edge; and

a first back control and a second back control, wherein each of the first back control and the second back control is located at the back of the controller, wherein the first back control includes a first elongate member and the second back control includes a second elongate member;

wherein the first elongate member extends along at least half of a first distance between the top edge and the bottom edge, the first distance being measured along a longitudinal axis of the first elongate member; and

wherein the second elongate member extends along at least half of a second distance between the top edge and the bottom edge, the second distance being measured along a longitudinal axis of the second elongate member.

Figs. 1 and 3

This author is enjoying his Steam Controller so far, though he has not yet made much use of the buttons on the back. From its listing on Amazon, the back of the Steam Controller is reproduced below:

It seems as though one issue in this case will be whether the back triggers on the Steam Controller meet the specific physical requirements set forth in the claims.

One interesting civil procedure note about this case: the complaint appears drafted under the old barebones standards for patent infringement actions set forth in former Form 18. However, new rules requiring a more complete recitation of facts came into effect on December 1, 2015. The actual standards courts will hold plaintiffs to in their complaints remain to be seen, but it is likely that courts will require patentees to at least identify specific claims alleged to be infringed as well as provide some level of analysis as to how the claim is infringed. This complaint does not appear to identify any claims in particular (other than demanding relief for “infringement of one or more claims” of each patent), nor does it appear to address how the Steam Controller relates to any claimed features of the patents.

We will continue to watch this case for any interesting updates.

Nov

2015

Second Screen Game Software Patent Survives Alice – Timeplay v Audience Entertainment

Timeplay, Inc. v. Audience Entertainment, LLC

Central District of California

Case No. CV 15-05202

Patentable subject matter under 35 USC 101 has become a primary issue in most
patent cases since the Supreme Court’s Alice
decision in 2014. Many patents have been invalidated by courts as directed
to abstract ideas without significantly more.

In an order dated November 10, 2015, the Central District of
California has refused to invalidate a multiplayer video game patent (US Pat. 8,951,124) directed
to downloading separate game software to a controller that complements the main
game software. Audience Entertainment had argued that the claims were directed to “nothing more than the abstract idea of allowing multiple people to play a game together on a shared display using generic computer and communications hardware.” Timeplay responded that their patent “only exists in the field of multi-player video gaming” and that the claims “have core distinguishing features that a family playing Pictionary would never dream were necessary on game night.” (Opinion at 7-8).

Claim 1 of the ‘124 patent reads:

1. A multi-player game system comprising:

a game server configured to run a game software to facilitate a multi-player game, the game server further configured to provide display signals for displaying the multi-player game;

a display system having primary display means, the display system being configured to provide a primary game display of the multi-player game on the primary display means in response to the display signals;

a plurality of handheld game controllers, each handheld game controller having secondary display means and input means; and

communication controller for enabling communication between the game server and each handheld game controller;

wherein the plurality of handheld game controllers are located in proximity to the primary display means such that the primary display means is visible to game players manipulating respective handheld game controllers; and

wherein the game server is configured to download a game software module to each handheld game controller using the communication controller prior to initiation of the multi-player game, each game software module executable by the corresponding handheld game controller to enable the corresponding handheld game controller to provide a secondary game display on the secondary display means in response to player input received at the input means, wherein the secondary game display is complementary to the primary game display, and to enable participation in the multi-player game by the corresponding game player.

The Court agreed with Timeplay that the claims were not directed to an abstract idea and, further, that the recited claim elements amounted to significantly more than any abstract idea. In analyzing the claims for the presence of an abstract idea, the Court looked to the background section of the ‘124 patent and noted that the invention was disclosed in the context of multi-player gaming systems. The Court also noted that the presence of generic computer limitations did not itself render the claims directed to an abstract idea. (Opinion at 8).

In assessing the second portion of the Alice framework, whether the claims added significantly more to transform the abstract idea into patent eligible subject matter, the Court focused on the limited scope of the claims as constrained to the realm of multi-player gaming. The Court was convinced that the ‘124 patent was designed to sole a problem particular to the realm of multi-player gaming, akin to the website branding problem in DDR Holdings. The DDR Holdings case is one of the recent cases to come out in favor of patentability where software inventions are concerned. The Court also noted that the claims recited significant hardware components acting in concert as further support for denying the motion under 35 USC 101. (Opinion at 11-12).

