patent – Page 7 – Patent Arcade

Jul

A Mark Against Activision?

Patent Compliance Group, Inc. v. Activision Publishing, Inc.
U.S. District Court, Northern District of Texas
Case No. 10-cv-00288, Filed February 12, 2010

Original Post:

On June 1, 2010, PCG filed a notice for dismissal of the case under FRCP 41(a)(1). Rule 41 allows a plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Activision had not responded to PCG’s suit with any court filings before PCG filed the voluntary dismissal. Based on the amount of time between the lawsuit being filed and dismissed, the parties likely started settlement discussions immediately after the case was filed, and PCG kept agreeing to delay the deadline for Activision to file its Answer to the Complaint in view of ongoing settlement discussions.

Case Update:

The immense popularity of musical video games such as Guitar Hero, Band Hero and DJ Hero appears to have generated some unwanted attention for Activision Publishing, Inc. (“Activision”). In particular, on February 12, 2010, Patent Compliance Group, Inc. (“PCG”) filed a qui tam action against Activision, alleging that Activision has falsely marked many of its video games including Guitar Hero 5, Band Hero, DJ Hero and Guitar Hero Smash Hits (collectively “Activision video game products”) as patented or patent pending. Specifically, PCG alleges that Activision has violated 35 U.S.C. 292(a), which states, in relevant part, that:

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.

PCG’s complaint makes the following specific assertions of false patent marking:

- Activision’s Guitar Hero 5, DJ Hero, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 5,739,457 (“‘457 Patent”).

- Guitar Hero 5, DJ Hero, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,018,121 (“‘121 Patent”).

- Guitar Hero 5, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,252,153 (“‘153 Patent”).

- Guitar Hero 5, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,268,557 (“‘557 Patent”).

- Guitar Hero 5, DJ Hero, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,369,313 (“‘313 Patent”).

- Guitar Hero 5, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,379,244 (“‘244 Patent”).

- Guitar Hero 5, DJ Hero, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,429,863 (“‘863 Patent”).

- Guitar Hero 5, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,758,753 (“‘753 Patent”).

- Guitar Hero 5, Band Hero and Guitar Hero Smash Hits video games are falsely marked with U.S. Patent No. 6,769,689 (“‘689 Patent”).

- Guitar Hero 5 and Guitar Hero Smash Hits video games are falsely marked with U.S. Design Patent No. D441,403 (“‘403 Patent”).

Guitar Hero 5, DJ Hero, Band Hero and Guitar Hero Smash Hits video games are falsely marked as “patent pending” or “patent applied for.”

Essentially, PCG is claiming that the scopes of the patents with which Activision’s video game products are marked do not cover the methods or systems of the actual products. In addition, where Activision has marked products with “patent pending” or “patent applied for,” PCG’s position is that none of Activision’s patent application has a potential scope of protection which would cover any aspect of the specified video game products.

Success in a qui tam action of this nature will depend heavily on whether PCG is able to show that the scope(s) of one or more of the specified patents do not cover the specified products as well as whether Activision had an intent to deceive the public with those markings. Generally, a simple denial of intent to deceive is insufficient to escape liability under section 292. However, Activision may avoid liability if it is able to sufficiently prove that it had a reasonable belief that the articles were within the scope of the patents with which the product were marked.

If PCG prevails on one or more of its false marking claims, the assessed damages may be astronomical given the number of copies of Activision’s video game products that have been sold. Although in some cases, courts have attempted to reign in the potential for substantial sums of damages, the Federal Circuit recently held that damages for false markings are to be calculated on a per article basis. See Forest Group, Inc. v. Bon Tool Co., 2009 WL 5064353 at *4-5 (Fed. Cir., Dec. 28, 2009). However, a court may set the damages assessed to each article well below the $500 maximum in order to avoid what they might feel is an excessive penalty.

We will keep you posted.

This case is Patent Compliance Group, Inc. v. Activision Publishing, Inc., Case 3:10-cv-00288-B (N.D. Tex.).

Jun

Supreme Court Decisively Extends First Amendment Protections to Video Games

Brown et al. v. Entertainment Merchants Association et al.
United States Supreme Court
Case No. 08-1448

The Supreme Court ruled on Monday, June 27, 2011, that a California law regulating the sale or rental of violent video games to children was unconstitutional on First Amendment grounds. “No doubt a state possesses legitimate power to protect children from harm,” said Justice Antonin Scalia, who wrote the majority opinion, “But that does not include a free-floating power to restrict the ideas to which children may be exposed.” The California law bars the selling or renting of video games to people under 18 when the games involve killing, maiming, dismembering or sexually assaulting a human being. Retailers who violated the act would have been fined up to $1,000 for each infraction.

In ruling that the California law restricted free expression without valid justification, Justice Scalia was joined by four justices, while Chief Justice Roberts, and Justice Alito filed concurrences, and Justices Thomas and Breyer dissented. This is the first emphatic statement from the nation’s highest court that video games qualify for full First Amendment protections. The court noted that “Like the protected books, plays, and movies that preceded them, videogames communicate ideas—and even social messages…That suffices to confer First Amendment protection…Whatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment’s command, do not vary when a new and different medium for communication appears.”

