District of New Jersey – Patent Arcade

Jul

2019

Thorner v. Sony: The Conclusion

Thorner et al v. Sony Computer Entertainment America LLC et al
The U.S. District court, District of New Jersey
Case No. 3-09-cv-01894, Filed April 21, 2009
Case Dismissed: August 6, 2013

According to the complaint filed on April 21, 2009, Craig Thorner claimed he was tricked into signing away his patent rights for a fraction of their worth. Thorner held several patents that were directed to haptic feedback technology (which concerns the vibration functions on gaming controllers), similar to those asserted by Immersion against Sony in Immersion v. Sony. His patents were part of Sony’s after-trial attempt to invalidate Immersion’s patents. The complaint alleges that after the verdict in Immersion v. Sony, Thorner was contacted by another company, Performance Designed Products LLC., that had also been targeted by Immersion. Thorner claims he ended up negotiating with PDP to license his patents to them. In that process he sought help from the same attorneys that represented Sony. Those attorneys encouraged him to accept terms that were less favorable to Thorner (including a provision that could grant a patent license to Sony, and another one accepting royalty payments that were less than he originally sought). Thorner alleges Sony and PDP were working together. He sued them for legal malpractice, and sued Sony for infringement of his patents. Thorner previously developed patents for Immersion and received payments from Sony for his work on vibrating touch technology. Specifically at issue was Thorner’s U.S. Patent No. 6,422,941 (the ‘941 patent) titled “Universal Tactile Feedback System for Computer Video Games and Simulations.

In November 2010, after conducting Markman hearings, Judge Brown of the New Jersey District Court dismissed all of Thorner’s patent claims against Sony. Judge Brown noted he was dismissing the claims in light of Thorner’s objection to the district court’s construction of “attached to said pad.” According to Judge Brown, “attached to said pad” was construed to mean “affixed to the exterior surface of the flexible pad,” and as a result Sony did not infringe the ‘941 patent. He determined Sony did not infringe the patent because “the patent claim limitation is not met with respect to their products.” The parties agreed to a stipulation of dismissal without prejudice. Sony acknowledged dismissal of the claims would not prejudice Thorner’s ability to assert the claims in the future. The court noted that if the Federal Circuit reverses or changes its construction of “attached to said pad,” the parties may reassert all claims and issues on remand.

In February 2012, the U.S. Court of Appeals for the Federal Circuit vacated the district court’s decision. The Federal Circuit reviewed the district court’s interpretation of the terms “attached” and “flexible,” noting the general rule is that claims must be given their ordinary and customary meaning unless the patentee acts as his own lexicographer or the patentee disavows the full scope of the claim. Since the term “attached” met neither of these exceptions, the Federal Circuit determined it should be given its ordinary and customary meaning that includes both internal and external attachment. The Federal Circuit disagreed with the district court’s interpretation of the term flexible (“capable of being noticeably flexed with ease”). Thorner argued the term should be given its ordinary and customary meaning that only requires the pad to be “capable of being flexed.” The Federal Circuit accepted Thorner’s interpretation and remanded the case.

In May 2013, U.S. District Judge Mary Cooper ruled that Thorner was to abide by a $300,000 settlement he had reached with Sony. She ruled the deal must stand due to the fact that Thorner would still be able to enforce patents rights in the future because the settlement gave Sony only a nonexclusive license. Thorner previously requested a settlement stay in March which was was denied due to the agreement being an enforceable contract. On August 6, 2013, the district court dismissed the case with prejudice after the parties settled.

This case, as well as Immersion v. Sony, has important implications. There has been a fair amount of court activity regarding monetizing IP rights, and patent reforms continue to loom in the background. This could lead to a more difficult environment for monetizing IP rights. Defenders have become more likely to win in recent years than they used to be. While Immersion has had a successful history in terms of IP cases in the court room, there is the possibility of increased volatility the future, on top of additional scrutiny from investors following cases such as these.

Additional Research By: Rachel Johns

Oct

2018

Tetris Holding, LLC v. Xio Interactive, Inc.

Tetris Holding, LLC v. Xio Interactive, Inc.
863 F.Supp.2d 394
United States District Court for the District of New Jersey
May 30, 2012

We were recently talking among ourselves about copyright protection for expressive choices in implementing functional rules of a game, and Tetris v. Xio immediately came to mind. Much to our own surprise we hadn’t written it up yet. So today we write about the Tetris Holding v. Xio Interactive case that captured the industry’s attention in 2012 by providing expansive protection for Tetris – a holding that some have found controversial.