This case is one example of claims that may survive the new and evolving patentable subject matter test in the wake of Alice. Many more cases have been found invalid, but those that survive may serve as useful examples for drafting patentable claims.

Aug

2015

Nintendo and Tomita back in court over “Offset Presetting Means”

Tomita Technologies USA LLC v. Nintendo Co.

U.S. District Court, Southern District of New York

Case No. 11-cv-04256, Filed June 22, 2011

Case No. 1:14-cv-09560, Filed December 3, 2014

Back in December we covered the Federal Circuit’s opinion in Tomita v. Nintendo, where the Court found that the claim term “offset presetting means” clearly invoked the means-plus-function principles of 35 USC 112 6th par. Tomita sued Nintendo in 2011 over U.S. Pat. No. 7,417,664, “Stereoscopic Image Picking Up and Display System Based Upon Optical Axes Cross-Point Information.” Tomita alleged that Nintendo’s 3DS game system infringed the ‘664 patent with its stereoscopic 3D display system which provided glasses-free 3D images.

The Federal Circuit held that the trial court improperly adopted the claim construction proposed by Tomita’s expert which failed to reference the corresponding structure defined in the specification. The Court remanded the case with instructions that the lower court should properly construe the claim term as limited to the corresponding structures defined in the specification and equivalents thereof, based on the clear invocation of 35 USC 112 6th par.

Per IP Law 360, the parties recently argued their positions on proper construction of the claim terms and the issue of infringement on remand to the trial court. Tomita argued that Nintendo’s 3DS products include the same structures disclosed in the ‘664 patent and that Nintendo’s construction unnecessarily complicated the nature of the structures described therein. Nintendo argued that Tomita’s patent disclosed primitive presetting means and that the 3DS products used very different components.

Tomita originally received a jury verdict in its favor February 21, 2014 awarding them over $30 million in damages. If the trial court finds that Nintendo still infringes the properly construed claims on remand, it is likely that the jury’s damages will remain intact.

Prior to the Federal Circuit’s order, Tomita filed an additional lawsuit against Nintendo on December 3, 2014 based on the newly launched 3DS XL. (SDNY Case No. 1:14-cv-9560). The earlier case against the regular 3DS remains pending after the remand. (SDNY Case No. 1:11-CV-04256).

We will continue to monitor this case and report when the trial court issues its opinion.

Jul

2015

Case Update – IPR filed by EA against White Knuckle IP patent on game updates

Back in January we reported a new patent case filed by White Knuckle IP against Electronic Arts over updating sports video games based on real-life events during a season. The asserted patent was U.S. Pat. No. 8,529,350. That case was actually terminated and refiled as Utah District case no. 1-15-cv-00036 in February.

From our earlier report, the patent discusses how prior art games were fixed as of the day they were released. A real-life player’s outstanding performance or a major trade taking place during the season would not be reflected until the next version of the game was released. The system described in the ‘350 patent purports to solve this problem by downloading updates to game attributes that are based on real-life changes in players, teams, and venues.

EA filed an inter partes review (IPR) request yesterday with the USPTO to invalidate the patent (IPR2015-01595). EA argues that the ‘350 patent should be limited to updates applied to stadium or field parameters based on arguments made by the patentee during prosecution. Moreover, EA argues that their own earlier games teach all the features claimed in the ‘350 patent. EA points to the 2001 iteration of their popular FIFA soccer games and the 2000 version of their Madden football games as teaching the updating features claimed in the ‘350 patent. Of note is that one of the references cited by EA is a Madden 2000 Updates Website which included a “Playoff Week 1 Update” file.

At this time, the IPR has only been filed with the USPTO. The Patent Trials and Appeals Board (PTAB) will consider whether to institute the IPR based on EA’s arguments. If the PTAB institutes the IPR, EA and White Knuckle will fight it out at the USPTO rather than (or in addition to) the federal courthouse in Utah.

The full IPR petition can be found at https://ptabtrials.uspto.gov/.

We will continue to watch this case for interesting developments.

Jan

2015

New Case – White Knuckle IP v Electronic Arts

White Knuckle IP, LLC v. Electronic Arts, Inc.

