Incorporated et al.
Digital Reg of Texas LLC sued Valve Corporation, Adobe Systems Inc., Electronic
Arts, Inc., Symantec Corporation, AVG Technologies USA, Zynga Inc., Zynga Game
Network Inc., Valve Corporation, Ubisoft Entertainment, Inc. and Intuit Inc. for
infringement of one or more of seven patents related to digital rights
management. The suit, which echoes a similar suit Digital Reg settled in 2009,
claimed among other things that software such as EA’s Download Manager and
Adobe’s Digital Publishing Suite had infringed its patents.
included digital rights management product restrictions that infringed Digital
Reg’s patents. For example, EA uses the Download Manager to allow games that
are purchased online to download directly to a computer.
between Digital Reg and EA. Digital Reg was seeking royalties for the infringed
patents, and requested EA’s financial information regarding their Origin
platform for distributing online games. EA maintained that Origin is a
free-to-use platform, and because EA’s computer games were not allegedly
infringing, the financial information regarding Origin would have only marginal
motion in part which was brought jointly by Adobe, Symantec, and Ubisoft
jointly regarding non-infringement of patents.
favor of Adobe on Digital Reg’s claims for infringement, after a jury verdict
on September 8, 2014. The jury verdict found that Digital Reg’s patents were
invalid as obvious. Any remaining claims against Adobe were dismissed with
prejudice. Judgment was also entered in favor of Ubisoft on Digital Reg’s
claims for infringement. Any remaining claims against Ubisoft were dismissed
with prejudice as well.
claims against all other Defendants which were previously dismissed. This
included Docket Nos. 309 (Zynga Game Network Inc. and Zynga, Inc.), 319 (AVG
Technologies USA, Inc.), 346 (Intuit Inc.), 387 (Valve), 460 (EA), and 582
(Symantec). This was a final, appealable judgment. On April 8, 2016, the
judgment in favor of Adobe was affirmed.
There are a number of implications stemming from the outcome of this case.
Adobe celebrated the outcome as a big win, as did members of the tech community
who have been advocating for patent reform. Patent reform advocates argue for a
reduction in the number of software patents as well as limiting the amount of
patent protection currently in place. Adobe argued that Digital Reg was going
after money-making companies seeking to profit after failing to find success
with its patents. Whichever side you take, this case pushes in the direction of
reform for the IP community.
The U.S. Supreme Court on Monday put tighter restrictions on where patent owners can file infringement lawsuits, a decision that upends nearly 30 years of established practice and will likely force many lawsuits out of the patent litigation hotbed of the Eastern District of Texas.
In an 8-0 decision, the Supreme Court reversed a Federal Circuit rule that effectively allowed a patent holder to file suit anywhere a defendant makes sales, which critics complained has fueled a plague of forum shopping and a concentration of cases in a few jurisdictions.
Ruling in favor of liquid sweetener maker TC Heartland LLC, the justices reinstated a more restrictive standard from a 1957 Supreme Court decision, saying it remained good law.
“We therefore hold that a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute,” the court wrote.
We previously reported on White Kunckle’s assertion of U.S. Pat. No. 8,540,575 against EA. Last year, EA secured a win against the patent under 35 USC 101 when the District of Utah found the claims were directed to ineligible subject matter. That decision was appealed to the Federal Circuit, who affirmed the holding on April 6, 2017. (Fed. Cir., Case no. 2016-2286).
EA also had an inter partes review pending against the ‘575 patent. In view of the Federal Circuit’s decision, White Knuckle informed the USPTO that they disclaimed every claim of the patent. As a result, the USPTO terminated the IPR proceedings on May 12. (IPR2016-00634).
Ineligible subject matter remains one of the most frequent attacks on patent validity. The lines have become more clear since Alice v CLS Bank in 2014, but it is still very difficult to predict whether any particular patent claim directed to software features will survive. White Knuckle’s ‘575 patent did not.
We found that six weeks before his resignation this former employee, Anthony Levandowski, downloaded over 14,000 highly confidential and proprietary design files for Waymo’s various hardware systems, including designs of Waymo’s LiDAR and circuit board. To gain access to Waymo’s design server, Mr. Levandowski searched for and installed specialized software onto his company-issued laptop. Once inside, he downloaded 9.7 GB of Waymo’s highly confidential files and trade secrets, including blueprints, design files and testing documentation. Then he connected an external drive to the laptop. Mr. Levandowski then wiped and reformatted the laptop in an attempt to erase forensic fingerprints.
