On July 7, 2009, Yahoo’s lawsuit against the NFL Players Association was dismissed without prejudice after the two parties entered a settlement. For the time being, this ends litigation that Yahoo commenced at the beginning of June to declare that Yahoo didn’t need authorization to use football players’ images, names and statistics in its fantasy football game. Because the case was dismissed without prejudice, the possibility remains that it may be brought again.
According to the Associated Press, the terms of the settlement haven’t been made public which is unfortunate because, as FantasySportsBusiness.com notes, it would be interesting to see the concessions each side made. Perhaps Yahoo was willing to compromise on licensing fees and forego protracted litigation to protect a business relationship stretching beyond fantasy sports.
The NFLPA is currently appealing the April decision of the similar case National Football League Players Inc. v. CBS Interactive Inc. to the 8th Circuit. The district court found that CBS enjoyed a First Amendment right to use the publicly available players’ names and statistics that prevailed over any right of publicity. In a fantasy baseball case from 2007 (C.B.C. Distribution and Marketing Inc. v. MLB Advanced Media), the 8th Circuit ruled that a fantasy baseball provider didn’t have to pay royalties to baseball players. Because the district court from CBS Interactive relied heavily on the 8th Circuit’s C.B.C. opinion, it seems unlikely that the NFLPA will win its appeal.
Hernandez v. Internet Gaming Entertainment, LTD.
United States District Court for S.D. Fla.
Case No. 1:07-CIV-21403-JIC, Filed May 31, 2007, Settled August 26, 2008
Much like Blizzard v. In Game Dollar, this case was about virtual property transfer in the MMORPG World of Warcraft (WoW) for real-world money. The main difference is that this suit was filed by an individual player rather than the owner/operator of the game, as was the case in Blizzard.
Hernandez, an avid player of WoW, filed suit on May 31, 2007 against Internet Gaming Entertainment, LTD. (a Hong Kong-based company) and IGE U.S. LLC., both of which were companies “engaged in the business of generating and selling virtual assets.” IGE, LTD. was later dropped because it couldn’t be served with the lawsuit in time, leaving IGE U.S. as the sole defendant. Hernandez filed a class action suit on the behalf of U.S. WoW subscribers, which he estimated could be as high as 2 million people, seeking an injunction and monetary damages.
The complaint named 7 causes of action:
Hernandez filed for class certification on May 19, 2008, but the parties settled before certification occurred. On August 26, 2008, Hernandez and IGE U.S. filed a joint stipulation of settlement in which IGE U.S. denied any wrongdoing but agreed to refrain from selling WoW virtual property for five years. It’s unlikely that this agreement will impact IGE.com’s business (WoW gold is still being sold on the site) because IGE U.S. doesn’t actually operate IGE.com. Apparently IGE U.S. had sold all its assets to Atlas Technology Group six days before the lawsuit was first filed, so IGE U.S. was probably the wrong party to sue in the first place, but since IGE, LTD. was dropped early on and the changes to IGE U.S.’s corporate structure weren’t clear at the time, this outcome was probably the best possible based on the factual background they were faced with.
In a previous motion, Hernandez had asked the settlement to be filed under seal. In the order enforcing the settlement, the court denied the seal, saying the public interest must be considered. Courts are cautious about allowing a settlement under seal when class certification is still pending because courts don’t want one party to settle for a high amount that leaves the rest of the injured potential parties without remedy/damages. This court stated the settlement should be under seal only under extraordinary circumstances and said the parties could submit briefs to attempt to prove such circumstances.
As a last note, the class was never certified so the agreement – and the case being dismissed with prejudice – only holds for IGE U.S. and Hernandez. Any other WoW subscriber can file a suit against IGE (or perhaps Atlas or whoever is the operator of IGE.com) and attempt to take the case further than Hernandez did. Although both this case and Blizzard ended with settlements, it seems the door is still wide open for future litigation on illicit virtual property sales in WoW.
For more analysis over the life of the case, see Virtually Blind.