The Copyright Act protects the expression of an idea, not the idea itself or its functionality. In the United States, patent law governs functionality, whereas copyright protects original creative expression. This underlying principal allows for clones of a popular video game to exist, so long as the clone only uses the ideas or functional features. Functional aspects of a game could be the rules or user interface. There are certain games where the rules are so intrinsically tied to the expression of the game that it becomes difficult to separate, which was the exact scenario that the court faced in Tetris Holding, LLC v. Xio Interactive, Inc.

Tetris is one of the most popular video games of all time, and as a result, there are many clones of Tetris available. Tetris Holding, LLC, the company that owns the Tetris rights, has a history of issuing takedown notices to copy-cat games. One such company to receive a takedown notice was Xio Interactive. Desiree Golden formed Xio Interactive with the intent to design a game for the iPhone. Ms. Golden admitted she intended to create a game which replicates Tetris’s gameplay but claimed to have only copied non-protected functionality. Tetris Holding disagreed with Xio’s assertion and instigated litigation in December 2009.

Xio argued it only copied the rules and game mechanics of Tetris, which would be functional features and therefore could not be protected by copyright. The district court, however, held that expressive elements incorporated into the functional features could be protected. According to the court, just because game mechanics and rules are not entitled to protection, “does not mean . . . that any and all expression related to a game rule or game function is unprotectable.” 863 F.Supp.2d at 404-405. Even though the game mechanics and expression might appear closely tied, the court felt the defendant had other options to express the same mechanics, therefore the merger doctrine did not apply. The merger doctrine states if there is a single or limited number of ways to express an idea, then no copyright protection will be given to any of those ways. Because the court found there was protectable expression that did not merge with the idea, it ruled in Tetris Holding’s favor due to the fact that both games were identical.

Tetris Holding also sued Xio under a theory of trade dress infringement. On the trade dress claim, the district court again ruled in Tetris Holding’s favor, finding there was a likelihood of confusion due to the similarities of the two games.

This case has been controversial because many commenters believe the decision expands the scope of copyright protection to protect functional aspects of a game. For many people, a video game’s mechanics and rules are purely functional, so those elements should not be protected by copyright. Video games walk a tight line between functionality and expression due to the interactive nature of the medium, so it is not always clear where one begins and the other ends. The distinction between functionality and expression in video games is thus an ongoing issue of debate.

For example, PUBG Corp., the developer of Playerunknown’s Battlegrounds, is currently suing several copycat games in a case that seems somewhat similar to Tetris Holding v. Xio Interactive. For more in-depth coverage, click here. Many of the elements PUBG Corp. claims the copycats infringe might be of a functional nature, or ideas not subject to copyright protection, when considered in isolation, but PUBG argues that in combination they are deserving of copyright protection. It will be interesting to see if the court in the PUBG Corp. cases follows a similar analysis as Tetris Holding v. Xio Interactive.

This is an issue we’re keeping an eye on. Stay tuned…

Dec

2015

1982 Case: Midway Mfg. Co. v. Bandai-America, Inc.

Midway Mfg. Co. v. Bandai-America, Inc.

United States District Court for the District of New Jersey

Civil Action No. 81-3911

Decided July 22, 1982

We are currently updating our site with some posts about older high-profile video game lawsuits. You may have noticed several posts for video game lawsuits from the 1980s.

Plaintiffs Midway Manufacturing and Coleco Industries filed suit for copyright and trademark infringement against defendant Bandai-America. Plaintiffs are the owners of the famous arcade video games Galaxian and Pac-Man. Defendant Bandai-America is a Japanese distributor of handheld video games. Defendant has two handheld video games named Packri Monster and Galaxian.

Plaintiffs asserted a likelihood of confusion between its Galaxian mark and defendant’s identical mark. The court found Plaintiffs were entitled to summary judgment on the trademark issue for the Galaxian mark on the grounds that the mark is distinctive and not descriptive of the product.

The Pac-Man game is an electronic maze-chase arcade game. Players use a joystick to navigate the maze whereby the central character, the “gobbler” maze-chaser, consumes pink dots. The game ends when a monster catches the gobbler. Similar to the Pac-Man game, defendant’s Packri Monster is played using a joystick, whereby the player moves a character through the maze. The Packri Monster gives the illusion of the monster eating the dots in a manner resembling the monster in Pac-Man.

The court found there was a genuine issue of material fact as to whether defendant’s “Packri Monster” mark infringed the “Pac-Man” mark. Additionally, the court found that the plaintiff’s products were copyrightable. However, the court denied summary judgment for Midway for the Pac-Man game, holding that defendant’s game was not substantially similar to plaintiff’s trademark, and therefore there was not a likelihood of confusion.

