Bot M8 LLC Asserts Sony’s PlayStation 4 “Uncharted” Game Infringes Its Patent, but Court Finds Bot M8’s Patent Invalid
Bot M8 LLC v. Sony Corporation of America et al
United States District Court for the Northern District of California
Filed August 12, 2019
Sony Corporation of America (“Sony”) has been awarded summary judgment against Bot M8 LLC, which had sued Sony in 2019. Bot M8’s lawsuit alleged that Sony’s PlayStation 4 “Uncharted 4” and “Uncharted: the Lost Legacy” games infringed U.S. Patent No. 7,338,363 (“the ’363 Patent”) because they provided an unlockable weapon system allegedly comprising “specification values.” The Court found that Claim 1 of the ’363 Patent was directed to unpatentable subject matter.
In Alice Corp. v. CLS Bank Int’l et al., the Supreme Court created a two-part framework for subject matter eligibility. First, courts must determine whether a patent’s claims are directed to an abstract idea. Second, if a patent’s claims are directed to an abstract idea, courts are to determine whether a claim may be patentable despite being directed to an abstract idea.
With regard to the first inquiry, the Court characterized Claim 1 of the ’363 Patent as directed to an abstract idea. The Court particularly criticized the lack of detail in the claims of the ’363 Patent:
“At the most specific, claim 1 of the ’363 patent doesn’t actually teach how to increase or decrease the difficulty of a slot machine, or any gaming machine for that matter, based on prior results to keep players engaged. It only instructs a game operator to present new jackpot opportunities if the two slots players win enough and to take away jackpot opportunities if the two lose enough. Well, how?”
With regard to the second inquiry, the Court cited Mayo Collaborative Servs. v. Prometheus Labs, Inc., which provides that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” The Court held that, although the ’363 Patent gives special names to generic computer parts (such as a “transmitting device” that transmits data and a “specification value determining device” that determines a specification value), the parts are still generic computer parts that perform conventional computing tasks.
In view of its decisions in both prongs of the Alice/Mayo two-part framework, the Court found that Claim 1 of the ’363 Patent was invalid under 35 U.S.C. § 101.