On May 22, 2007, Blizzard Entertainment, the creator and operator of the popular MMORPG World of Warcraft, brought suit against In Game Dollar (IGD). IGD was the parent company of www.peons4hire.com which offered power-leveling and virtual gold-selling services. Power-leveling allows a player to pay to have his virtual character advanced to the agreed-upon level by a third party using the player’s account. Virtual gold sales consist of a player paying real-world money then having his virtual character meet the merchant’s character in-game to transfer the virtual gold. IGD advertised its services in the game by constantly sending spam messages to players though WoW’s chat system.
IGD decided to avoid prolonged litigation and essentially agreed to shut down its business in exchange for Blizzard not seeking monetary damages. The case was settled on January 28, 2008 with the court issuing a Consent Order. The order consisted of a permanent injunction preventing IGD from engaging in any future WoW virtual asset sales or in-game marketing communications.
Sitrick v. DreamWorks, LLC et al.
516 F.3d 993 (Fed. Cir. 2008)
This case, decided February 1, 2008, emphasizes the importance of enablement in determining the validity of patent claims, specifically when a patent owner is advocating a broad claim construction.
At issue were two patents, U.S. Patent Nos. 5,553,864 (the ’864 patent) and 6,425,825 (the ’825 patent), owned by David Sitrick, an individual inventor. These patents claimed the process of integrating user-generated audio and video into pre-existing video games and movies, so the user could incorporate his voice and image into the medium.
The basic premise of the invention is that a controller, called an Intercept Adapter Integration System (IAIS), would “intercept address signals coming from the video game apparatus and going to the game card or storage card. If address signals correspond to the character functions that are to be replaced with a user image, the IAIS reconfigures the signals so that when the signal gets to the game card or storage card, the user image is substituted for the predefined character image.” Sitrick v. DreamWorks, 516 F.3d 993 (Fed. Cir. 2008). For example, the process of intercepting the signal for a video game character and substituting it with the user-made voice and image could be used to create a personalized character.
Sitrick brought this patent infringement suit against DreamWorks and other DVD producers and distributors for their use of the allegedly infringing product ReVoice Studio which allows users to integrate their own voices into pre-existing video images on the DVD. The District Court for the Central District of California granted summary judgment of non-infringement for the defendants after finding the asserted claims to be indefinite and invalid for lack of enablement as to movies. The issue on appeal was whether the asserted claims were fully enabled as required by 35 U.S.C. 112 ¶ 1. The Federal Circuit affirmed the District Court’s ruling, agreeing that the claims were not enabled.
The first key decision the court made was regarding claim construction. The defendants urged the district court to adopt the narrow construction that the patent claims only covered video games (and therefore, their use of ReVoice with movies alone would not be infringement). Instead, the court construed the claims broadly, as Sitrick requested, covering both video games and movies. After determining that the claims included movies, the court engaged in an enablement analysis.
According to the enablement requirement of 35 U.S.C. 112 ¶ 1, a patent’s specifications must contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” This requirement is met if the skilled person can read the patent specifications and then use the invention without “undue experimentation.” Sitrick, 516 F.3d at 999 (quoting AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003)). The full scope of the claimed invention must be enabled. Id. (citing Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007)).
Therefore, a patent owner who chooses broad claim language must make sure the expansive claims are fully enabled. Courts don’t want patent owners to be able to claim protection for more than what they clearly designed/invented, so courts won’t be sympathetic to a patentee who fails to enable a patent when he could have just claimed the invention more narrowly. Here, because the broad patent claims covered video games and movies, the patent specifications needed to fully describe how the invention would work for movies as well as video games.