US District Court for the District of Utah

1:15-cv-00014

Filed January 16, 2015

In a new case, plaintiff White Knuckle IP accuses Electronic Arts of infringing U.S. Pat. No. 8,529,350 entitled “Method and System for Increased Realism in Video Games.” The ‘350 patent, dating back to October 2002, describes a method for updating sports video games based on real-life events during a season. According to the disclosure, prior art games were fixed as of the day they were released, and a player’s outstanding performance or a major trade during the season would not be reflected until the next version of the game was released. The system described in the ‘350 patent solves this problem by downloading updates to game attributes that are based on real-life changes in players, teams, and venues.

US Pat. No. 8,529,350, Fig. 1

The ‘350 patent is a divisional application related to U.S. Pat. No. 8,540,575 (not raised in this suit). The ‘575 patent’s claims are directed to updating a real-life player’s statistics and attributes based on his performance during a real-life season. The claims of the ‘350 patent in this suit are directed to updating the appearance and attributes of the virtual venues, stadiums, and arenas based on changes to their real-life counterparts. One example in the ‘350 patent is updating the appearance of Wrigley Field based on the growth of the ivy in the outfield.

The ivy at Wrigley Field. Image courtesy Wikipedia.*

The claims recite a method of downloading an updated attribute and modifying the appearance of the virtual venue to such that it “more closely represents the changed real-life stadium or field attribute.” See ‘350 patent claim 1. While a reader may generally understand this concept, such relative and subjective language is generally frowned upon and may be invalid as indefinite under 35 U.S.C. 112. One issue may be whether one of ordinary skill in the art would know with certainty what it means to “more closely represent[] the changed real-life stadium.”

The accused products include EA’s NCAA Football 10-14 and Tiger Woods PGA Tour 10-14. Based on our experience with NCAA Football, the accused features might include stadium updates based on the real-life bowl game schedules. However, White Knuckle did not identify any specific feature in its complaint.

The problem addressed in the ‘350 patent seems to stem from the generally offline nature of consoles circa 2002. As a result, console games were rarely updated as there was no good way to supply the update. However, PC games have been receiving updates in the form of balance patches and bug fixes since well before 2002. One issue in this case may be whether it would have been obvious to include updates based on real-life changes in a patch for a sports game on PC, and whether that would fall within the scope of the claims and potentially render the claims invalid.

We’ll continue to watch this case for any interesting developments.

* “Wrigley Field 400 foot sign” by flickr user jimcchou – http://www.flickr.com/photos/jimchou/246066558/. Licensed under CC BY 2.0 via Wikimedia Commons – http://commons.wikimedia.org/wiki/File:Wrigley_Field_400_foot_sign.jpg#mediaviewer/File:Wrigley_Field_400_foot_sign.jpg

Jan

2015

Federal Circuit Affirms Invalidity of Virtual Camera Patent Based on Real-World Prior Art

Gamecaster, Inc. v. Dreamworks Animation SKG, Inc.

Court of Appeals for the Federal Circuit

Case No. 2014-1380

January 8, 2015

The Federal Circuit affirmed a finding by the USPTO during an inter partes re-examination that Gamecaster’s patent on a physical control device for a virtual camera was invalid.

Gamecaster filed U.S. Pat. No. 7,403,220 in July 2005. The ‘220 patent is generally directed to a video camera device that allows a camera operator to control a virtual camera in a virtual environment.

Gamecaster’s GCS3 virtual cinematography system
(http://www.gamecaster.com/news/GCS3-Revolutionary-Virtual-Camera-Control-)

Gamecaster sued Dreamworks in April 2009 for infringement of the ‘220 patent. See Gamecaster, Inc. v. Dreamworks Animation SKG, Inc., Case No. 2-09-cv-02723 (CACD 2009). Dreamworks filed a request for re-examination in August of 2009, which was instituted by the USPTO. The Examiner agreed with Dreamworks that the claims were anticipated by each of 7 different references, as well as obvious over two references – Paley, “Interaction in 3d Graphics: Designing Special Purpose Input Devices” and Vincent, US Pat. No. 7,050,102.

