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Lonestar Inventions LP v. Nintendo of America Inc., case no. 6:07-cv-00261 in the U.S. District Court for the Eastern District of Texas.

This lawsuit between patent-holding company Lonestar Inventions LP and gaming conglomerate Nintendo Inc. will play out in mediation after a federal judge ordered the two companies to try their case before a mediator on Thursday, Dec, 13, 2007. Texas-based Lonestar first sued Nintendo in June, alleging that the company's popular Wii video game console infringed on a patent titled “High capacitance structure in a semiconductor device.”

Stay tuned...
Sorry I've been radio silent for a while. Life has been busy, you know how it goes...

In any event, it appears that Cory Ondrejka, employee No. 4 at San Francisco-based Linden Lab, which owns Second Life, quit Tuesday and will depart at the end of the year. Ondrejka spearheaded the company's decision to allow users to retain intellectual property rights to their creations. That's encouraged a thriving e-commerce market where users spend real dollars to buy virtual real estate, clothes, cars and other items. So it will be interesting to see where the company goes next.

Read more here.

C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., et al.

--- F.3d ---, 2007 WL 2990366, 84 U.S.P.Q.2d 1328 (8th Cir. 2007)


In a much watched case, on October 16, 2007, the United States Court of Appeals for the Eighth Circuit decided C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., et al., regarding whether it is ok for fantasy sports operators to use professional athletes’ names and historical statistics without a license from the players, the players association and/or the relevant league. In this case, the sport is baseball, but the ruling can be applied across the board to any fantasy sports league. In this case, the Eighth Circuit held that C.B.C. Distribution and Marketing, Inc. (“CBC”), a provider of online fantasy baseball products, could use the names of and statistics of Major League Baseball (“MLB”) players without a license from Major League Baseball Advanced Media, L.P. (“Advanced Media”), a MLB holding company to whom The Major League Baseball Players Association (“the Players Association”) had granted the exclusive right “to use baseball players’ names and performance information ‘for exploitation via all interactive media.’” Slip. Op. at 3. MLB and Advanced Media unsuccessfully argued that CBC’s use of player names and statistics was a violation of the players’ rights of publicity, copyright infringement, and breach of contract, among other theories. The court held that the fantasy sports operator's actions were protected under the First Amendment.

In 1995, the Players Association first granted CBC a license to use the names of MLB players and their corresponding statistics in fantasy baseball games. In 2002, the Players Association granted CBC a renewed license, which gave CBC the rights to use “the names, nicknames, likenesses, signatures, pictures, playing records, and/or biographical data of each player” in connection with CBC’s fantasy baseball products. Slip. Op. at 3. When this renewed license expired in 2005, however, the Players Association did not grant CBC another renewed license. Instead, the Players Association granted the exclusive right “to use baseball players’ names and performance information ‘for exploitation via all interactive media’” to Advanced Media (the MLB holding company mentioned above). Id. After Advanced Media received this exclusive license from the Players Association, it approached CBC and proposed a license under which CBC could promote fantasy baseball games on MLB.com, but could not continue offering its own fantasy baseball products. CBC subsequently brought this declaratory judgment lawsuit, seeking a court decree that it could continue to use the names of and statistics related to MLB players without a license from Advanced Media.

At issue in this case was whether MLB could exercise exclusive control over the fantasy baseball business by limiting others’ access to factual player information (i.e., names and statistics). In order to exercise this control, MLB, acting through the Players Association and Advanced Media, tried to establish that CBC’s use of the names of MLB players and their corresponding statistics violated rights of publicity, was copyright infringement, and was a breach of the previous licensing contract. At the trial court level, MLB argued that CBC was violating the baseball players’ individual rights of publicity, which are protected under state law (Missouri state law in this case, pursuant to federal jurisdictional rules). Although the trial court held that MLB failed to establish these state-law rights, the Eighth Circuit reversed this determination and found that state-law rights of publicity were implicated. However, the Eighth Circuit further held that First Amendment considerations (i.e., the “right to use information that is available to everyone”) trumped these state-law rights. Significantly, in deciding that these state-law rights “must give way” to First Amendment considerations, the Eighth Circuit characterized the baseball players’ names and their corresponding statistics as information that is “readily available in the public domain.” Slip. Op. at 7. Because MLB (or anyone else for that matter) cannot exercise exclusive control over information in the public domain, the Eighth Circuit affirmed the trial court’s judgment in favor of CBC, thus allowing CBC to continue using MLB players’ names and statistics without a license.