In addition to confirming video games as free speech, the court drew a line between committing violence, and depicting violence. Citing last year’s 8-1 decision in U.S. v. Stevens, 559 U.S. (2010), striking down a federal law making it a crime to buy and sell depictions of animal cruelty like dog fighting videos, the court found the California statute to be an impermissible content-based restriction on speech, and that “there was no American tradition of forbidding the depiction of animal cruelty — though States have long had laws against committing it…. As in Stevens, California has tried to make violent-speech regulation look like obscenity regulation by appending a saving clause required for the latter. That does not suffice.”

The court also rejected California’s attempt to create a wholly new category of content-based regulation that is permissible only for speech directed at children. “That is unprecedented and mistaken… No doubt a State possesses legitimate power to protect children from harm… but that does not include a free-floating power to restrict the ideas to which children may be exposed. California’s argument would fare better if there were a longstanding tradition in this country of specially restricting children’s access to depictions of violence, but there is none.” Scalia then went on to cite Grimm’s Fairy tales as examples of gory material we already feed to children. Specifically he talked about the punishment for the evil stepmother in Snow White, who is made to dance in red-hot slippers till she fell dead on the floor. (This is definitely not in the Disney version!)

Justice Thomas’ dissent specifically disagreed with the majority on the point of regulating speech for minors. His dissent asserted the drafters of the First Amendment did not understand it to protect minors’ free speech rights—“The freedom of speech, as originally understood, does not include a right to speak to minors (or a right of minors to access speech) without going through the minors’ parents or guardians.” Justice Breyer also dissented, saying the statute survived First Amendment scrutiny. He relied on studies that he said showed violent video games were positively associated with aggressive behavior, arguing that the court should defer to legislatures, and expert opinions in such cases.

This is a landmark ruling, with implications for more than just violence in video games. As the court noted, this case is the latest in a series of attempts by the California legislature to regulate entertainment content. Industry experts predict that as gaming companies continue to expand their footprint and increasingly use digital distribution methods, including social networking games and mobile titles, legal action relating to privacy and security in games will increase. For more industry analysis, see Gamasutra.

Jun

News: Forterra Systems sues Avatar Factory

Forterra Systems, Inc. v. Avatar Factory
case 5:05-cv-04472-PVT, N.D. Cal

Case Update:
Following a confidential settlement by the parties, this case was dismissed with prejudice on January 17, 2008.

Original Post:
Forterra Systems, Inc. on November 3, 2005, filed a patent infringement lawsuit against the Avatar Factory for infringement of U.S. Patent No. 6,784,901, entitled “Method, System and Computer Program Product for the Delivery of a Chat Message in a 3D Multi-User Environment.” Claim 1 of the ‘901 patent reads as follows:

1. A system for delivering a message between a sender and a recipient in a three-dimensional multi-user environment, wherein said three-dimensional multi-user environment maintains respective digital representations of the sender and the recipient, comprising:
a sender interface; and
a recipient interface, including a recipient viewport;
wherein said recipient interface receives the message from said sender interface, maps the message to a texture to generate a textured message, and renders said textured message at locations along a path in the three-dimensional multi-user environment, whereby the recipient can visually ascertain at least portions of the path of the textured message through said recipient viewport.

The lawsuit was filed in the Northern District of California, and is docketed as case no. 5:05-cv-04472-PVT. We will add this case to our tracking list and update of any significant developments.

Jun

News: Nintendo has a Wii patent problem

Case Update:

This case is now closed. On March 7, 2007, plaintiff Interlink filed a voluntary dismissal of the case under FRCP 41(a) 1. Specifically this allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Nintendo had not responded to Interlink’s suit with any court filings before Interlink filed the voluntary dismissal.

Original Post:

In today’s economy, it is inevitable that any successful product will result in the filing of at least one lawsuit for patent infringement. Nintendo similarly appears to have its first lawsuit based on the Wii. Interlink Electronics, Inc., owner of U.S. Patent. No. 6,850,221, filed a lawsuit against Nintendo on December 4, 2006, in the United States District Court for the District of Delaware. The lawsuit alleges patent infringement based on Nintendo’s Wii controller.

The ‘221 patent is entitled TRIGGER OPERATED ELECTRONIC DEVICE. We will keep you posted as we learn more regarding this lawsuit. All claims of the ‘221 patent are reproduced below for your own analysis and reading pleasure:

1. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between a first finger and a thumb of a user’s hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the first finger of the user’s hand; an electronic circuit mounted on a board contained within the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board, the first switch being responsive to pressure selectively to open and close the electronic circuit such that the electronic circuit generates a first output signal upon operation of the first switch, the electronic circuit further including a second switch on the second side of the board, the second switch being responsive to pressure selectively to open and close the electronic circuit upon operation of the second switch; a first control element mounted with the housing at the first face of the contoured step and operatively connected to the first switch to be responsive to finger pressure such that pressure applied to the first control element causes the first control element to operate the first switch; a second control element mounted with the housing at the top face and operatively connected to the second switch to be responsive to thumb pressure such that pressure applied to the second control element causes the second control element to operate the second switch; and an output signal emitter responsive to an output signal from the electronic circuit to wirelessly emit the output signal for reception by the electronically responsive system.

2. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between an index finger and a thumb of a user’s hand, the housing having a generally, straight elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the index finger of the user’s hand; an electronic circuit mounted on a board affixable to the housing within the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board, the first switch being responsive to movement of the user’s index finger selectively to open and close the electronic circuit such that the electronic circuit generates a first output signal upon operation of the first switch, and a second switch responsive to movement of the user’s thumb selectively to open and close the electronic circuit such that the electronic circuit generates a second output signal upon operation of the second switch, the electronic circuit further including a second switch on the second side of the board, the second switch being responsive to pressure selectively to open and close the electronic circuit upon operation of the second switch; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to pressure applied by the user’s index finger to operate the first switch; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to pressure applied by the user’s thumb to operate the second switch; and an output signal emitter affixable to the housing and responsive to output signals provided by the electronic circuit to wirelessly emit the output signals for reception by the electronically responsive system.

3. A pointing device as in claim 2, wherein the second switch is a transducer responsive element.

4. A pointing device as in claim 2, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

5. A pointing device as in claim 2, wherein the output signal emitter is positioned to transmit in a direction generally along the longitudinal axis from the forward end the output signals provided by the electronic circuit.

6. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between a finger and a thumb of a user’s hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the finger of the user’s hand; an electronic circuit mounted on a board affixable to the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board and a second switch on the second side of the board; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to movement of the user’s finger to operate the first switch and thereby cause the electronic circuit to provide a corresponding first output signal; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to movement of the user’s thumb to operate the second switch and thereby cause the electronic circuit to provide a corresponding second output signal; and an output signal emitter affixable to the housing and responsive to output signals provided by the electronic circuit to wirelessly emit the output signals for reception by the electronically responsive system.

7. A pointing device as in claim 6, wherein the first switch is a mechanical switch and the first control element is operative to respond to pressure applied by the user’s finger to operate the first mechanical switch.

8. A pointing device as in claim 6, wherein the second switch is a transducer responsive element and the second control element is operative to respond to movement of the user’s thumb to cause a change in a condition of the transducer responsive element.

9. A pointing device as in claim 6, wherein the first switch is a transducer responsive element and the first control element is operative to respond to movement of the user’s finger to cause a change in a condition of the transducer responsive element.

10. A trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between an index finger and a thumb of a user’s hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the index finger of the user’s hand; at least one electronic circuit mounted on a board affixable to the housing, the board having first and second opposed sides, the at least one electronic circuit including a first switch mounted on the first side of the board, the first switch being responsive to movement of the user’s finger selectively to open and close the at least one electronic circuit and thereby generate a first output signal, and the at least one electronic circuit further including a second switch mounted on the second side of the board, the second switch being responsive to movement of the user’s thumb selectively to open and close the at least one electronic circuit and thereby generate a second output signal; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to movement of the user’s finger to operate the first switch; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to movement of the user’s thumb to operate the second switch; and an output signal emitter affixable to the housing and responsive to output signals provided by the at least one electronic circuit, wherein the output signal emitter is positioned to wirelessly transmit from the forward end a transmitted output signal in a direction generally along the longitudinal axis for receipt by the electronically responsive system.

11. A pointing device as in claim 10, wherein the at least one electronic circuit further includes a third switch mounted on the third side of the board, the third switch being responsive to movement of the user’s thumb selectively to open and close the at least one electronic circuit and thereby generate a third output signal; wherein the pointing device further includes a third control element mounted with the housing at the top face and operatively connected to the third switch to be responsive to thumb pressure such that pressure applied to the third control element causes the third control element to operate the third switch.

12. A pointing device as in claim 1, wherein the second switch is a transducer responsive element and the second control element is operative to respond to movement of the user’s thumb to cause a change in a condition of the transducer responsive element.

13. A pointing device as in claim 1, wherein the electronic circuit further includes a third switch responsive to pressure selectively to open and close the electronic circuit such that the electronic circuit generates a third output signal upon operation of the third switch; wherein the pointing device further includes a third control element mounted with the housing at the top face and operatively connected to the third switch to be responsive to thumb pressure such that pressure applied to the third control element causes the third control element to operate the third switch.

14. A pointing device as in claim 1, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

15. A pointing device as in claim 1, wherein the output signal emitter is positioned to transmit from the forward end a transmitted output signal in a direction generally along the longitudinal axis.

16. A pointing device as in claim 6, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

17. A pointing device as in claim 10, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

18. A pointing device as in claim 17, wherein the second switch is a mechanical switch and the first control element is operative to respond to pressure applied by the user’s finger to operate the second mechanical switch.

