|Figs. 1 and 3|
patent cases since the Supreme Court’s Alice
decision in 2014. Many patents have been invalidated by courts as directed
to abstract ideas without significantly more.
California has refused to invalidate a multiplayer video game patent (US Pat. 8,951,124) directed
to downloading separate game software to a controller that complements the main
game software. Audience Entertainment had argued that the claims were directed to “nothing more than the abstract idea of allowing multiple people to play a game together on a shared display using generic computer and communications hardware.” Timeplay responded that their patent “only exists in the field of multi-player video gaming” and that the claims “have core distinguishing features that a family playing Pictionary would never dream were necessary on game night.” (Opinion at 7-8).
Back in December we covered the Federal Circuit’s opinion in Tomita v. Nintendo, where the Court found that the claim term “offset presetting means” clearly invoked the means-plus-function principles of 35 USC 112 6th par. Tomita sued Nintendo in 2011 over U.S. Pat. No. 7,417,664, “Stereoscopic Image Picking Up and Display System Based Upon Optical Axes Cross-Point Information.” Tomita alleged that Nintendo’s 3DS game system infringed the ‘664 patent with its stereoscopic 3D display system which provided glasses-free 3D images.
The Federal Circuit held that the trial court improperly adopted the claim construction proposed by Tomita’s expert which failed to reference the corresponding structure defined in the specification. The Court remanded the case with instructions that the lower court should properly construe the claim term as limited to the corresponding structures defined in the specification and equivalents thereof, based on the clear invocation of 35 USC 112 6th par.
Per IP Law 360, the parties recently argued their positions on proper construction of the claim terms and the issue of infringement on remand to the trial court. Tomita argued that Nintendo’s 3DS products include the same structures disclosed in the ‘664 patent and that Nintendo’s construction unnecessarily complicated the nature of the structures described therein. Nintendo argued that Tomita’s patent disclosed primitive presetting means and that the 3DS products used very different components.
Tomita originally received a jury verdict in its favor February 21, 2014 awarding them over $30 million in damages. If the trial court finds that Nintendo still infringes the properly construed claims on remand, it is likely that the jury’s damages will remain intact.
Prior to the Federal Circuit’s order, Tomita filed an additional lawsuit against Nintendo on December 3, 2014 based on the newly launched 3DS XL. (SDNY Case No. 1:14-cv-9560). The earlier case against the regular 3DS remains pending after the remand. (SDNY Case No. 1:11-CV-04256).
We will continue to monitor this case and report when the trial court issues its opinion.
Back in January we reported a new patent case filed by White Knuckle IP against Electronic Arts over updating sports video games based on real-life events during a season. The asserted patent was U.S. Pat. No. 8,529,350. That case was actually terminated and refiled as Utah District case no. 1-15-cv-00036 in February.
From our earlier report, the patent discusses how prior art games were fixed as of the day they were released. A real-life player’s outstanding performance or a major trade taking place during the season would not be reflected until the next version of the game was released. The system described in the ‘350 patent purports to solve this problem by downloading updates to game attributes that are based on real-life changes in players, teams, and venues.
EA filed an inter partes review (IPR) request yesterday with the USPTO to invalidate the patent (IPR2015-01595). EA argues that the ‘350 patent should be limited to updates applied to stadium or field parameters based on arguments made by the patentee during prosecution. Moreover, EA argues that their own earlier games teach all the features claimed in the ‘350 patent. EA points to the 2001 iteration of their popular FIFA soccer games and the 2000 version of their Madden football games as teaching the updating features claimed in the ‘350 patent. Of note is that one of the references cited by EA is a Madden 2000 Updates Website which included a “Playoff Week 1 Update” file.
At this time, the IPR has only been filed with the USPTO. The Patent Trials and Appeals Board (PTAB) will consider whether to institute the IPR based on EA’s arguments. If the PTAB institutes the IPR, EA and White Knuckle will fight it out at the USPTO rather than (or in addition to) the federal courthouse in Utah.
The full IPR petition can be found at https://ptabtrials.uspto.gov/.
We will continue to watch this case for interesting developments.
|US Pat. No. 8,529,350, Fig. 1|
|The ivy at Wrigley Field. Image courtesy Wikipedia.*|
The Federal Circuit affirmed a finding by the USPTO during an inter partes re-examination that Gamecaster’s patent on a physical control device for a virtual camera was invalid.