(Earlier in the case, MLB and Advanced Media also tried to argue that the use of player names and statistics was an infringement of one or more copyrights owned by MLB. MLB argued that it owned a copyright in the compilation of names and statistics. The court didn’t buy it and indicated that the names and statistics were public domain factual information.)

So for those of you running your own fantasy sports sites (or at least fantasy baseball sites), the decision in this case means that you can make use of the same information as CBC (i.e., player names and statistics) without obtaining a license from the relevant professional sports league. However, you should still consult a lawyer regarding your particular situation, because the ruling in this case involves some complicated interactions between state and federal law, and perhaps could have been decided differently by a different court with respect to the rights of publicity issues.
Word on the street is that MicroUnity and Sony Computer Entertainment America have settled their ongoing patent dispute regarding Sony's PlayStation products. The two companies have asked for a 30-day stay of all deadlines in the pending litigation in the Eastern District of Texas so they can put the finishing touches on their settlement agreement. MicroUnity first filed the lawsuit against Sony in November 2005, accusing the Japanese company of infringing 10 patents with its Sony Playstation 2, Playstation 3 and Playstation Portable game consoles. The patents cover various semiconductor integrated circuits and system processes that MicroUnity claimed were used to make the various Sony products.

Read more here.
More Second Life news: As reported in the New York Post, a half-dozen entrepreneurs are suing a Queens man, charging him with counterfeiting and selling versions of their products. Here's the catch: The products aren't real, and the alleged crimes took place in the virtual world of Second Life on the Web.

Read full story here.

We'll keep monitoring this case and let you know as we learn more.
As originally reported on Terra Nova, Linden Labs appears to have made a potentially significant change to the wording on its home page. The home page used to read:

Second Life is a 3D online digital world imagined, created and owned by its residents

But now it reads:

Second Life is a 3D online digital world imagined and created by its residents


The post on Terra Nova has an interesting string of comments. Check it out. It will be interesting to see if anything comes of this.
As reported on GamePolitics.com, Later today the ECA will announce its support for HR1201, known as the Fair Use Act of 2007. The proposed legislation will give consumers limited rights to circumvent technological control measures for private, noncommercial uses that would otherwise be protected under the DMCA. We will track this new legislation and keep everyone posted.

Ross

Well it's not strictly video game IP law, but it certainly applies to video games and explores, in view of KSR, how easy it may or may not be to obtain patent protection for game play methods, so should be worth checking out:

The Michigan Law Review’s companion journal First Impressions today published an online symposium on the Supreme Court, the Federal Circuit, and Patent Law. The symposium takes place against a backdrop of three recent Supreme Court decisions—KSR v. Teleflex, Microsoft v. AT&T, and eBay v. MercExchange—on patent law.

A diverse group of authors explores whether these cases, considered together, represent a recent upheaval in patent law and redefine the relationship between the Federal Circuit and the Supreme Court or if such predictions are overblown.

University of Michigan Law Professor Rebecca S. Eisenberg contends that the Federal Circuit’s control over patent law remains little diminished by the Court’s recent foray into patent jurisprudence and argues that the most significant impact of KSR may be to embolden the U.S. Patent and Trademark Office to reject more patent applications for obviousness without fear of reversal.

George Washington University Law Professor John F. Duffy argues that the Supreme Court’s reform of patent law substance and procedure was predictable and that KSR’s importance derives from the fact that it highlights many separate trends that are reshaping the patent system.