Jun

Update: Freedom Wave v. Mad Catz et al. (P) [C.D. Cal.] 2005

Freedom Wave LLC v. Mad Catz Inc. et al., CV 2:05-cv-02954 (C.D. Cal. 2005)

Technology at issue: Wireless game controllers

Case Update:

This case is now closed. In July of 2005 the case was ordered by the court to a private mediator based upon a stipulation of the parties. On February 8, 2006, Mad Catz filed a joint settlement report, and on March 3, 2006, the action was dismissed without prejudice.

Original Post:

Freedom Wave LLC, apparent owner of at least six patents directed to various technologies for wireless game controllers, has sued Mad Catz Inc., Nyko Technologies Inc., and Logitech Inc. for patent infringement. The specific patents at issue are:
U.S. Pat. No. 6,280,327 – Wireless Game Control Units
U.S. Pat. No. 6,878,066 – Wireless Game Control Units

In its complaint filed April 21, 2005, Freedom Wave LLC alleges that Mad Catz et al. infringe the above patents by “making, using, selling, and offering for sale, products embodying the patented invention including, but not limited to, wireless game controllers that feature vibration.” Complaint at 3-4 (emphasis added). In addition to the above-named patents, Freedom Wave LLC also owns the following patents, which were not asserted in the April 21, 2005, complaint:
U.S. Pat. No. 6,585,596 – Wireless Game Control Units
U.S. Pat. No. 6,659,871 – Wireless Game Control Units
U.S. Pat. No. 6,719,633 – Wireless Game Control Units
U.S. Pat. No. 6,743,101 – Wireless Game Control Units

The Patent Arcade will continue to monitor this case on a regular basis and provide new information as it becomes available.

Jun

Update: MP Games v. Shuffle Master (W.D Wash) [P]

MP Games LLC et al. v. Shuffle Master, Inc.
Case 2:05-cv-01017 (W.D.Wash., filed 6/6/05)

Case Update:
Pursuant to an agreement between the parties this case was dismissed with prejudice on October 10, 2006.

Original Post:

MP Games, Alliance Gaming, and Ballys Gaming have sued Shuffle Master for a misappropriation of trade secrets, breach of contract, and patent infringement. The patent at issue is U.S. Pat. No. 6,460,848. The reason we’re tracking this case is because the patent is directed to software algorithms used by a card reader in the discard rack to determine which cards have been dealt and played in a casino game, based on a bar code of sorts. While not strictly a video game, the software aspect of this case presents an interesting twist in conventional “gaming.”

Figures 5-6 of the ‘848 patent are reproduced below:

The Abstract of the ‘848 patent reads as follows:
“A system automatically monitors playing and wagering of a game, including the gaming habits of players and the performance of employees. A card deck reader automatically reads a symbol from each card in a deck of cards before a first one of the cards is removed. The symbol identifies a respective rank and suit of the card. A chip tray reader automatically images the contents of a chip tray, to periodically determine the number and value of chips in the chip tray, and to compare the change in contents of the chip tray to the outcome of game play for verifying that the proper amounts have been paid out and collected. A table monitor automatically images the activity occurring at a gaming table. Periodic comparison of the images identify wagering, as well as the appearance, removal and position of cards and other game objects on the gaming table. A drop box automatically verifies an amount and authenticity of a deposit and reconciles the deposit with a change in the contents of the chip tray. The drop box employs a variety of lighting and resolutions to image selected portions of the deposited item. The system detects prohibited playing and wagering patterns, and determines the win/loss percentage of the players and the dealer, as well as a number of other statistically relevant measures. The measurements provide automated security and real-time accounting. The measurements also provide a basis for automatically allocating complimentary player benefits.”

Claim 1 of the ‘848 patent reads as follows:
“1. A card deck reader, comprising:
a housing having a cradle sized to receive a plurality of playing cards; and
a reading head positioned in the housing to read a respective symbol on each of the playing cards before a first one of the plurality playing cards is manually removed from the housing.”

We’ll monitor the case and keep you apprised of further developments.

Jun

Case: Microsoft v. i4i – SUPREME COURT DECISION

The long awaited decision in Microsoft v. i4i is out. In short, on June 9, 2011, the United States Supreme Court did a surprising thing: it affirmed! The Supreme Court did not change existing patent law or reverse the Federal Circuit. Recent patent case decisions of the Court have sometimes done both, but routinely at least one.

In Microsoft v. i4i, the Supreme Court affirmed that the burden of proof in court to prove patent invalidity is clear and convincing evidence. There are no exceptions for prior art that was not before the PTO or other matters. The Court also included observation, however, that new evidence carries more weight and goes further to sustain the unchanging burden. It also stated that jury instructions are available that the PTO did not have the opportunity to evaluate the evidence before granting the patent.

Read the decision here.