The patent specifications mentioned how the patent would be applied to movies, but the defendants’ experts showed they weren’t clear enough so that a person trained in the art would be able to replicate the patent process of substituting or integrating user images for pre-existing characters in a movie “without undue experimentation” – likely because it would be so hard to do. The IAIS/invention intercepts signals regarding the pre-existing medium and substitutes the user-generated audio and/or visual images. This works well for substituting personalized characters in video games because the characters are separately controlled functions from the rest of the game. As the district court recognized, “[m]ovies do not have easily separable character functions, as video games do” and movie characters cannot be selected and analyzed, so it would be hard to intercept a specific signal and replace it with the user-created image. Sitrick, 516 F.3d at 1000. Movie characters are inseparable from the surrounding images. The defendants’ experts effectively showed that the techniques that would be used for intercepting & substituting characters in a videogame would be of no use for doing the same in a movie.
Sitrick’s expert did not create a genuine issue of material fact (which would defeat summary judgment for the defendants) because he equivocated on whether the integration and substitution could be done in movies, and he admitted that he was not an expert in movie-making. Enablement has to be judged by someone skilled in the art.
The Federal Circuit swept aside Sitrick’s argument that the court didn’t fully consider the patents’ explanations/teachings with respect to video games by saying that the patents’ clear specifications for enabling videogames were irrelevant; the enablement requirement was not met unless the patents were enabled for both embodiments of the claim – videogames and movies.
A second point in controversy between the parties concerned the claim construction for Sitrick’s voice synthesizer process of the ‘864 patent and the meaning of “model” as it was used in claim 54: “the user voice parameter data is input as a model to a voice synthesizer.” The court required that the synthesized voice produce an entirely synthetic voice saying new words, not simply a playback of the user’s sample. The court found that given its claim construction, the ’864 patent failed to enable modeling a voice for reproduction by a voice synthesizer.
Overall, the court held that the defendants met their burden of proving by clear and convincing evidence that one skilled in the art wouldn’t be able to replicate the processes in the specifications without undue experimentation. Therefore, the patents were not fully enabled with respect to the full scope of the asserted claims, and the patents were therefore invalid.
Fenner Investments, Ltd. v. Microsoft et al.
United States District Court for E.D. Tex.
Filed 1/5/07, Decided 3/16/09 (Opinion issued 6/3/09)
This case revolved around Fenner Investment’s U.S. Patent No. 6,297,751, which describes a low-voltage joystick port interface.
Prior art joysticks used resistor-like devices called potentiometers to produce analog signals. These analog signals had to be transformed into digital signals to be read by a computer. An interface circuit interpreted the joystick’s analog signal to produce a responsive digital pulse which had a pulse width that corresponded to the joystick position. The computer would measure the width of the digital pulse to figure out the position.
Newly developed computer and video game systems require lower voltage (prior art joysticks and computers were electronically compatible, both operating at 5 volts), so they didn’t work with the interface circuits/joysticks anymore. Fenner’s patent solved that problem by creating an interface circuit that allowed the old, higher voltage joysticks to be used with the newer, lower voltage systems.
The “Pulse Width” Limitation
Fenner’s patent contains a limitation that requires an infringing product to produce ‘a single cycle of variation in the logical level of a signal, a width of the single cycle of variation, assessed in time or distance, represents a coordinate position of said joystick device.”
Fenner alleged that Microsoft’s Xbox controller and Nintendo’s Wii and GameCube controllers infringed on its patent. These controllers contain thumbsticks that operate by initial analog signals being translated into 8- or 10-bit digital signals (or “words”) that get sent to the console processor which interprets the digital word to calculate the corresponding thumbstick position.
Basically, Fenner’s invention works so that analog signals are represented by the width of a variation (pulse) in a digital signal, whereas defendants’ products require the full 8- or 10-bit digital word (made up of 1’s and 0’s) to give the joystick position. As an example of a digital word, “01100000” shows a two cycle “pulse” occurring toward the beginning of the 8-bit word.
Fenner argued that the defendants infringed simply because the accused products create a pulse with a width that can be measured and, based on the pulses, a joystick position can be determined. The defendants argued that the pulse widths alone are irrelevant and instead the entire digital word is necessary to determine the joystick position.
The main issue here turned on the claim construction of the pulse width “representing” joystick position and whether that meant providing some information about the position (Fenner’s argument) or providing all information necessary to determine the position (Defendants’ argument). Relying on intrinsic evidence (i.e., the patent claims, specification, and its prosecution history before the United States Patent & Trademark Office), the court found that the claim required that the pulse must communicate all the necessary information to determine the specific joystick coordinate position.
Fenner also argued that “represent” meant that pulse width could be combined with other data, such as the position of the pulse in the 8- or 10-bit word, to indicate joystick position. The court rejected this argument based on the prosecution history and claim amendment language which indicated that only pulse width, not other data, was to be used to determine joystick position.
Summary Judgment – Direct Infringement
Using the above claim construction, the court found summary judgment appropriate because there was no genuine issue of material fact. Because Fenner’s patent relied on a pulse width alone to relate the joystick position, the defendants had not infringed on the patent. This is because, in the accused devices, the pulse widths alone are meaningless and say nothing about joystick position. The pulse widths simply describe the bits. It’s the 8 or 10 bits, read together, that actually give the position. A signal representing the series of two, three, or more “1’s” in a row does express “a single variation of the logical level of a signal,” but it doesn’t give any position information without the accompanying “0’s” that also make up the digital word.
Summary Judgment – Doctrine of Equivalents
Generally, patent protection is limited to what’s written in the patent claims. However, to ensure fair protection of patents, the doctrine of equivalents states that a patent may be protected even when another product or process does not literally infringe on the patent, as long as the infringing product or process is deemed to be equivalent. The doctrine of equivalents was formed so that copycats could not avoid patent infringement simply by making minor or trivial variations to the claims. For the doctrine to apply, the accused product must perform “substantially the same function in substantially the same way with substantially the same result” (referred to as the function-way-result, or FWR, test).
Fenner argued that the doctrine applied because the production of binary encoded numbers was equivalent to the production of pulse widths for determining joystick position. The court determined that Fenner’s interpretation wrongly wrote the “pulse limitation” out of the claim and disregarded the “way” part of the test by being so broad that it would include any digital signal no matter what “way” that it communicated position. The court further found that Fenner failed to show equivalence in the “way” the devices operate because in Fenner’s device, only the pulses, or “cycles of variation,” are used to determine joystick position whereas in the defendants’ devices the periods of no variation are just as necessary as the periods of variation (for creating an 8- or 10-bit digital word) to determine position.
The “Lower Source Voltage” Limitation
The court also faced a second issue of claim construction concerning the definition of the device parts, because certain parts of the accused products had to operate at a lower voltage in order to be infringing.
Claims 1, 9, and 14 of the ‘751 patent call for “[a]n interface between a joystick device having a first source voltage and a processor, comprising . . . an interface circuit having a second source voltage that is lower than the first source voltage. . .” The Court’s claim construction defined “interface circuit” as “a circuit that connects the joystick and the processor.”
The ‘751 patent claims required the interface circuit between the joystick and processor to operate at a lower voltage than the joystick. In the defendants’ accused products, only the processor core, or central processing unit (CPU), operates at a lower voltage than the joystick. Fenner argued that the periphery of the processor could be included in the interface circuit, while the defendants argued that the processor included the CPU and its peripherals, both separate from the interface circuit. The claim construction then turned on whether “processor” meant the entire processor chip or just the processor core. Using extrinsic definitions as well as the context of the claim, the court held that “processor” should be defined as “the CPU along with its peripheral circuitry.” Fenner had agreed that such a definition would preclude any issues of triable fact, so summary judgment was appropriate.Read the full opinion here.
As you may recall this case consisted of a claim by Fenner that defendants had infringed on its U.S. Patent No. 6,297,751 for a low voltage joystick port interface. Basically, the patented technology was a way to hook up old joysticks to new computers (see Bloomberg.com’s brief synopsis of the case). On 3/16/09, the day before the jury trial was to begin, the court entered an order granting summary judgment to defendants Microsoft and Nintendo (Sony, an original named defendant, was dropped from the suit 2/26/07), finding no patent infringement. For more information regarding the case conclusion, click here. The court issued its full opinion and final order of summary judgment on 6/3/09. Further analysis of the opinion is forthcoming once we obtain and review the final order.