Gamecaster appealed the obviousness rejection to the PTAB, and the PTAB affirmed the examiner’s findings of invalidity (the PTAB did not address the anticipation rejections as it found the obviousness rejection adequate). On appeal, the Federal Circuit affirmed the PTAB’s decision without further comment.

Paley’s “Cyclops”

The device described in the Paley reference, at first glance, appears strikingly similar to that disclosed in the ‘220 patent.

It’s a simple concept: take a standard fluid-head tripod and instrument it, then mount a flat-panel display on the tripod where the camera would normally go. Now feed the tilt and pan angles into the animation program, while simultaneously displaying a real-time preview of the animation. Voila! You’ve brought camera control back out into the real world….

Second, we’re using the past again. Not only as inspiration this time, but directly. What we get is a device that’s completely intuitive to use, and one that taps into years of experience that a cinematographer may have acquired on the somatic level. We’re using the interaction of cinematographer’s eye and visual sense (where the artist is), muscle-memory of the arm and hand (where the training is) and the grip and fluid-damped head of the tripod.

The Vincent reference was relied on to teach the use of gyroscopes and accelerometers in cameras.

One interesting issue in this case was that Paley described a video camera control for use in virtual worlds, while Vincent described a traditional video camera for use in the real world. Gamecaster argued on appeal to the PTAB and in its appeal to the Federal Circuit that the two references were directed to wholly different applications (physical world versus virtual worlds). However, the examiner found that the use of Vincent’s gyroscopes and accelerometers was nothing more than combining familiar elements according to known methods to yield predictable results, and the board affirmed this finding. See Appeal No. 2013-000375 at 8 (PTAB 2013). A significant portion of Gamecaster’s arguments at the Federal Circuit centered on whether the references could be combined based on this, but the Federal Circuit was not convinced and affirmed the PTAB without any comments in its opinion.

This case provides an interesting example of the crossover between real world and virtual world concepts. Vincent illustrated that it was known at the time of invention to use accelerometers in optical video cameras to control the movement of the camera. As found by the courts and the USPTO in this case, it would have been obvious to one of ordinary skill in the art to adapt these features for use in controlling a virtual camera. This opinion illustrates that, in some cases, it may be obvious to adapt real world techniques for use in virtual environments and that real-world techniques may serve as prior art against virtual techniques.

Dec

2014

Nintendo gets second chance from Federal Circuit on 3DS patent suit

Tomita Tech. USA, LLC et al. v. Nintendo Co., LTD et al.

Federal Circuit

Case No. 2014-1244

(non-precedential)

On appeal from S.D.N.Y., case no. 1:11-CV-04256

Back in 2011, Tomita sued Nintendo over U.S. Pat. No. 7,417,664, “Stereoscopic Image Picking Up and Display System Based Upon Optical Axes Cross-Point Information.” Tomita alleged that Nintendo’s 3DS game system infringed the ‘664 patent with its stereoscopic 3D display system which provided glasses-free 3D images.

US Pat. No. 7,417,664, Figure 1

In the district court case, the jury (1) found that Nintendo infringed claim 1 of the ‘664 patent, (2) found claim 1 of the ‘664 patent was not invalid, and (3) awarded damages to Tomita. Nintendo appealed several issues to the Federal Circuit related to claim construction issues and other points from the trial. The Federal Circuit reversed the district court’s construction of the claim term “offset presetting means” and remanded for further consideration of whether the accused product infringed under a narrower construction.

The term “offset presetting means” uses the magic words “means for” followed by a function – “offsetting and displaying said different video images based upon said video image information….” Thus, the term is properly interpreted as invoking 35 U.S.C. 112, 6th paragraph. Accordingly, the term is to be read as covering the corresponding structure disclosed in the specification along with equivalents thereof.

At trial, Tomita argued that this limitation should be construed as covering a “simple circuit” that implements this function. Tomita’s proposed construction cited Figures One, Two, Three, Four through Eight, and 18 different parts of the specification totaling over 200 lines. The district court adopted Tomita’s construction.

On appeal, the Federal Circuit noted that none of the descriptions of the Figures discussed any sort of “circuit,” and that the portion Tomita relied on as providing a simple circuit as structure actually describes a very detailed structure. Stripped of this detailed structure, the Federal Circuit argued, “Tomita’s interpretation is no more specific than defining ‘offset presetting means’ in purely functional terms.” Op. at 9. The Federal Circuit noted that Tomita’s expert had testified that the corresponding descriptions for the figures showed the structure for the claims. However, the Court noted that the absence of structure in the cited portions of the specification could not be cured by an expert’s conclusory statements to the contrary. Id.