Jun

2012

Case Update: Thorner v. Sony

Thorner et al v. Sony Computer Entertainment America LLC et al
U.S. Court of Appeals for the Federal Circuit (On appeal from the U.S. District court, District of New Jersey)
Case No. 2011-1114 (originally 09-01894), Filed December 13, 2010 (originally April 21, 2009)

Case Update 05/23/2012:
On February 2, 2012, the U.S. Court of Appeals for the Federal Circuit vacated the New Jersey District Court’s decision previously reported below. The Federal Circuit reviewed the district court’s interpretation of the terms “attached” and “flexible,” noting that the general rule is that claims must be given their ordinary and customary meaning unless the patentee acts as his own lexicographer or the patentee disavows the full scope of the claim. Since the term “attached” met neither of these exceptions, the Federal Circuit determined that it should be given its ordinary and customary meaning that includes both internal and external attachment. The Federal Circuit also disagreed with the district court’s interpretation of the term flexible (“capable of being noticeably flexed with ease”). Thorner argued that this term should be given its ordinary and customary meaning that only requires the pad to be “capable of being flexed.” The Federal Circuit accepted Thorner’s interpretation and has remanded the case for further proceedings.

Case Update:
We previously reported (see original post below) about a spinoff from the Sony v. Immersion case dealing with haptic feedback technology. Craig Thorner had previously developed patents for Immersion and had also received payments from Sony for his work on vibrating touch technology. As we reported, Thorner sued Sony claiming that Sony’s lawyers induced him to accept less than favorable terms for his license. He sued Sony for monetary compensation for infringement on his vibrating touch feedback patent.

Specifically at issue was Thorner’s U.S. Patent # 6,422,941 (the ‘941 patent) titled “Universal Tactile Feedback System for Computer Video Games and Simulations.” According to Judge Brown, “attached to said pad” is construed to mean “affixed to the exterior surface of the flexible pad,” and as a result Sony does not infringe the ‘941 patent. He wrote that under the court’s construction of the phrase “attached to said pad” Sony did not infringe because “the patent claim limitation is not met with respect to their products.”

On November 4, 2010, the charges against Sony were dismissed in district court. The court’s judgment as to whether Sony’s technology infringed Thorner’s patent was determined by its construction of the phrase “attached to said pad.” After conducting Markman hearings over the disputed claim phrase, Chief Judge Garrett Brown of the New Jersey District Court dismissed all of Thorner’s patent claims against Sony without prejudice. The judge noted that he was dismissing the claims without prejudice in light of Thorner’s specific objection to the district court’s construction of “attached to said pad.” The parties also agreed to a stipulation of dismissal without prejudice, and Sony acknowledged that dismissal of the claims would not prejudice Thorner’s ability to assert those claims in the future, in this same case. The court noted that if the Federal Circuit reverses its construction of “attached to said pad” or applies a different construction, the parties may reassert all claims and issues on remand.

Original Post:
The dust has long settled on the Sony/Immersion haptic feedback suit, right?

Not quite. According to a complaint filed in Thorner v. Sony Computer Entertainment America, Inc., Case No. 09-01894 (NJ filed April 21, 2009), and amended recently, a witness from that case claims he was tricked into cooperating and signing away his own patent rights for a fraction of their worth.

According to the complaint, Craig Thorner was an engineer who held several patents that were also directed to haptic feedback technology, similar to those asserted by Immersion against Sony, and his patents were part of Sony’s after-trial attempt to invalidate Immersion’s patents.

The complaint alleges that days after the verdict against Sony, Thorner was contacted by another company that had also been targeted by Immersion. This other company, Performance Designed Products LLC (PDP), was a game distribution company, and (according to the complaint) needed Thorner’s help.

Thorner claims that in working with PDP, he ended up negotiating with them to license his own patents to them, and that in that negotiation process he sought help from the same attorneys that represented Sony. According to the complaint, those attorneys helped him with the license, and they encouraged him to accept terms that were less than favorable to Thorner (including a provision that could grant a patent license to Sony, and another one accepting royalty payments that were much less than he had originally sought).

Thorner now alleges that all that time, those attorneys were actually helping Sony get a better deal out of him, and that Sony and PDP were actually working together to get that deal. He has sued them for legal malpractice, and has sued Sony for infringement of his patents.

This case is just beginning, so we will have to wait to see the other side of the story, and to see how it all turns out. Stay tuned ….

Thorner v. Sony: The Conclusion

Tetris Holding, LLC v. Xio Interactive, Inc.

1982 Case: Midway Mfg. Co. v. Bandai-America, Inc.

Case Update: Thorner v. Sony

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