Zynga Game Network had filed suit on February 27, 2009 against CLZ Concepts, Jeff Chen and James Zhang asserting copyright infringement. Yesterday a settlement conference was held, and the parties appear to have settled out of court. So it looks like no new case law will come from this one, and we will no longer be tracking this case.
Zynga is a major social gaming developer and now leads the industry as the largest application developer on Facebook with hits like Mafia Wars and Texas HoldEm Poker. Zynga also produces its apps for other social platforms such as MySpace and the iPhone. CLZ Concepts is a smaller social apps developer, acquired by Zynga in early 2008.
Article One Partners is a company that offers rewards to people for finding prior art that can be used to try to invalidate patents, and Article One is willing to pay serious money to those who find that prior art. Most recently, Article One Partners paid out $50,000 to an anonymous individual for identifying prior art that, Article One Partners believes, invalidates at least one of the two Worlds.com patents. The Article One Partners press release indicates that they believe the prior art they found invalidates Worlds.com’s earlier ‘690 patent. They do NOT indicate that they believe it also invalidates the latter ‘558 patent, but instead indicate that the prior art may also be “relevant” to the latter patent. Indeed, it may be “relevant”, but only one claim needs to remain valid and infringed for NCSoft to be on the hook for damages and an injunction. Nonetheless, Article One clearly believes they have some good prior art, and is willing to license its findings to interested parties.
While this certainly appears to be good news for the virtual world community in general, NCSoft is not out of the woods yet. If anything, this might help distill the issues in the case and reduce the number of claims being litigated between the parties, but it doesn’t appear that the case is going to go away any time soon. Stay tuned…
Continuing the trend of fantasy sports litigation, Yahoo! Inc., has filed a lawsuit seeking declaratory judgment against the defendants National Football League Players Association, Inc., and the National Football League Players Incorporated (collectively hereinafter “NFL Players”).
The NFL Players Association acts as the exclusive collective bargaining representative for active players in the NFL. The players assign their rights to the Association which, in turn, grants NFL Players Inc. exclusive use of the Group Licensing Rights. Yahoo! provides NFL fantasy football game services to participants throughout the United States. This includes tracking, compiling and posting publicly available NFL player statistics and information to aid game participants in making decisions.
Prior to the upcoming 2009/2010 season, Yahoo! had a licensing agreement with NFL Players to pay for using the statistics as well as “names, likenesses (including, without limitation, numbers), pictures, photographs, voices, facsimile signatures and/or biographical information” of NFL players. However, the license expired in March 2009 and was not renewed. On April 28, 2009 the same court hearing this case decided in CBS Interactive, Inc. v. Nat. Football League Players Inc., 70:08-cv-0597-ADM-SRN (D. Minn.), that the provider of a fantasy football game did not require a license from NFL Players to use player names, statistics, and other information in operation of the game. After that decision, Yahoo! contacted NFL Players to get confirmation that it would not be sued for similarly using the statistics but NFL Players refused to provide confirmation since they were appealing the court’s ruling.
Yahoo! followed up on June 1, 2009 by filing the present suit in which it seeks declaratory judgment (a declaratory judgment action is one filed by someone who fears getting sued by another on an issue, and doesn’t want to sit around waiting to get sued – they file a suit of their own to clear the air and resolve the issue) on three claims:
This suit seems almost identical to CBS Interactive mentioned above, as well as C.B.C. Distribution and Marketing Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007), which dealt with similar publicity issues in fantasy baseball. In both of these other declaratory judgments, the courts found that even if the plaintiff did violate defendants’ publicity rights, the plaintiff enjoyed a First Amendment right to use the publicly available players’ names and statistics that prevailed over any right of publicity. To escape this precedent set in the 8th Circuit, it seems possible that NFL Players may attempt to transfer venue to the Southern District of Florida as the defendants attempted in CBS Interactive (to no avail). Why Florida? In Gridiron.com, Inc. v. Nat’l Football League, Player’s Ass’n, Inc., 106 F. Supp. 2d 1309, 1315 (S.D. Fla. 2000), which appears to be the only other case addressing publicity rights and the First Amendment as they relate to the fantasy sports industry, the court rejected the plaintiff’s argument that a fantasy football provider had a First Amendment right to use players’ names and statistics without a license. This kind of split among jurisdictions may result in a trip to the Supreme Court, so we’ll keep an eye out …
A full version of the complaint can be found here.
IQ Biometrix, Inc. on May 27, 2009, filed a new lawsuit against Perfect World Entertainment, Inc., Perfect World Co, Ltd., and Wagware Systems, Inc. for alleged patent infringement regarding two separate patents.
The plaintiff, IQ Biometrix, Inc., provides facial image composite software, marketed under the name FACES, which is used by law enforcement agencies worldwide, including the CIA, the FBI and the U.S. Military.
Defendant Perfect World Co. Ltd. is a China-based online game company and maker of the popular fantasy-based MMORPG Perfect World which offers gamers significant avatar customization and player-created content. Defendant Perfect World Entertainment is a wholly-owned subsidiary of Perfect World Co. Ltd., established in the U.S. in 2008 to localize and publish Perfect World in North America. More info on defendants here and here.
Defendant Wagware focuses primarily on developing software applications for handheld platforms. One of its products, MakeFaces, is a children’s game designed to allow the user to combine different styles of facial features (e.g., eyes, nose, hair) to make funny faces.
IQ Biometrix alleges that Perfect World Entertainment and Perfect World Co. infringe IQ Biometrix’s patent 6,731,302 by providing the online game Perfect World, likely because of the avatar customization the game provides. The ‘302 patent, titled Method and Apparatus for Creating Facial Images, is for a process of creating a facial composites by selecting “basic morphological elements” or facial features from a library of encoded features and merging them into a single synthetic image with proportional components, thus reducing contrasts between the individually selected features. The invention appears applicable to systems used in law enforcement, artistic creations, education, and recreation (such as creating personalized characters in gaming).
Representative Claims 6 & 16 of the ‘302 patent read as follows:
6. A method for generating a composite facial image, said method comprising the steps of:
a) providing a machine-readable storage medium for storing graphical representations of basic morphological elements, said graphical representations being proportionate to one another and having respective boundaries, the graphical representations of basic morphological elements including skin components around their respective boundaries, the skin components having skin tones substantially similar to one another;
b) receiving user data indicative of a set of data elements, each data element in said set of data elements being associated to a respective graphical representation of a basic morphological element in the machine-readable storage medium;
c) processing the set of data elements to locate in the machine-readable storage medium corresponding graphical representations of basic morphological elements;
d) combining the graphical representations of basic morphological elements located to generate a digital representation of a facial image, at least two graphical representations being combined such that their skin components having substantially similar skin tones meet at a boundary; and
e) displaying the digital representation of the facial image on display means.
16. A method for generating an electronic library of basic morphological elements suitable for usage in a composite picture system, said method comprising the steps of:
a) providing a plurality of facial images;
b) digitizing the facial images;
c) processing the digitized facial images to create a plurality of graphical representations of basic morphological elements of a certain facial image, said graphical representations of basic morphological elements including skin components having different skin tones;
d) applying a filtering process to said graphical representations of basic morphological elements to derive modified graphical representations, the modified graphical representations including skin components having skin tones substantially similar to one another;
e) processing said modified graphical representations to generate calibrated graphical representations, said calibrated graphical representations being substantially proportional to one another; and
f) storing the calibrated graphical representations on a computer-readable storage medium.