Oct

Motiva Opens New Case Against Nintendo in the ITC

As we last reported here, Motiva LLC has previously accused Nintendo Co., Ltd of infringing U.S. Patent No. 7,292,151 (‘151 Patent). The ‘151 Patent, entitled “Human Movement Measurement System,” is generally directed to a system for measuring human body movements for exercise and physical rehabilitation, and Motiva alleged that Nintendo’s Wii Fit product was an infringement. Its previous efforts at enforcement stalled when the patent underwent reexamination at the PTO, but Motiva has just added a new chapter to the story. Last week, Motiva filed a complaint with the International Trade Commission (ITC), accusing Nintendo of infringing both the ‘151 Patent and a continuation application (U.S. Patent No. 7,492,268). The essential claims remain the same. Motiva claims that its patents cover the human movement tracking employed by the Wii Fit.

The alternative venue is not an uncommon one for asserting patents, and does not rule out or obviate parallel district court proceedings (although one can be stayed for the other).

In an ITC action such as this, a complainant alleges that some other person (a respondent) is importing goods that is otherwise harming an existing U.S. (domestic) industry. If the ITC concludes that such harm is being done, the ITC can issue an Exclusion Order, instructing U.S. Customs to block the future importation of goods that do the harm. To a company whose manufacturing facilities are located outside the U.S. (true for many consumer products companies these days), such an Exclusion Order can be every bit as painful as a district court injunction.

An ITC action is similar to a district court action in many ways. There is a complaint, there will be discovery (the Federal Rules of Civil Procedure are adopted at the ITC for many aspects of case management), there are motions, and there will be a hearing that is conducted much like a trial.

There are differences as well. Most notably, an ITC action is much faster than a typical district court action. In the ITC, a typical proceeding is scheduled for completion in just over a year (can be a bit longer for “complex” cases). The compressed schedule puts pressure on everyone, but the pressure usually affects the accused infringer more, since they do not control the timing of when the complaint is filed.

Another difference is the presence of a third party in the case. Unlike a district court action, an ITC investigation will also have an Investigative Staff Attorney, who is there to represent the interests of the citizens of the U.S. The Investigative Staff can participate in the case much like a party, reviewing discovery, asking questions, and filing responses to motions and objections.

Another difference is at the outcome of the case. The ITC cannot award monetary damages, and cannot redress past infringement. Instead, the remedy is the Exclusion Order, which will only affect attempted importations after the Order takes effect. Additionally, when an Exclusion Order is issued, the President of the United States has a period of time in which to review the case and reject it. Such a rejection is not common, but it can be made, for example, if the President deems that excluding the importation would unduly harm international relations.

We’ll keep you posted as to further developments, and in the meantime, please drop us a line if you have any questions about the case or the ITC.

Sep

Case Update: Konami v. Harmonix

In the beginning of June, Patent Arcade reported that Harmonix Music Systems, Inc. and Viacom Inc. were close to settlement in the Harmonix v. Konami case (one of two Harmonix/Konami cases). At that time, it was unclear whether the progress toward settlement in the Harmonix v. Konami case would affect sister case Konami v. Harmonix. It appears now that the two sides have reached an agreement in Konami v. Harmonix and filed a Motion to Dismiss in the Eastern District of Texas on September 15, 2010. The following day Harmonix filed a motion to dismiss a similar and concurrent case in Massachusetts.

The Motion to Dismiss indicates that:

Pursuant to the terms of a separate agreement, Plaintiffs Konami Digital Entertainment Co., Ltd. and Konami Digital Entertainment, Inc. (“Plaintiffs”) and Defendants Harmonix Music Systems Inc., MTV Networks Co., Viacom International Inc. and Viacom Inc. (“Defendants”), have agreed to settle, release, adjust and compromise all claims and counterclaims in the above-captioned action. The parties, therefore, move this Court under Rule 41(a) of the Federal Rules of Civil Procedure to dismiss the above-entitled cause and all claims by Plaintiffs against Defendants and all claims by Defendants against Plaintiffs made therein with prejudice.

Terms of the settlement have not been disclosed.

Jul

Case Update: Worlds.com Reopened???

In an interesting turn of events, on July 22, 2010, Worlds.com requested that the court reopen its case against NCSoft. The dismissal of the case on April 23, 2010, was conditional on settlement, and the court explicitly stated:

IT IS HEREBY ORDERED that this action is dismissed with prejudice; provided,
however, that if any party hereto shall certify to this Court, with a proof of service of a copy on opposing counsel, within 90 days from the date hereof, that the agreed consideration for the settlement has not been delivered over, this Order shall stand vacated, and the action shall be restored to the calendar to be set for trial.

So it appears that Worlds.com, at least, believes that the settlement conditions haven’t been satisfied. Still waiting to get a copy of Worlds.com’s request to reopen the case, and will update accordingly.

Jun

Case Analysis: Debonneville v. Pierce

Debonneville v. Pierce

United States District Court for C.D. Cal.

Case No. 2:07-CV-03776-R-MAN), Settled May 5, 2008

This wasn’t an IP lawsuit, but it was a bitter dispute between the owners of Internet Gaming Entertainment. IGE is a virtual property company that engages in buying and selling virtual currency and items in MMO games for real money. Even though these games prohibit real money trading, the virtual goods industry is booming – according to the amended complaint, Goldman-Sachs once valued IGE at $220 million.