The Federal Circuit held that the corresponding structure for the “offset presetting means” was a timing control unit, a signal switch, a switch control unit, and a synthesis frame memory, and equivalents thereof. Op. at 10. The case was remanded to the district court to consider whether Nintendo’s 3DS infringed under this construction.

Dec

2014

Patton goes to War Over Use of Name and Likeness in Video Game

Catching up on some reading from last week, Ars Technica (via Video Gamer Law) reports on a new lawsuit filed by the rights holder to Patton’s name and likeness against Maximum Family Games for their game “History(R) Legends of War: Patton.” The complaint alleges that the use of General Patton’s name, likeness, image, and persona without CMG Worldwide’s (the rights holder) consent constitutes false endorsement and unfair competition under federal law, and a violation of the California right of publicity and unfair competition under California law.

Image taken from CMG’s First Amended Complaint filed December 12, 2014

CMG sets forth several aspects of the game that it believes impose on its rights. Generally, CMG alleges, the game features General Patton’s famous image, likeness, and persona, in the context for which he is most famous – namely, as a a military general from World War II. In one interesting part, the complaint notes that players earn “prestige” and “skill” points as the game progresses, and that this reinforces that Patton’s own prestige and skill are a chief selling point of the game.

This case seems similar to Lindsay Lohan’s case against Rockstar over Grand Theft Auto V and Manuel Noriega’s case against Activision over Call of Duty: Black Ops II, which we previously reported on. In the Noriega case, a California court dismissed the use as “transformative” and noted that authors should be allowed to utilize historical figures in their works. (more at Video Gamer Law).

The case is CMG Worldwide Inc. v. Maximum Family Games, LLC et al, Case No. 3:14-cv-05124, N.D. Cal. (San Fransisco), filed November 19, 2014.

We’ll keep an eye on this case and report any interesting developments.

Dec

2014

New Case: Ubisoft v Guitar Apprentice

Ubisoft Entertainment, S.A., v. Guitar Apprentice, Inc.

3:14-CV-05202

Northern District of California

Filed November 24, 2014

In a new case, Ubisoft asserts U.S. Pat. No. 8,835,736 against Guitar Apprentice. The ‘736 patent is generally directed to a video game that teaches a player how to play guitar. Unlike Rock Band and Guitar Hero, the system of the ‘736 patent instructs the player to strum chords using the proper strings and frets. Claim 14 is representative and recites:

According to the complaint, Guitar Apprentice makes a product called “Guitar Apprentice Rock Roots Edition.” The accused product is not an interactive video game. Instead, it is an instructional DVD that guides the user to play along with a song:

Image from “How to Play Guitar Apprentice!”, https://www.youtube.com/watch?v=8vgfOtIeAeQ

The claims of the ‘736 patent do not appear to be limited to video games. Instead, the independent claims recite entirely non-interactive features of displaying and “cueing.” Some dependent claims (e.g., “displaying a score of the player” in claim 3) recite more familiar features of interactive games.

Ubisoft and Guitar Apprentice are currently engaged in litigation over one of Guitar Apprentice’s patents, U.S. Pat. No. 8,586,849, which is generally directed to a system for progressive instruction in playing a guitar. See case no. 2-13-cv-02903 (W.D. Tenn., filed November 19, 2013). Ubisoft recently filed a petition for Inter Partes Review with the USPTO regarding the ‘849 patent. See IPR 2015-00298, filed November 25, 2014.

We will continue to watch this case for any interesting developments.

Oct

2014

Winning the lottery type game is your destiny – Sweepstakes Patent Company

Sweepstakes Patent Company, LLC v. Burns et al. and Mosely et al.

Southern District of Florida

Case Nos. 0-14-cv-62351 and 0-14-cv-62354

In two new cases, plaintiff Sweepstakes Patent Company (SPC) accuses internet cafe service providers in Florida of infringing two patents, U.S. Pat. Nos. 5,569,082 and 5,709,603. The complaint alleges that the internet cafes reward customers with contest entries for each purchase of access time, and that these contests infringe the ‘082 patent and ‘603 patent.