If these allegations are true, Uber is in for a heap of pain, which it does not need right now in the wake of the other scandals its dealing with (i.e., sexual harassment, #deleteUber campaign).
The moral of the story:
The allegations in the complaint, believe it or not, probably happen more often than you think. As noted in the article, it was only happenstance (read: dumb luck) that Google was alerted to the alleged theft of trade secrets. This situation is why document management systems are critical to enterprise security, including video game developers. Can someone walk out with your code without any record or trace? If so, you need to rethink your document repository solution. A secure document repository (E.g., iManage is one good example) has become critical to enterprise security to track who is accessing, editing, printing, using, copying, or even exporting each and every file your company has. If you don’t have one… get one.
For those following the Apple v. Samsung design patent wars, here’s a good synopsis of the oral arguments that were held this morning at the United States Supreme Court.
If the link doesn’t work, cut and paste this in your browser:
Update: Full Transcript of Arguments: https://www.supremecourt.gov/oral_arguments/argument_transcripts/2016/15-777_1b82.pdf.
Lohan v. Take-Two Interactive Software Inc., 156443/2014, New York State
Supreme Court, New York County (Manhattan).
2014 actress Lindsay Lohan filed suit against Take-Two Interactive Software
Inc. claiming that the video game Grand Theft Auto V violated Lohan’s privacy by
using her likeness without her permission.
Lohan accused Take-Two of basing the GTA character Lacey Jonas after her
with its similar style of dress and mannerisms. The Jonas character is a
celebrity who enlists other players to help her dodge paparazzi in a race
throughout Hollywood. Lohan alleged that the character had a similar voice and
similar physical features. She also stated that Take-Two unlawfully used her
signature peace sign pose.
this month, the lawsuit was tossed out by a New York state appeals court after
the court found Lohan’s likeness was not used in the Grand Theft Auto video
game. The court stated that the game’s characters and unique storyline rendered
it a work of fiction and satire, and therefore the game was protectable by the
court also dismissed Lohan’s claim that her image was used in the video game’s
advertising materials despite Lohan’s claim that the avatar used in the
advertisements was a depiction of her.
attorney stated that they planned to appeal and we will provide updates in the
event an appeal is filed.
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA INC., at al.
United States Court of Appeals for the Federal Circuit
Cases 2015-1080, -1081, -1082, -1083, -1084, -1085, -1086, -1087,
-1088, -1089, -1090, -1092, -1093, -1094, -1095, -1096,
-1097, -1098, -1099, -1100, -1101
Decided September 13, 2016
On September 13, 2016, Judges Reyna, Taranto, and Stoll reversed the District Court’s grant of judgment on the pleadingsunder Fed. R. Civ. P. 12(c)that the asserted claims of U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and 6,611,278 (‘‘the ’278 patent’’) are invalid, and remanded to the Central District of California for further proceedings. (Read full decision here)
As previously reported, the patents in suit describe technology for automatically animating lip synchronization and facial expressions of animated characters, a technique commonly used in video game development. Judge Wu of the Central District of California held the patents invalid as lacking patent eligible subject matter under 35 U.S.C. 101 in the wake of the Supreme Court’s Alice v. CLS Bank decision. McRo appealed, and the Federal Circuit now reverses that holding.
Claim 1, which is dispositive for purposes of this appeal, reads:
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.
To begin its analysis, the Court first performed some initial claim construction to help resolve the question of patentability under section 101, stating that the claims are limited to rules that evaluate subsequences consisting of multiple sequential phonemes. Slip op. at 19. With this in mind, the Court then went on to analyze section 101 in more detail.
As stated by the Court, the abstract idea exception prevents patenting a result where it matters not by what process or machinery the result is accomplished. Id. (citing O’Reilly v. Morse, 56 U.S. 62, 113 (1854)). One should not assume that such claims are directed to patent ineligible subject matter, however, because all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (“Mayo”)). Lastly, the Court compares and contrasts the Flook and Diehr decisions in the run up to its substantive analysis of the claims at hand.