Alan Debonneville, a Swiss citizen living in Hong Kong and co-founder of IGE, initially filed a complaint in June of 2007 against co-founder Brock Pierce. The original complaint was sealed three months later, but Virtually Blind, who saw the complaint before it was sealed, said it was full of scandalous accusations. For example, Kotaku said “the Complaint … includes third-hand allegations of cash from an earlier venture being spent on illegal drugs, a claim that Pierce’s dog was shot by the “Spanish FBI,” and allegations of minors being transported across state lines for sex. The complaint even takes a swipe at former-child-actor Pierce’s filmography (Pierce played a young Emilio Estevez in The Mighty Ducks and The Mighty Ducks 2, and the lead in First Kid). In short, this is not your average business spat.”

According to the amended complaint, filed in September 2007, Debonneville met Pierce while playing Everquest online. Debonneville was selling virtual goods in Everquest in 2000 and discussed his business plan with Pierce, who was living in Spain. Pierce requested that Debonneville come to Spain to negotiate a business arrangement. “Impressed with the promises of riches that Pierce made, in November of 2001, Debonneville traveled to Spain from Switzerland to meet with Pierce.” Following those talks, IGE was formed, allegedly with certain promises of profits and stock for Debonneville.

The amended complaint claimed, inter alia, breach of fiduciary duty, breach of contract and fraud. Virtually Blind said that allegedly “Pierce deprived Debonneville of millions of dollars Debonneville was owed under his agreements with IGE. Debonneville names an even dozen claims ranging from breach of fiduciary duty to fraud. Along the way he accuses Pierce of failing to pay taxes owed to the Spanish government, using corporate funds for personal expenses, falsely telling Debonneville that one of the other executives in IGE was blackmailing Pierce, and partnering with a third party, Jonathan Yantis, to exploit bugs in game software to make unauthorized duplicates of in-game items and currency to offer for sale via IGE.”

Pierce threw the accusations back at Debonneville in his answer and counterclaim by alleging, as Virtually Blind put it, that Debonneville, “while overseeing IGE’s trading arm, overpaid certain people for virtual goods bought on behalf of IGE — including one of the lawyers who now represents Debonneville on this case — in order to secure favor and personal benefits, in breach of Debonneville’s fiduciary duty to IGE.”

Minutes from March 2008 stated that the parties had reached a settlement on all essential terms and that the parties needed to file a stipulation of dismissal by April 14. But the hostilities continued and the settlement failed – no stipulation was filed by the deadline.

The judge ordered a status conference to see why the settlement hadn’t been finalized and the result of that conference was a temporary restraining order against Pierce. The TRO prevented Pierce from “failing to comply with the terms of the settlement” and specifically kept Pierce from “contacting any bank for Debonneville or his attorneys for purposes of reversing any payment Pierce made to Debonneville under the terms of the parties’ settlement agreement in this lawsuit […], attempting to reverse any payment made to Debonneville or his attorneys […], taking any action to sell, assign, [or] transfer […] any asset owned directly or indirectly by Pierce, unless such action is performed solely to raise funds to be paid to Debonneville, [or] filing any suit relating to the settlement, Debonneville or his attorneys, other than a personal bankruptcy suit.” The court granted the TRO because those acts would cause “irreparable injury” as they “would be part of a wrongful scheme by Pierce, already commenced, to attempt to illegally recover settlement payments already paid to Debonneville or to avoid paying Pierce’s settlement obligations.”

Another hearing was set for May 5 to determine whether the restraining order should be made permanent. The minutes from that hearing revealed that Pierce paid Debonneville the undisclosed settlement amount. After that hearing, a motion for sanctions against Pierce for his failure to attend a scheduled deposition remained (although it may have since been dropped because Pierce paid the settlement). But the emails contained in the exhibits to the motion and response show the hostility that existed between the lawyers and in this case overall.

Virtually Blind wasn’t surprised at the settlement given that the litigation would’ve likely become incredibly expensive and the parties probably wanted to avoid negative publicity. It’s still unfortunate because the issue of virtual property didn’t go in front of a judge. It would’ve been interesting to see how the judge would’ve acknowledged and responded to virtual property in a case concerning a business based on real money trading which violates the Terms of Service MMOs.

Check out Virtually Blind’s website for more extensive analysis of the case as it progressed.

Jun

Curtain Call on Gibson v. Harmonix

It seems that Gibson’s efforts to enforce its musical concert participation patent (U.S. Patent No. 5,990,405) have officially ended. Previously we told you that Gibson’s Tennessee case against Harmonix (and its “Rock Band” game) was on its way back on track after being on hold for a while. While it was on hold, a California court ruled that the same patent did not cover Activision’s “Guitar Hero” game, and it seemed likely that the Tennessee court would end up doing the same for “Rock Band.”

On Friday, the Tennessee court dismissed the case in view of a settlement that the parties had reached. This dismissal would appear to end the battle over this patent.