Gamecaster filed U.S. Pat. No. 7,403,220 in July 2005. The ‘220 patent is generally directed to a video camera device that allows a camera operator to control a virtual camera in a virtual environment.
|Gamecaster’s GCS3 virtual cinematography system
Gamecaster sued Dreamworks in April 2009 for infringement of the ‘220 patent. See Gamecaster, Inc. v. Dreamworks Animation SKG, Inc., Case No. 2-09-cv-02723 (CACD 2009). Dreamworks filed a request for re-examination in August of 2009, which was instituted by the USPTO. The Examiner agreed with Dreamworks that the claims were anticipated by each of 7 different references, as well as obvious over two references – Paley, “Interaction in 3d Graphics: Designing Special Purpose Input Devices” and Vincent, US Pat. No. 7,050,102.
Gamecaster appealed the obviousness rejection to the PTAB, and the PTAB affirmed the examiner’s findings of invalidity (the PTAB did not address the anticipation rejections as it found the obviousness rejection adequate). On appeal, the Federal Circuit affirmed the PTAB’s decision without further comment.
The device described in the Paley reference, at first glance, appears strikingly similar to that disclosed in the ‘220 patent.
It’s a simple concept: take a standard fluid-head tripod and instrument it, then mount a flat-panel display on the tripod where the camera would normally go. Now feed the tilt and pan angles into the animation program, while simultaneously displaying a real-time preview of the animation. Voila! You’ve brought camera control back out into the real world….
Second, we’re using the past again. Not only as inspiration this time, but directly. What we get is a device that’s completely intuitive to use, and one that taps into years of experience that a cinematographer may have acquired on the somatic level. We’re using the interaction of cinematographer’s eye and visual sense (where the artist is), muscle-memory of the arm and hand (where the training is) and the grip and fluid-damped head of the tripod.
The Vincent reference was relied on to teach the use of gyroscopes and accelerometers in cameras.
One interesting issue in this case was that Paley described a video camera control for use in virtual worlds, while Vincent described a traditional video camera for use in the real world. Gamecaster argued on appeal to the PTAB and in its appeal to the Federal Circuit that the two references were directed to wholly different applications (physical world versus virtual worlds). However, the examiner found that the use of Vincent’s gyroscopes and accelerometers was nothing more than combining familiar elements according to known methods to yield predictable results, and the board affirmed this finding. See Appeal No. 2013-000375 at 8 (PTAB 2013). A significant portion of Gamecaster’s arguments at the Federal Circuit centered on whether the references could be combined based on this, but the Federal Circuit was not convinced and affirmed the PTAB without any comments in its opinion.
This case provides an interesting example of the crossover between real world and virtual world concepts. Vincent illustrated that it was known at the time of invention to use accelerometers in optical video cameras to control the movement of the camera. As found by the courts and the USPTO in this case, it would have been obvious to one of ordinary skill in the art to adapt these features for use in controlling a virtual camera. This opinion illustrates that, in some cases, it may be obvious to adapt real world techniques for use in virtual environments and that real-world techniques may serve as prior art against virtual techniques.
|US Pat. No. 7,417,664, Figure 1|
Catching up on some reading from last week, Ars Technica (via Video Gamer Law) reports on a new lawsuit filed by the rights holder to Patton’s name and likeness against Maximum Family Games for their game “History(R) Legends of War: Patton.” The complaint alleges that the use of General Patton’s name, likeness, image, and persona without CMG Worldwide’s (the rights holder) consent constitutes false endorsement and unfair competition under federal law, and a violation of the California right of publicity and unfair competition under California law.
|Image taken from CMG’s First Amended Complaint filed December 12, 2014|
CMG sets forth several aspects of the game that it believes impose on its rights. Generally, CMG alleges, the game features General Patton’s famous image, likeness, and persona, in the context for which he is most famous – namely, as a a military general from World War II. In one interesting part, the complaint notes that players earn “prestige” and “skill” points as the game progresses, and that this reinforces that Patton’s own prestige and skill are a chief selling point of the game.
|Image from “How to Play Guitar Apprentice!”, https://www.youtube.com/watch?v=8vgfOtIeAeQ|
The claims of the ‘736 patent do not appear to be limited to video games. Instead, the independent claims recite entirely non-interactive features of displaying and “cueing.” Some dependent claims (e.g., “displaying a score of the player” in claim 3) recite more familiar features of interactive games.