Patent litigator Harold C. Wegner believes that the Microsoft case revealed the balkanized nature of the Federal Circuit and that KSR, through which the Supreme Court created a unified message, will therefore be crucial to the Federal Circuit under future Chief Judge Randal Rader.

Senior Vice President and General Counsel for Eli Lilly & Co. Robert A. Armitage proposes that Congress adopt the National Academy of Sciences’ recommendations for reforming patent law rather than pursuing “anti-troll” objectives and simultaneously defends the judiciary’s successful track record of responding to common criticisms of anti-trolls without legislative intervention.

Patent litigators Stephen G. Kunin and Andrew K. Beverina explain KSR’s effect on patent law and outline lessons that case suggests for patent prosecution and litigation.

To download a PDF of the entire symposium, feel free to click here.

Additional First Impressions content is available at http://www.michiganlawreview.org/.

Well its old news by now, but in case you haven't heard, Microsoft and Bungie announced on Friday that Bungie has split off from Microsoft, becoming an independent entity. Bungie will still work on the Halo franchise for Microsoft, but will be free to develop other IP as well. Bungie will continue to work with Microsoft as a publisher.

Read more here.

To those at Bungie on my friends list, good luck in your new roles, and may the best be yet to come. See you on Live!
Ok, I've spent the better part of two evenings finishing the campaign mode in Halo 3, so it's about time to come out of my self-induced Halo 3 fog. A colleague of mine and I were discussing about a month or so ago the fact that Linden Lab's terms of service for Second Life are very prohibitive of patents and patent rights being enforced by SL residents. Well there is a fairly comprehensive post on Virtually Blind regarding the topic that I feel compelled to link to. It's an interesting read. Enjoy.
Hey everyone, I was on vacation last week, so there were no new posts last week.

As for this week, in honor of Halo 3, there will be no post this week either (i.e., I expect to be too busy playing Halo 3 to be able to post this week....)


We'll be back to our regularly scheduled programming next week.

-Ross

Frosty Treats Inc. v. Sony Computer Entertainment America Inc. 426 F.3d 1001 (8th Cir. 2005)

I scream, You scream, We all scream for Ice Cream!

Sony was sued over its use of an ice cream truck and clown character in its Twisted Metal video game series. Sony has 6 games in the series, but only the last one, “Small Brawl” depicts an ice cream truck with a label of “Frosty Treats” on the side. Frosty Treats alleged that their mark “Frosty Treats” was protectable under trademark law and consumers would think Frosty Treats was affiliated with the games.

Frosty Treats sells frozen deserts out of ice cream trucks. Their vans have a 9” X 4” decal on the rear of the truck with “Frosty Treats” in pink capital letters. The trucks also have a clown pointing his finger saying “watch cars-cross at rear” so children will cross at the rear of the truck.

Twisted Metal depicts a devious clown driving an ice cream truck (named Sweet Tooth or Needles Kane), a purple-nosed, black-eyed clown on the side of a remote control truck and a clown head on the antenna of the remote control truck. The court held that the clown in Twisted Metal had “virtually no resemblance to Safety Clown.” Even Frosty Treat’s CEO admitted there was no resemblance. He stated at his deposition, “They don’t look the same way, but . . . if the Safety Clown had a brother who was nasty and mean, it would look somewhat like Sweet Tooth.”

The Court of Appeals affirmed the decision of the district court holding that the mark “Frosty Treats” was not protectable, the clown graphic was not likely to cause consumer confusion, and Frosty Treat’s mark or trade dress was not being diluted. The court found “Frosty Treats”, which had never been registered was at the most, a descriptive mark without a secondary meaning, and not protectable as a trademark. While Frosty Treats conducted a survey to prove secondary meaning, they were unsuccessful. The court found Sony’s survey of 204 children and 200 adults who couldn’t remember the names of any ice cream trucks more convincing.