IQ Biometrix has also alleged that Perfect World Entertainment and Wagware (through Perfect World and MakeFaces computer games, respectively) infringe on its patent 7,289,647, titled System and Method for Creating and Displaying a Composite Facial Image. The ‘647 patent consists of 44 claims directed to various processes for the encoding/decoding of images that can be separated into their constituent parts (i.e., individual facial features) as may be used in composite picture systems. This type of encoding of the images allows for reducing the memory requirements for storage and the bandwidth required for the transmission of the image (by storing and transmitting a facial code rather than a graphical representation).
Representative Claims 1 & 34 read as follows:
1. A method, comprising:
receiving a number of facial feature designations;
generating element codes corresponding to the facial feature designations, each element code based on:
(a) a symbol representative of a facial feature, the symbol having one of a plurality of values indicative of variations of the facial feature, and
(b) a first code factor having a value that equals or exceeds a maximum value of the plurality of values indicative of the variations of the facial feature; and
displaying a composite image based on the element codes corresponding to the facial feature designations.
34. A system, comprising:
a screen; and
a processor for controlling the screen to display a number of facial feature images on a first area of a screen and to display a composite facial image on a second area of the screen, said composite image including facial feature images selected from the first screen area, the processor automatically generating element codes corresponding to the selected facial feature images, each element code based on:
(a) a symbol representative of a facial feature, the symbol having one of a plurality of values indicative of variations of the facial feature, and
(b) a first code factor having a value that equals or exceeds a maximum value of the plurality of values indicative of the variations of the facial feature, the composite image based on element codes corresponding to the selected facial feature images.
IQ Biometrix has requested a jury trial and seeks injunctive relief and damages.
We’ve added this case to our tracking list and will provide updates of major developments. The full text of the complaint with accompanying patents can be downloaded here.
Online chat company Paltalk Holdings, Inc. and Microsoft Corporation have formally dismissed the patent suit between them in the Eastern District of Texas.
In the suit, Paltalk alleged that the chat and communication features in Microsoft’s XBox Live service infringed Paltalk’s patents 5,822,523 and 6,226,686, both entitled “Server-group Messaging System for Interactive Applications,” and sought tens of millions of dollars in damages. Microsoft alleged that the asserted claims were invalid, and that their service did not infringe those patents.
The case went to trial in March of 2009, but it abruptly ended when the parties announced they had reached a settlement. The formal dismissal is a procedural step that formally closes the court’s books on the case.
The settlement means those patents have avoided having their validity and scope tested in that court, so they live to fight another day. No word yet on whether Paltalk will target some other unlucky online gaming company, but we’ll keep an eye out and keep you posted.
For those keeping track at home, the case cite is: Paltalk Holdings, Inc. v. Microsoft Corp., No. 2:06cv367 (E.D. Tx, filed Sept. 12, 2006).
Samuel Michael Keller v. Electronic Arts inc. et al.
case number 09-cv-1967
U.S. District Court for the Northern District of California
Law360, New York (May 06, 2009) — A former quarterback for Arizona State University has filed a putative class action against Electronic Arts Inc. and the National Collegiate Athletics Association for appropriating and using the images and attributes of college sports players in its popular line of interactive video games in violation of NCAA rules, which prohibit commercialization of college players.Sam Keller, once a starting quarterback for ASU’s and University of Nebraska’s football teams, filed the lawsuit Tuesday in the U.S. District Court for the Northern District of California, claiming that EA video games like NCAA March Madness, NCAA Football and NCAA Basketball violate NCAA rules prohibiting the use of college athletes’ names and images in commercial ventures.
It looks like Mr. Keller is trying to get class action status, which could make this a huge case and a potential black eye for the NCAA and EA. Apparently EA has copied the appearance and likeness of players, down to their personal clothing choices and hairstyles, without actually using the players’ names. However, many of the games allow users to upload rosters that include the actual players’ names. This case just might have legs. We’ve added it to our tracking list and will keep you posted regarding substantive developments.
In an interesting twist, Taser International voluntarily dismissed this case before Linden even answered the complaint. Taser filed a Notice of Voluntary Case Dismissal on May 5, 2009. Because Linden never filed an answer, the dismissal is without prejudice and Taser could choose to refile the case at a later time if desired. But for now, this case is closed.