Initially, the Court found that the District Court too broadly oversimplified the claims when stating the “idea” embodied by the claims. Courts must be careful to avoid oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims. Id. at 21. Instead of being drawn to the abstract idea of “automated rules-based use of morph targets and delta sets for lipsynchronized three-dimensional animation” as alleged by the District Court, the Federal Circuit found the claims instead to be limited to rules with specific characteristics. The claims themselves set out meaningful requirements that must be taken into account. Id. Interestingly, the Court further relied on the specification to confirm the idea of the claim. Id. at 22. Because the claims are directed to rules with certain common characteristics, they are directed to a genus, and claims directed to the genus of an invention, rather than a particular species, have long been acknowledged as patentable. See, e.g., Diamond v. Chakrabarty, 447 U.S. 303, 305 (1980).
The Court next turns to the preemption issue, and looks to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. Id. at 23.
This is where we take a turn to the muddy. In its attempt to articulate what the claims are actually directed to, the Court states “While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.” Uh-oh. Did you see it? The Court conflates 101 with a prior art analysis that typically takes place under 35 USC 102-103, which hasn’t happened yet in this case. This is not the first time this has happened. To be fair, the Supreme Court did it first, and the Federal Circuit appears ready to throw in the towel and follow suit. Patent practitioners beware, it seems this technique of 101 analysis is here to stay. If something is REALLY old, it’s an abstract idea, but if it’s instead just more recent than your own invention, it is just prior art. In any event, the Court ultimately found that it is the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks. This is unlike Flook, Bilski, and Alice, the Court stated, where the claimed computer-automated process and the prior method were carried out in the same way (another conflation of 101 with 102 and 103). Id. at 24-25.
Despite the fact that the court found that the claims do NOT preempt all processes for achieving automated lip-synchronization of 3-D characters, the Court takes it a step further. The absence of preemption does not demonstrate patent eligibility. Id. at 25. Rather, the Court confirms that the claims do not preempt all techniques for automating 3-D animation that rely on rules, because the claimed rules must be rendered in a specific way. This is one point that the Defendants will be sure to hone in on when it comes time for the trier of fact to assess infringement in the first instance, as the Court goes into some detail on alternative types of rules that could, in theory, exist or be used and not infringement the claims. Id. at 26-27.
Ultimately, the Court states that, when looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. Id. at 27. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Id. Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea, and the Court need not address Alice step two. Id. The takeaway: SOFTWARE PATENTS LIVE ON! Had these claims been struck down under 101, then thousands of other software patents would be of little more value than the paper they’re printed on.
As you may recall, when we previously reported on this case after oral arguments, we stated:
…in view of the overall tone of the questions, the panel seems more likely than not to reverse the district court’s holding of invalidity under Section 101, and remand this case for further proceedings to reassess 101 eligibility using the correct standard, and/or also to determine infringement and validity under 35 U.S.C. §§102-103 (novelty and obviousness).
We were mostly right. The 101 issue appears to be resolved.
Many video games have focused on space exploration; this premise is hardly unique. The novelty with “No Man’s Sky”, and the reason for so much excitement and anticipation over its imminent release, lies primarily in the ambitious size of the universe available for exploration in the game. In traditional video game programming, objects that make up the in-game environments must be created individually by writing numerous lines of code into the game for each asset or piece of art — a labor-intensive and time-consuming process limiting the number of objects that can be included in one game.
Hello Games ostensibly avoids these issues by using a programming technique known as procedural generation. Rather than drafting unique lines of code to create each game asset, procedural generation provides a computer with a system of rules and parameters for the game universe, and then relies upon the computer to create in-game assets in accordance with those rules. In other words, each object in “No Man’s Sky” is created not by individual lines of code written specifically for that asset by a programmer, but instead is created by the computer applying algorithms created by the programming team. These procedural rules could cover everything from the way interstellar and spaceship physics work, to the way vegetation looks on planets with particular climates, to the types and behaviors of wildlife. Using this technique, Hello Games has created an in-game universe of unprecedented size and scope, containing 18,446,744,073,709,551,616 accessible planets.
In late July, the media began to report that a company called Genicap had raised the possibility that “No Man’s Sky” might be running afoul of Genicap’s patent rights in the Superformula. The Superformula is a modified version of the equation that describes a circle, and it was discovered by Johan Gielis around the turn of the 21st Century. Changing particular variables within the Superformula causes the equation to describe all manner of geometric shapes and natural forms. Genicap (Gielis’ employer) received U.S. patent No. 9,317,627 (the “‘627 patent”) on April 19, 2016. The ‘627 patent’s primary claim describes the Superformula as “a method for creating timewise display of widely variable naturalistic scenery … on an amusement device with minimized data storage and processing requirements … ”
As previously reported, Ed Sheeran was sued back in June for copyright infringement. Well either the sharks smell blood, or perhaps there’s something in the water, but be’s been sued again based on another of his songs, as reported by CNN.