The ‘082 patent was filed April 6, 1995 and is generally directed to providing a player with a game piece having a destiny code. The player inputs the destiny code into a lottery game processor, and the processor provides the user with access to an interactive “lottery-type game.” The processor determines whether the user wins or loses based in part on the destiny code. The user’s actions may or may not influence whether the user wins, as well. The ‘603 patent is a continuation of the ‘082 and recites similar subject matter. Claim 10 of the ‘082 patent is referenced in the complaint and representative:

10. A lottery type game comprising:

a gaming piece, said gaming piece including a code which includes data indicating whether a player wins or loses the lottery game and an amusement game, said data being unrecognizable to the player, such that the player does not know whether the player will win or lose the games prior to play of the amusement game;

a processor for receiving said code input by the player prior to amusement game play;

said processor generating the amusement game on a display for play by the player,

said processor determining whether the player will win or lose the amusement game based upon said code; and

a display for providing an indication to the player of the amusement game win or loss based upon said code.

The complaint alleges that the defendants operate or provide software for internet cafes with a sweepstakes element. Users are provided with sweepstakes entries when they purchase internet access time (though no purchase is required). A user may redeem their sweepstakes code on their terminal and be presented with a brief interactive game that lets the user know whether they have won in an exciting manner. According to the complaint, the outcome of the game (whether the user wins or loses) is determined based on the sweepstakes access code rather than just based on the way the user plays the game.

The sweepstakes revealers of Burns et al.’s system, according to the complaint.

It is worth noting that SPC tried to bring suit against Burns et al. earlier this year in the Middle District of Florida. The order dismissing that case revealed that inventor Kaye / SPC previously sold both patents to another company, Ingenio. As part of the transaction, Ingenio licensed the patents back to SPC. The license agreement stated that Ingenio, as licensor, must be notified of any potential patent infringement actions and must expressly provide written authorization prior to the licensee (SPC) bringing any such suit. SPC had not received written authorization in its first suit against Burns et al., and that case was dismissed in July 2014.

In the instant complaint, filed October 14, 2014, SPC alleges that is is the lawful assignee of all right, title and interest in and to the ‘082 patent and the ‘603 patent. An assignment from Ingenio to SPC was recorded with the USPTO on October 10, 2014. Thus, SPC seems to have corrected the problem with its earlier suit.

We’ll provide further updates on any interesting developments in these cases.

Sep

2014

Electronic lip syncing patent invalid as abstract idea – 101 analysis based on admitted prior art

McRO, Inc. v. Namco Bandai, et al.

Central District of California

No. CV 12-10322

September 22, 2014

In a case described by the court as illustrating “the danger that exists when the novel portions of an invention are claimed too broadly,” a patent on automated rules for animating lip synchronization has been found invalid under 35 U.S.C. 101. See Op. at 22.

McRO, Inc., d.b.a. Planet Blue (“McRO”) brought 29 different lawsuits in the Central District of California against some of the biggest names in gaming alleging infringement of two patents related to automated methods for synchronizing an animated character’s mouth with dialogue. The defendants included Electronic Arts, Disney Interactive, Namco Bandai, Konami, Sega, Square Enix, Capcom, Sony, and Activision Blizzard, among others. The court consolidated the lawsuits into two cases based on filing dates (CV 12-10322 and CV 13-1872).

All the defendants joined in filing a motion for judgment on the pleadings based on unpatentability of the claims under 35 U.S.C. 101. The defendants argued that the patents-in-suit were directed to a “fundamental, abstract animation practice,” namely, “the abstract idea of rules-based synchronization of animated mouth movement. See Op. at 12. While the court disagreed with defendants as to the abstract idea claimed, the court ultimately held that the point of novelty in the claims represented an abstract idea and thus was unpatentable under 101. See Op. at 19. Importantly, the court’s analysis was primarily based on a thorough discussion in the patent of the manual processes employed in the prior art..