I’m short on time today, but Bloomberg reported a new lawsuit filed by Taser against Second Life (via its parent Linden Research Inc.). No sense in recreating the wheel, and Virtual World News has already posted a nice intro to the case here.
The case is Taser Interntional v. Linden Research in the District Court for Arizona, case 2:09-cv-00811-ROS, filed April 17, 2009.
We’ll monitor developments and keep you posted.
Sorry for the delay on this, but on March 23, 2009, Worlds Inc. amended its complaint in the lawsuit against NCSoft to assert a second patent. The lawsuit now involves both of the following patents: Patent 7,181,690, Patent 7,493,558. The latter patent’s claims do not appear as broad as the earlier patent’s claims, which means that it will likely be more difficult to prove infringement, but also makes it generally more difficult to assert that the latter patent is invalid (because there are more elements in each claim that must be shown to be in the prior art).
For example, claim 6 of the ‘558 patent reads:
6. A computer readable medium with a software program recorded therein, the software program being for enabling a plurality of users to interact in a virtual space, wherein each user has a computer associated therewith, wherein each computer has a client process associated therewith, wherein each client process has an avatar associated therewith, and wherein each client process is in communication with a server process, wherein the software program includes instructions for: (a) monitoring, by each client process, a position of the avatar associated with the client process; (b) transmitting, by each client process to the server process, the position of the avatar associated with the client process; (c) transmitting, by the server process to each client process, the positions of less than all of the avatars that are not associated with the client process; and (d) determining from the positions transmitted in step (c), by each client process, a set of the avatars that are to be displayed.
Whereas claim 1 of the ‘690 patent reads:
1. A method for enabling a first user to interact with other users in a virtual space, wherein the first user and the other users each have an avatar and a client process associated therewith, and wherein each client process is in communication with a server process, wherein the method comprises: (a) receiving a position of less than all of the other users’ avatars from the server process; and (b) determining, from the received positions, a set of the other users’ avatars that are to be displayed to the first user, wherein steps (a) and (b) are performed by the client process associated with the first user.
Not surprising in view of the court’s claim construction that heavily favored Activision, it appears that Gibson and Activision have settled this case. Judge Pfaelzer of the District Court for the Central District of California, on April 17, 2009, entered an ORDER RE DISMISSAL. Activision and Gibson filed a Notice of Settlement and Stipulation of Dismissal With Prejudice, in response to which the court dismissed the case with prejudice, meaning that is cannot be refiled, and the case is CLOSED. While details of the settlement are unknown, I’m willing to bet heavily that the settlement favors Activision. Gibson would have had a herculean task in trying to convince the judge or an appellate court to overturn the Markman order construing the claims with respect to musical instruments. If I find out details of the settlement, I will update this post. We’re otherwise removing this one from the tracker list, and we’re done.
You may recall that Worlds.com sued NCSoft last Christmas Eve in the Eastern District of Texas. In an interesting development, the case has been transferred to the Northern District of California. On April 13, 2009, NCSoft filed an unopposed motion to transfer the case to California, and the judge signed the order on April 14, 2009, to transfer the case on or after May 4, 2009.
This is likely the result of recent court decisions putting the breaks on plaintiffs forum shopping into the Eastern District of Texas. However, in view of the fact that Worlds.com did not oppose the motion, the court did not need to make any independent analysis of whether the Eastern Texas wsa proper or not in this case.
We will continue to monitor developments in this case.
Dream Games of Arizona Inc. v. PC Onsite
9th Cir., No. 07-15847, 4/2/2009
This is a placeholder post until we can review and provide more info. But in brief…
(From BNA): A company that engages in illegal conduct with its copyrighted video bingo game system is nevertheless entitled to statutory damages in an infringement suit, the U.S. Court of Appeals for the Ninth Circuit said April 2 (Dream Games of Arizona Inc. v. PC Onsite, 9th Cir., No. 07-15847, 4/2/2009).