This time Ed Sheeran has been sued by the estate of Marvin Gaye, the same folks who sued (and won, pending appeal) Robin Thicke in the Blurred Lines case. The allegation? That Ed Sheeran’s Thinking Out Loud infringes the copyright in Marvin Gaye’s “Let’s Get It On.” First, listen for yourself:
Ed Sheeran, Thinking Out Loud:
Marvin Gaye, Let’s Get It On:
What do you think? Does this case have legs?
U.S. SUPREME COURT RULES IN KIRTSAENG V. JOHN WILEY & SONS, INC.
217 U.S.C. 505.
3Fogerty, 29 USPQ2d at 1888.
4See Fogerty, 29 USPQ2d at 1889, fn. 19.
5Specifically, the rulings below follow the Second Circuit’s decision in Matthew Bender & Co. v. West Publishing Co., 57 USPQ2d 1708 (2d Cir. 2001), which held that “objective reasonableness is a factor that should be given substantial weight in determining whether an award of attorneys’ fees is warranted.” Id. at 1712.
6See Slip Op. at 12.
7See Slip Op. at 1.
8See Slip Op. at 6-9.
9See Slip Op. at 4.
10See Slip Op. at 9.
11See Slip Op. at 10.
12See Slip Op. at 12.
This isn’t video game related, but music copyright cases always interest me. First, the details, from Law360:
New York (June 8, 2016, 8:14 PM ET) — British singer Ed Sheeran violated U.S. copyright laws by basing a portion of his hit song “Photograph” on a chorus from another song without first obtaining permission, according to a complaint by two songwriters who seek at least $20 million in damages.
Martin Harrington, Thomas Leonard and HaloSongs Inc. — a publishing company owned by Harrington — allege that the chorus sections of their song “Amazing” are substantially similar to the chorus in Sheeran’s song, according to the complaint filed Wednesday in California federal court.
The songwriters claim that Sheeran and John McDaid, the co-writer of “Photograph,” had access to “Amazing” because a version of it was covered by Matt Cardle, the 2010 winner of the music competition show “The X Factor.” Cardle’s version of “Amazing” peaked at No. 84 on the U.K. singles chart and was widely played on various forms of media, according to the complaint.
Salt Lake City, Utah. June 2, 2016. U.S. District Judge Jill N. Parrish granted Electronic Arts Inc.’s motion to dismiss, saying that Utah-based White Knuckle Gaming LLC cannot sue for patent infringement because the patent at issue — which describes a method for updating sports videos games to reflect real-world changes like statistics, athlete appearances and uniforms — covers an abstract idea and does not include any additional elements that transform the claim into patent-eligible material.
“It is a longstanding business practice in the video game industry to update sports video games parameters to reflect real-world developments,” Judge Parrish wrote.
According to Judge Parrish, the patent doesn’t have any additional elements that transforms the abstract idea into an inventive concept because it doesn’t rely on anything other than generic computer equipment in order to be accomplished.
“The court holds that the patent is drawn to a patent-ineligible abstract idea, and merely requiring generic computer implementation fails to transform that idea into a patent-eligible invention,” Judge Parrish wrote.
The patent-in-suit is U.S. Patent Number 8,540,575 titled “Method and System for Increased Realism in Video Games.” One interesting thing about this case is the length of the claims that were invalidated. For example, representative claim 1 reads:
1. A game medium configured to provide a sports video game in conjunction with a video game machine, the sports video game including video game rules and video game character parameters, the video game character parameters including video game character performance parameters associated with individual video game characters, the game medium being configured to cause the video game machine to perform a method comprising:
loading video game data stored by the game medium into a random access memory of the video game machine for playing the video game, the video game data including the video game rules and a particular video game character performance parameter associated with a particular individual video game character associated with a particular real-life sports athlete, wherein the particular video game performance parameter is based at least in part on a real-life performance of the particular real-life sports athlete playing in one or more real-life sporting events, the particular video game character performance parameter affecting the manner in which the particular individual video game character performs in the sports video game;
during a single sports season, receiving a series of updated video game character performance parameters from a data server via a network including the Internet, wherein each of the updated video game character performance parameters in the series is based at least in part on one or more different real-life performances of the particular real-life sports athlete in one or more sporting events performed during the single sports season;
updating the sports video game with each of the updated video game character performance parameters received, wherein each update changes the manner in which the particular individual video game character performs in the sports video game such that the particular individual video game character more closely simulates real-life performance attributes of the particular real-life athlete in the sports video game; and
enabling a user to control the particular individual video game character in the sports video game using a video game controller connected to the video game machine.