The two patents-in-suit were U.S. Pat. Nos. 6,307,576 and 6,611,278. Claim 1 of the ‘576 patent is representative and was analyzed by the court:

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

Initially, the court noted that these claims do not appear to be directed to an abstract idea on their face. Op. at 13. Further, the court noted that the claims do not cover the prior art methods of computer-assisted, but non-automated, lip synchronization. Id. Additionally, the court cited defendant’s non-infringement positions as evidence that the claims did not preempt all manners of automating lip synched animation. See Op. at 14. The court observed that, in section 101 motions, the parties positions are flipped: the patentee must argue that noninfringing alternatives exist and the defendant must argue that there are no noninfringing alternatives. Id.

In one of the clearer statements to date on 101 analysis, the court proceeded to argue that the claims must be evaluated in the context of the prior art:

Op. at 14. The court’s analysis centered on identifying the point of novelty over the admitted prior art. As mentioned above, the patent contained a thorough discussion of prior art techniques whereby animators would manually set “morph weight values” to animate a character’s mouth based on the dialogue. According to the court, the patentee, and the patent itself, the novelty of the claims (and the inventive step) was in the use of automated timing rules to automate the animation process:

Op. at 18 and 19. This left “an abstract idea at the point of novelty” and prevents “the development of any additional ways to use that abstract idea in the relevant field.” See Op. at 19 (citing Alice Corp.Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2360 (2014)). Thus, the court found the claims invalid under 35 U.S.C. 101. See Op. at 18, 23.

The court observed: “One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.” Op. at 19. Indeed, the patent’s thorough discussion of prior art methods provided a strong argument that they had merely automated a previously manual process.

The court performed its 101 analysis by stripping out of all the prior art techniques from the claim, boiling the claim down to a point of novelty. This is also the approach used in obviousness analysis under 35 U.S.C. 103. During obviousness analysis, the difference between the claimed invention and the prior art is assessed against the skill and knowledge of one of ordinary skill in the art. The patentee in this case presented evidence of a defendant characterizing the claimed invention as “revolutionary.” Such a characterization would typically carry considerable weight in obviousness analysis. However, the court stated that:

Op. at 20. Thus, it would appear that even if a non-obvious and “revolutionary” concept was presented by the point of novelty, but that concept was an “abstract idea” that prevents “the development of any additional ways to use that abstract idea in the relevant field,” the claim would be patent ineligible and invalid under 35 U.S.C. 101.

The court summed up its ruling: “When examined in light of the prior art, the claims are directed to an abstract idea, and lack an ‘inventive concept’ ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.'” Op. at 23 (citing Alice, 134 S. Ct. at 2351).

We will continue to provide updates on relevant decisions on patentability under Alice.

Aug

2014

Unlockable Content and Microtransactions in Mobile Games – New Case – Inventor Holdings LLC (D. Del. 2014)

Inventor Holdings, LLC v. [Multiple Defendants]

United States District Court for the District of Delaware

File Nos. 1-14-cv-01067 (Gameloft); 1-14-cv-01068 (Glu Mobile); 1-14-cv-01069 (Kabam); 1-14-cv-01070 (King.com); 1-14-cv-01071 (ngmoco); 1-14-cv-01072 (Rovio); 1-14-cv-01073 (Supercell)

In several new lawsuits filed August 19, 2014, plaintiff Inventor Holdings, LLC argues that several popular mobile games infringe newly granted U.S. Pat. No. 8,784,198. The ‘198 patent claims priority dating back to February 18, 2000 and discusses providing unlock codes for unlockable “outcomes.” The patentee wasted no time in filing this lawsuit: the ‘198 patent was granted on July 22, 2014.

While the body of the ‘198 patent discusses the concept of “outcomes” at a high level and across a range of implementations, the claims of the ‘198 patent are directed to a mobile device providing a game with a locked outcome and associated benefit. The benefit is provided to a user when the game receives a signal with an unlock code. Some examples of the benefits include continued access to the game, an enhancement or modification to the game, and an advancement within the game.

Claim 18 is representative and recites:

18. A non-transitory computer-readable medium storing
instructions for directing a processor of a mobile device to perform a method,
the method comprising:
facilitating play of a game on the mobile device by
recognizing inputs provided by a user via an input mechanism of the mobile
device, at least one of the inputs causing progress in the game;
receiving a signal comprising an unlock code;
determining a locked outcome of the game;
unlocking the locked outcome of the game using the unlock
code, thereby determining an unlocked outcome;
determining an intra-game benefit associated with the
unlocked outcome; and
providing the intra-game benefit to the user by
incorporating the intra-game benefit into the game.