Settlement terms are confidential, although we can speculate that the things that happened while the case was on hold did not make Gibson’s life easy. First, proceedings at the Patent Office suggested that the “musical instrument” required by the Gibson patent had to be capable of making music. This may have caused Gibson to drop its claims against the “Guitar Hero” and “Rock Band” guitars (I’ve never been able to make actual music with those things), and the holdout claims may have been leveled against the drums in the “Rock Band” game (on the theory that the drums could at least still make music).

Second, when the California court ruled that the Activision “Guitar Hero” game was not covered by the patent, the California court doubted whether the patent covered any interactive video game at all (the patent’s description focuses on letting a user simulate participation in a musical concert, which arguably is not an interactive game type of thing). Even if Gibson was now only focusing on the “Rock Band” drums as being “musical instruments” to get around the first issue, this finding by the California court would still have been thorny for Gibson to get around.

The vast majority of cases settle before the end of trial and appeals. Mounting evidence and court rulings developed during the case help resolve points of contention, and make the chances of success clearer for both parties to see, and eventually the parties are able to make the business decision to end it at terms they can live with. With the settlement in this case, here’s hoping Gibson, Activision, Harmonix and the others can move on and give us all the next generation in great musical games!

Apr

Case Update: Anascape, Ltd. v. Nintendo of America Inc.

On Tuesday, April 13, 2010, the U.S. Court of Appeals for the Federal Circuit ruled in favor of Nintendo in Anascape, Ltd. v. Nintendo of America Inc. (Docket No. 2008-1500), a patent infringement case appealed to the Federal Circuit from the U.S. District Court for the Eastern District of Texas (Case No. 9:06-CV-158).

In 2008, the District Court ruled that certain Nintendo video game controllers infringed U.S. Patent No. 6,906,700 (“the ‘700 patent”), which was owned by Anascape. Nintendo subsequently appealed the District Court’s ruling to the Federal Circuit, resulting in this decision.

Writing for a three-judge panel of the Federal Circuit, Judge Newman explained that the controlling issue on appeal was whether the ‘700 patent could claim priority to an earlier Anascape patent, namely, U.S. Patent No. 6,222,525 (“the ‘525 patent”).

In particular, the ‘525 patent had a filing date of July 5, 1996, while the ‘700 patent had a filing date of November 16, 2000. Both patents deal with video game controllers that receive user input in six degrees of freedom (“DOF”), but the ‘525 patent describes a controller with a “single input member” (e.g., a single trackball), while the ‘700 patent concerns itself with a control with multiple input members (e.g., two trackballs).

The question of priority was at the core of the Federal Circuit’s decision in this case, however, because after the filing date of Anascape’s ‘525 patent but before the filing date of Anascape’s ‘700 patent, Sony released its DualShock (and DualShock 2) controller in the U.S. And as Anascape conceded, if the ‘700 patent could not claim priority to the ‘525 patent, then Sony’s DualShock controllers would be prior art to the ‘700 patent and render the ‘700 patent invalid.

Relying on established Federal Circuit precedent and a recent ruling concerning the “written description” requirement that U.S. patents must meet, Judge Newman explained that “[t]o obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent ‘in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Slip Op. at 3.

In deciding whether this requirement was met here, the court reviewed the claims, specification, and drawings of the ‘525 patent. In conducting this review, the court observed not only that the claims, specification, and drawings of the ‘525 patent focused solely on “single input member” controllers, but also that the specification of the ‘525 patent asserted that multiple input member controllers had “significant disadvantages.”

After discussing the differences between the ‘700 patent and the ‘525 patent in greater detail, the court ultimately decided that the Anascape’s ‘700 patent could not claim priority to its ‘525 patent. Based on this conclusion, the court ruled that Anascape’s ‘700 patent was invalid (as a result of Sony’s DualShock controllers counting as prior art) and accordingly reversed the lower court’s ruling that Nintendo infringed.

We will keep you posted of any further updates in this case.

May

New Case: Keller v. Electronic Arts [Publicity]

Samuel Michael Keller v. Electronic Arts inc. et al.
case number 09-cv-1967
U.S. District Court for the Northern District of California

From Law360:

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.

Feb

Case: Harmonix v. Konami (Mass.)

Harmonix and Viacom jointly filed suit in the District of Massachusetts against Konami for patent infringement. The lawsuit alleges Konami’s “ROCK REVOLUTION” video game infringes U.S. Pat. No., 7,459,624 entitled “Game controller simulating a musical instrument.” The patent issued December 2, 2008 and consists of two independent claims, both of which are methods “for providing [a] realistic interaction by a player with a music-based video game using a game controller simulating a guitar.” The claims appear to relate to music-based video games that simulate a hammer-on or pull-off technique of playing a musical instrument. Specifically, claims 1 recites:

1. A method for providing realistic interaction by a player with a music-based video game using a game controller simulating a guitar and having a strum bar and a plurality of fret buttons, the method comprising: a) displaying to a player first target musical data associated with a musical composition; b) receiving first music performance input from the player comprising activation of a first one of a plurality of fret buttons and a strum bar; c) displaying to a player second target musical data associated with the musical composition, the second target musical data visually indicating to a player that the musical event represented by the second target musical data is amenable to a hammer-on technique; [and] d) receiving second music performance input from the player consisting essentially of activation of a second one of a plurality of fret buttons.

Claim 15, the other independent claim, is similar to claim 1, however, differs in regards to elements (c) and (d), which recite:

c) displaying to a player second target musical data associated with the musical composition, the second target musical data visually indicating to a player that the musical event represented by the second target musical data is amenable to a pull-off technique; [and] d) receiving second music performance input from the player consisting essentially of deactivation of one of a plurality of fret buttons.

The lawsuit is Harmonix Music Systems, Inc. et al. v. Konami Digital Entertainment Co., Ltd et. al., Case No. 1:09-cv-10206-RWZ, U.S. District Court of Massachusetts. We will continue to monitor the lawsuit.

Sep

Case: Aristocrat v. IGT (Fed. Cir. 2008)

Aristocrat v. IGT
United States Court of Appeals for the Federal Circuit
Decided Sep. 22, 2008

At this stage, this case is more about an esoteric legal issue, rather than any substantive issue of infringement regarding slot machine games or video games, so I will keep it brief. Suffice it to say, the District Court (N.D. Cal.) held that Arisocrat’s patent was invalid because Aristocrat did not properly revive the patent after it accidentally went abandoned during prosecution at the USPTO. Specifically, Aristocrat, pursuant to USPTO rules, requested revival because the abandonment was unintentional. U.S. Laws, however, require that the delay be unavoidable. On appeal, the Federal Circuit held that “improper revival” is not a defense to patent infrginement, and that the District Court erred by holding the patent invalid on such grounds. So it’s back to the District Court for these two to now get into some substantive issues regarding patent infringements.

Read the Federal Circuit opinion here.

Feb

Case: Romantics v. Activision (E.D.Mich) – Publicity

The re-performance of a song for use in a video game pursuant to a non-exclusive synchronization license does not, without more, violate the original artists’ right of publicity, even if the artists are referenced, the U.S. District Court for the Eastern District of Michigan held Jan. 22 (Romantics v. Activision Publishing Inc., E.D. Mich., No. 07-14969, 1/22/08).Activision recorded a new version of the song for use within Guitar Hero. When players encountered the song, it came with the subtitle “as made famous by the Romantics.” The Romantics said that this was a violated their right of publicity, was unfair competition under the Lanham Act, and constituted unfair competition. The court disagreed.Read more here.

May

Case Update: Lucent v. Microsoft (MS fires back!)

We previously reported that Lucent sued Microsoft, alleging that the Xbox 360 infringes one of Lucent’s patents. Earlier this week Microsoft filed a counterclaim, accusing Lucent of infringing various Microsoft patents, as well as challenging the validity of the Lucent patent at issue. We will keep you posted as this case progresses.

Read more here.

May

Case: Ebay v. Mercexchange (2006) – Patents

Ebay Inc. v. Mercexchange LLC
United States Supreme Court
May 15, 2006

(Not exactly a video game case, but worth noting nonetheless, as it will apply to video game lawsuits.)

Today the United States Supreme Court reversed the Federal Circuit decision in Ebay Inc. v. Mercexchange LLC, holding that injunctive relief is to be granted in patent cases using the same traditional test as in any other case, i.e., by weighing the following four factors: (1) irreparable injury suffered by the plaintiff; (2) remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

The Court reversed the Federal Circuit’s previous “general rule” that permanent injunctions will issue once infringement and validity have been adjudged, indicating that “the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.”

Interesting dicta indicates that the Court takes no position as to whether an injunction should issue in this case or any other case, and that there are circumstances where a patent owner who is not practicing his/her patent (patent troll?) may still be entitled to an injunction.

Read the full opinion.

Feb

Case Update: AVG v. Atari et al.

“Major U.S. game publisher and developer Atari has released the paperwork surrounding its latest financials, and embedded within the document is significant news on the firm’s $300,000 settlement of the American Video Graphics video game patent lawsuit, a suit which all parties have now apparently settled.

“The American Video Graphics suit was originally filed against game software publishers Electronic Arts, Take-Two, Ubisoft, Activision, THQ, Vivendi Universal Games, Sega, Square Enix, Tecmo, Lucasarts, and Namco in August 2004, and alleged infringement of US Patent No. 4,734,690: method and apparatus for spherical panning.

“The patent in question was originally filed in 1987 by William G. Waller of company Tektronix, Inc., and covers the situation when “a graphics display terminal performs a pan operation with respect to a view motion center to effectuate spherical panning, thereby providing perspective and non-perspective views”, in addition to a zoom feature. Taken in the context of video games, this would seem to mean that any 3D game engine that uses camera movement or zooming of any kind relative to a specific object would be liable, a description that encompasses the vast majority of current video games. …”

Read article: Gamasutra – Atari, Other Parties Settle Major Game Patent Suit

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