This is a case that will be closely and heavily scrutinized in the wake of Alice v. CLS Bank. Many practitioners will use this case as more fodder to try to read the tea leaves in the winds of change that is Federal jurisprudence on patent-eligible subject matter.
White Knuckle Gaming will likely appeal. Along with the McRO case currently pending at the Federal Circuit, this could be another pertinent case in the world of video game patents.
This case dealt with the copyright status of video games, particularly whether video games are eligible for registration. Atari Games Corporation released the paddle and ball video game Breakout in 1976. Atari applied for copyright registration for the work in 1987. Copyright Registrar Ralph Oman denied registration on February 13, 1987, and again on May 22, 1987, because the work “did not contain at least a minimum amount of original pictorial or graphic authorship, or authorship in sounds.” Atari challenged Oman’s rejections.
The District Court granted summary judgment to Oman, noting that video games are not per se copyrightable, or more creative than other mediums. The Court of Appeals reversed the decision and held that Breakout was copyrightable because it is a fixed work that meets the minimum requirement for creativity in copyright. This is a seminal case that helped establish the copyrightability of video games in general.
Google won a high-profile jury verdict Thursday that its use of Oracle’s copyrighted Java software code in its Android mobile operating system was protected by the fair use doctrine, clearing the company of liability that could have reached $8.8 billion.
2014, Martin O’Donnell’s employment was terminated by Bungie’s board of
directors. O’Donnell had been a composer for the Halo Series, as well as
Destiny, and had been employed since 2000, starting his career as an audio
O’Donnell filed a complaint against Harold Ryan, chief executive of Bungie,
claiming that Bungie violated its employee agreement, failing to pay him for “unused
vacation, paid time off, sabbatical time and other benefits.” The complaint
stated that other, separate grievances were being handled through arbitration.
On May 27, Bungie
filed a response denying all allegations. But, in Late July 2014, Bungie and O’Donell
agreed to a settlement of $95,019.13 for unpaid benefits and unpaid work.
Not really on-topic, so that’s all we got on this one.
Harmonix Music Systems, Inc. and Mad Catz, Inc. v. AI Automation LLC
District of Massachusetts, Case No. 15-CV-14138 Filed December 14, 2015
AI Automation LLC v. Harmonix Music Systems, Inc., Mad Catz, Inc., and GameStop Corp.
Eastern District of Texas, Case No. 2:15-cv-2109 Filed December 23, 2015
Patent owner AIA (not to be confused with the America Invents Act) accuses Harmonix et al. of infringing U.S. Patent No. 6,388,181 (“Computer Graphic Animation, Live Video Interactive Method for Playing Keyboard Music”) with the most recent game in the Rock Band franchise, Rock Band 4.
The ‘181 Patent concerns software for teaching a user to play the piano without the need for sheet music. Exemplary claim 26 recites:
A method for displaying a musical score to a user of a musical instrument having a plurality of keys comprising the steps of:
graphically depicting an object corresponding to a note to be played, the graphical position including a position relative to the key to be actuated, the graphical depiction of the note including a depiction of the method of attack of the play of the note, and
a temporal dimension indicating both the time for actuation of the note and the duration of the activation of the note.
AIA acquired the ‘181 Patent in January 2014, and this is the third round of lawsuits related to the ‘181 Patent since the acquisition. AIA sued Harmonix in March 2014, alleging infringement of the ‘181 Patent by Rock Band 3 and the controller accessories to the game. Harmonix settled that case for a confidential sum in June 2014. AIA also sued Activision Blizzard and Best Buy in November 2014, alleging that several games in the Guitar Hero franchise infringed the patent; that case confidentially settled in January 2015.
AIA allegedly began threatening litigation in regards to Rock Band 4 in October 2015 and demanded that Harmonix license the ‘181 Patent. Harmonix responded by filing the first present case, seeking declaratory judgment of patent noninfringement. AIA immediately filed the second present case, accusing Harmonix of willful infringement with regards to Rock Band 4.
We will continue to monitor this case and report any interesting developments.
Thanks to Daniel Douglas for preparation of this case note.