Some of the notable games accused here include “Kim Kardashian: Hollywood,” “Clash of Clans,” and “Marvel War of Heroes.” To any extent these claims are interpreted to read on unlocking content included in an installed game by sending an unlock code to the game, these cases could impact unlockable game content and microtransactions. As both of these features have become increasingly common in video games of all sorts, this case could have an impact throughout the industry.

We’ll continue to monitor these cases for any interesting developments.

Aug

2014

Bingo! for Video King – Alice decision applied to bingo manager system

Planet Bingo, LLC v. VKGS LLC (dba Video King)

United States Court of Appeals for the Federal Circuit

– Nonprecedential –

Case No. 2013-1663

Decided: August 26, 2014

In what it called “a straight-forward application of the Supreme Court’s recent holding in Alice Corp v. CLS Bank International,” the Federal Circuit found a system for managing a game of bingo to be patent ineligible under 35 U.S.C. 101. Op. at 2.

The patents in question, US 6,398,646 and 6,656,045, generally recite storing a preferred set of numbers for a bingo player, allowing the user to play that set, and tracking the game/payouts. Claim 1 of the ‘646 patent claims a system with expressly recited computer components:

1. A system for managing a game of Bingo which comprises:
(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory of the computer; and
(c) a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;
(iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo.

The district court judge granted summary judgment of invalidity as to each claim of the ‘646 patent and the ‘045 patent. The judge reasoned that “each method claim encompasses the abstract idea of managing/playing the game of Bingo” and that the user of a computer “adds nothing more than the ability to manage… Bingo more efficiently.” Op. at 2-3 (citing district court opinion Planet Bingo, LLC v. VKGS LLC, 961 F. Supp. 2d 840 (W.D. Mich. 2013). Further, the judge found that the system claims employ a computer “only for its most basic functions” including “storing numbers, assigning identifiers, allowing for basic inputs and outputs, printing a receipt, displaying of numbers, and/or matching… for verification. Op. at 3 (citing district court opinion).

Judge Hughes of the Federal Circuit agreed with the district court that there is no meaningful distinction between the method and system claims in the patents. Both sets of claims recite the same basic processes. Op. at 4. After observing that the claims of the patents recited selecting, storing, and retrieving sets of numbers, assigning identifiers, and comparing bingo numbers, the Court noted that “like the claims at issue in Benson, not only can these steps be ‘carried out in existing computers long in use’, but they also can be ‘done mentally’.” Op. at 4.

Planet Bingo argued that, in practice, their systems involved “literally thousands, if not millions of preselected Bingo numbers” and that it would be impossible for the system to be carried out manually. However, the Court noted that the claims did not require “thousands” or “millions” of sets and instead only required two sets of numbers. The Court declined to decide “whether a claimed invention requiring many transactions might tip the scales of patent eligibility.” Op. at 5.

The Court found that the claims recited an abstract idea similar to that of Alice and Bilski. The claims recited methods and systems for managing a game of Bingo, and the Court held that the claims were directed to the abstract idea of “solving a tampering problem and also minimizing other security risks.” Op. at 5 (quoting Planet Bingo’s brief). The Court found this idea similar to that of “risk hedging during consumer transactions” (Bilski) and “mitigating settlement risk in financial transactions” (Alice).

The Court then turned to the computer components of the claims to determiner whether they “contain an ‘inventive concept sufficient to transform the claimed abstract idea in a patent-eligible application.'” Op. at 5 (quoting Alice, citation omitted). The Court examined the recited computer elements in the claims, dividing the generic computer components from the recited programmed functionality:

Op. at 6. The Court determined that the claims recite a generic computer implementation of the covered abstract idea. Id. Ultimately, “as was the case in Alice, ‘the function performed by the computer at each step of the process is purely conventional.'” Op. at 6 (quoting Alice).

You can read the whole opinion here.

The aftermath of Alice Corp. v. CLS Bank International continues. The full scope of the impact the decision will ultimately have on computer and software patent still remains to be seen.

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