Ubisoft and Guitar Apprentice are currently engaged in litigation over one of Guitar Apprentice’s patents, U.S. Pat. No. 8,586,849, which is generally directed to a system for progressive instruction in playing a guitar. See case no. 2-13-cv-02903 (W.D. Tenn., filed November 19, 2013). Ubisoft recently filed a petition for Inter Partes Review with the USPTO regarding the ‘849 patent. See IPR 2015-00298, filed November 25, 2014.
We will continue to watch this case for any interesting developments.
10. A lottery type game comprising:a gaming piece, said gaming piece including a code which includes data indicating whether a player wins or loses the lottery game and an amusement game, said data being unrecognizable to the player, such that the player does not know whether the player will win or lose the games prior to play of the amusement game;a processor for receiving said code input by the player prior to amusement game play;said processor generating the amusement game on a display for play by the player,said processor determining whether the player will win or lose the amusement game based upon said code; anda display for providing an indication to the player of the amusement game win or loss based upon said code.
|The sweepstakes revealers of Burns et al.’s system, according to the complaint.|
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; andapplying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
Initially, the court noted that these claims do not appear to be directed to an abstract idea on their face. Op. at 13. Further, the court noted that the claims do not cover the prior art methods of computer-assisted, but non-automated, lip synchronization. Id. Additionally, the court cited defendant’s non-infringement positions as evidence that the claims did not preempt all manners of automating lip synched animation. See Op. at 14. The court observed that, in section 101 motions, the parties positions are flipped: the patentee must argue that noninfringing alternatives exist and the defendant must argue that there are no noninfringing alternatives. Id.
In one of the clearer statements to date on 101 analysis, the court proceeded to argue that the claims must be evaluated in the context of the prior art:
18. A non-transitory computer-readable medium storing
instructions for directing a processor of a mobile device to perform a method,
the method comprising:
facilitating play of a game on the mobile device by
recognizing inputs provided by a user via an input mechanism of the mobile
device, at least one of the inputs causing progress in the game;
receiving a signal comprising an unlock code;
determining a locked outcome of the game;
unlocking the locked outcome of the game using the unlock
code, thereby determining an unlocked outcome;
determining an intra-game benefit associated with the
unlocked outcome; and
providing the intra-game benefit to the user by
incorporating the intra-game benefit into the game.
1. A system for managing a game of Bingo which comprises:
(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory of the computer; and
(c) a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;
(iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo.
The district court judge granted summary judgment of invalidity as to each claim of the ‘646 patent and the ‘045 patent. The judge reasoned that “each method claim encompasses the abstract idea of managing/playing the game of Bingo” and that the user of a computer “adds nothing more than the ability to manage… Bingo more efficiently.” Op. at 2-3 (citing district court opinion Planet Bingo, LLC v. VKGS LLC, 961 F. Supp. 2d 840 (W.D. Mich. 2013). Further, the judge found that the system claims employ a computer “only for its most basic functions” including “storing numbers, assigning identifiers, allowing for basic inputs and outputs, printing a receipt, displaying of numbers, and/or matching… for verification. Op. at 3 (citing district court opinion).
Judge Hughes of the Federal Circuit agreed with the district court that there is no meaningful distinction between the method and system claims in the patents. Both sets of claims recite the same basic processes. Op. at 4. After observing that the claims of the patents recited selecting, storing, and retrieving sets of numbers, assigning identifiers, and comparing bingo numbers, the Court noted that “like the claims at issue in Benson, not only can these steps be ‘carried out in existing computers long in use’, but they also can be ‘done mentally’.” Op. at 4.
Planet Bingo argued that, in practice, their systems involved “literally thousands, if not millions of preselected Bingo numbers” and that it would be impossible for the system to be carried out manually. However, the Court noted that the claims did not require “thousands” or “millions” of sets and instead only required two sets of numbers. The Court declined to decide “whether a claimed invention requiring many transactions might tip the scales of patent eligibility.” Op. at 5.
The Court found that the claims recited an abstract idea similar to that of Alice and Bilski. The claims recited methods and systems for managing a game of Bingo, and the Court held that the claims were directed to the abstract idea of “solving a tampering problem and also minimizing other security risks.” Op. at 5 (quoting Planet Bingo’s brief). The Court found this idea similar to that of “risk hedging during consumer transactions” (Bilski) and “mitigating settlement risk in financial transactions” (Alice).
The Court then turned to the computer components of the claims to determiner whether they “contain an ‘inventive concept sufficient to transform the claimed abstract idea in a patent-eligible application.'” Op. at 5 (quoting Alice, citation omitted). The Court examined the recited computer elements in the claims, dividing the generic computer components from the recited programmed functionality: