In the business of video games, intellectual property is critical to success, and Patents, Copyrights, and Trademarks are the bricks with which your IP portfolio is built. The Patent Arcade is the web’s primary resource for video game IP law, news, cases, and commentary.

Lawsuit Update: iLife Seeks Writ of Certiorari After Verdict Against Nintendo Tossed


iLife Tech., Inc. v. Nintendo Am., Inc.
Supreme Court of the United States
Case No. 20-1760
Filed: June 14, 2021


In August of 2017, a Northern District of Texas jury awarded iLife Technologies, Inc. (“iLife”) $10.1 million from Nintendo of America, Inc. (“Nintendo”) for patent infringement. The alleged patent infringement stemmed from Nintendo’s movement detection in some games on the Wii and WiiU. The victory was short lived, however, when Nintendo moved for judgement as a matter of law (JMOL) on the premise that iLife’s patent covered subject matter was patent-ineligible subject matter. The district court agreed with Nintendo and tossed iLife’s verdict and a Federal Circuit Court affirmed on appeal.


Patent-ineligible content has been addressed most recently by Alice Corp. Pty. Ltd. v. CLS Bank Intern., which confirms that abstract ideas, laws of nature, and natural phenomena are patent-ineligible. In Alice, the Court developed a two-step test to determine patent ineligibility under the abstract idea exception. The first step is to determine if the character of the claims in the patent are patent-ineligible under Alice, and if they are, the second step is to consider the elements of the claim to see if they transform the nature of the claim into something beyond an abstract idea and is instead something patent-eligible.


In the instance case, the Federal Circuit determined that iLife’s patent subject matter was an abstract idea, and then on step two found that it had no inventive concept to make it patent-eligible. The Federal Circuit therefore affirmed the district count’s JMOL decision.


One June 14, 2021, iLife petitioned for a writ of certiorari, i.e., they appealed to the United States Supreme Court. The questions presented by iLife’s petition are:


“1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?



  1. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?”


In the petition, iLife argued that the questions raised by its petition were the same as those in the case Am. Axle & Mfg. Inc. v. Neapco Holdings LLC, and that iLife’s petition should be held pending the outcome of the other case or alternatively granted.


The petition is pending and it is up to the Supreme Court if they will choose to take the case. Check back here for future updates.


U.S. Patent No. 10,799,802: Game System


Issued October 13, 2020 to Lego AS
Filed: April 7, 2016 (Claiming priority to April 8, 2015)


Overview:


U.S. Patent No. 10,799,802 (the ‘802 patent) relates to a game system that allows a user to engage in digital gameplay via physical manipulation of a physical toy. The ‘802 patent details a game system with a detection device for detecting a physical toy. The physical toy is made out of one or more construction pieces and two or more identification elements and the construction elements of the toy can be interchangeably connected. The toy can be detected by the detection device when it is a coherent structure and when two or more identification elements are positioned within the detection area. The user can then selectively position the toy with a user-selected subset of the two or more identification elements and, in response to the detected identification elements, the gaming system controls digital gameplay.


LEGO has already expanded into the digital gaming environment with a good deal of success, with beloved games like LEGO Star Wars. The ‘802 could combine digital games and physical toys for interesting control schemes and cross over between toys and video games.  


 


Abstract:


A game system, comprising: a data processing system configured to execute program instructions allowing a user to engage in digital game play; a physical toy; and a detection device configured to detect a presence of the toy within a detection area of the detection device; wherein the toy comprises two or more identification elements each detectable by the detection device when the identification element is positioned within the detection area, wherein the toy is configured to allow a user to selectively position the toy with a user-selected subset of one or more of said identification elements within the detection area; and wherein the data processing system is configured to control said digital game play responsive to the detected subset of identification elements.


 


Illustrative Claim:



  1. A game system, comprising: a data processing system configured to execute program instructions allowing a user to engage in digital game play; a physical toy; and a detection device configured to detect a presence of the toy within a detection area of the detection device; wherein the physical toy comprises one or more construction elements and two or more identification elements, said one or more construction elements being interchangeably connectable to said two or more identification elements; wherein the two or more identification elements are each detectable by the detection device when each of said two or more identification elements is positioned within the detection area; wherein the physical toy is a coherent structure wherein at least one of the two or more identification elements are physically interconnected with the one or more construction elements; wherein the physical toy is configured to allow a user to selectively position the physical toy with only a user-selected subset of the two or more identification elements within the detection area; and wherein the data processing system is configured to control said digital game play responsive to the detected subset of identification elements.


Epic Game’s Loot Llama Refused Trademark


In re Epic Games, Inc.



Image of Mark in App. No. 88/233,723

On May 26, 2021, the Trademark Trial and Appeal Board (“TTAB”) affirmed the refusal to register Epic Games, Inc’s (“Epic”) design trademark application for its Loot Llama design (the “Llama Mark”).


Epic applied to register the Llama Mark in December of 2018. As shown above, the Llama Mark consists of “a fanciful cartoonish image of a llama with the design of a treasure chest on the side portion of its saddle.” The application covered International Class 9 for “video game software” (as amended – the original goods description included cell phone stands as well), and International Class 41 for “entertainment services, namely, providing online video games.” The Llama Mark image has been featured in Epic’s game, Fortnite, as a loot-giving llama since March 2018.


The application was initially rejected because, according to the USPTO examiner, (1) the Llama Mark merely identifies a character in Epic’s game; (2) Epic’s use of the Llama Mark is ornamental; (3) the specimen did not show use in commerce in class 41; and (4) the specimen did not show the same mark that was in the application.


After several subsequent office actions and responses, the application was appealed to the TTAB. The ornamental refusal was withdrawn and Epic amended its class 41 services from an in-use to an intent-to-use, meaning specimens for the class 41 application were no longer required. Because the class 41 entertainment services were amended to intent-to-use, the initial rejection was limited to class 9 alone, and the remaining issue for the TTAB was whether the Llama Mark (as shown in the specimens) functions as a trademark in class 9, or whether instead the Llama Mark merely identifies a game character.


Throughout prosecution of the Llama Mark, Epic disagreed that the Llama Mark was merely a character because the Loot Llama that is the basis of the Mark has no personality or movement. Epic cited numerous dictionary definitions of the term ‘character’ in an attempt to prove the Loot Llama is not a character. In its request for reconsideration, Epic argued that even if the Loot Llama is a character, it has acquired a secondary meaning to consumers that identifies the source of Epic’s games sufficiently to warrant trademark registration.


The USPTO examiner argued that Epic was not using the Llama Mark as a trademark, and said that if the Llama Mark fails to function as a source indicator, no amount of acquired secondary meaning is sufficient to grant trademark rights to Epic.


Epic appealed to the TTAB, where its additional evidence was not sufficient to persuade the Board that the Llama Mark as shown in its specimen functions as a trademark.


Epic’s below specimen, a screenshot of their V3.3 patch notes page with the Llama Mark several times across the top banner, was not persuasive to the TTAB because the use of the mark several times undermined the argument that a single Llama Mark would identify Epic as a source to consumers. Further, the juxtaposition on the banner to the word “Fortnite” indicated to the TTAB that the Llama was not what distinguished the game.



The TTAB also found the below screenshot from supporting testimony unpersuasive because it was not the applied for design; the saddle was different. The description of the mark Epic applied for stated that the “mark consists of a fanciful cartoonish image of a llama with the design of a treasure chest on the side portion of its saddle.” (emphasis added).



Finally, the TTAB found screenshots of the game loading screen featuring the Llama Mark unpersuasive because use of the mark inside the game would not indicate the source. Lastly, the lack of a use of “TM” showed no attempt on Epic’s part to claim trademark rights.


Based on all of the specimens and evidence Epic presented, the TTAB found that the Llama Mark did not function as a source indicator, as a trademark would. The TTAB agreed with the Examining Attorney and affirmed rejection of the Llama Mark in class 9.


Epic’s Llama Mark was not rejected in class 41 as discussed above. Epic may appeal or try its class 9 application again with new specimens, or as an intent-to-use application instead.



Subscribe

Enter your email address to be notified about new posts (average 1-2 emails/wk).


Lawsuit Updates

View All

Patent Spotlight

View All

Read the Book!

The Patent Arcade’s editors also have literally written the book on video game law. Get your copy today!

Latest News

Read More
GET THE APP ON IOS

Follow Us On
The Web’s Best IP Law Resources
Recognized By

DISCLAIMER

The information on this site is provided for informative and educational use only and should not be relied on as legal advice.  No attorney-client relationship exists by virtue of you reading our blog.  Always consult an attorney if you need specific legal guidance.