The court noted that the use of a clown on ice cream trucks is not novel. Many ice cream trucks have clown designs. Even though the ice cream truck in Small Brawl depicted Frosty Treats on the ice cream truck, the court held that “no reasonable juror” could find that the trade dress of Frosty Treats and the depictions in Twisted Metal were not similar, nor was Sony trying to pass off the Frosty Treat’s mark as its own.

United States Patent No. 5,482,289

Method of Playing a BINGO Game with Progressive Jackpot

Issued on January 9, 1996 to Gary Weingardt and assigned to Gary Weingardt Trust.

Summary:

In case you were bored with the original game, or thought that BINGO was a game for your grandparents… This patent attempts to create a more challenging BINGO game than the traditional by adding two columns and two rows to the BINGO card and adding an additional 72 numbered balls. The new and improved game would be called BINGOES. The new and improved BINGO card could be used to play the traditional BINGO game or BINGOES. The card could be marked with different colors in order to play the traditional BINGO game. i.e. the five rows by five columns may have a white background, where the remaining two columns and two rows would have a red background to play BINGOES. In BINGOES, a winning combination could be a straight line of seven numbers in a row either vertically, horizontally or diagonally. Additional payouts could be made for the four corners, the eight spots around the center free space, the outside rectangle, or an intermediate rectangle. The operator can designate payouts based on the degree of difficulty of obtaining the winning combination. In addition, a user could play the traditional game of BINGO while simultaneously playing BINGOES, increasing the odds of winning. Claims appear limited to a variation that includes a progressive jackpot in addition to usual game jackpot.

Exemplary Claim:

The method of playing a game of bingo comprising:

a) providing a player with a bingo card consistent essentially of:

a. a plurality of numbered spaces formed as a matrix having seven rows and seven columns;

b. a first indicium designating a portion of the matrix comprising five contiguous rows and five contiguous columns whereby a five-by-five bingo game can be played thereon; and

c. a second indicium designating a portion of the matrix comprising two contiguous rows and two contiguous columns whereby, when combined with the first indicium, a seven-by-seven bingo game can be played thereon;

b) providing a plurality of bingo balls each having individual numbers corresponding to the numbered spaces on the bingo card;

c) a player making a first wager to be eligible for the five-by-five bingo game and a second wager to be eligible for the seven-by-seven bingo game;

d) randomly selecting consecutive bingo balls;

e) awarding a first preselected amount when the player achieves a predetermined winning combination on the five-by-five matrix of the bingo card;

f) awarding a second preselected amount when the player achieves a predetermined winning combination on the seven-by-seven matrix of the bingo card;

g) a player making a third wager to be eligible for a progressive jackpot pool;

h) designating a portion of the third wager to a separate progressive jackpot pool;

i) establishing a predetermined combination as a winning combination for the progressive jackpot pool; and

j) awarding the progressive jackpot pool to the player when he achieves the predetermined winning combination on the bingo card.

MDY Industries, LLC v. Blizzard Entertainment, Inc. et al.

United States District Court, District of Arizona

Case No. 2:2006cv02555, Filed October 25, 2006

On October 25, 2006, MDY Industries, LLC (“MDY”) filed a declaratory judgment action against Blizzard Entertainment, Inc. (“Blizzard”) and Vivendi, SA (“Vivendi”), Blizzard’s parent company, in the U.S. District Court in Arizona seeking, among other things, a decree from the court that MDY has not violated any of Blizzard’s intellectual property rights relating to the “World of Warcraft” video game.

MDY sells a software application called “WoW Glider” (also known as “Glider”) that essentially automates game play in Blizzard’s World of Warcraft. This automation, however, violates Blizzard’s Terms of Service for World of Warcraft, a fact that MDY actually admits in the “Frequently Asked Questions” portion of the Glider website. See http://mmoglider.com/FAQ.aspx#G3. In addition to allowing gamers to feel like lawless rebels, Glider appeals to World of Warcraft players because World of Warcraft is a massively multiplayer online role-playing game (MMORPG) in which players must spend a great deal of time playing in order to “level up” their characters. Although it would seem strange that gamers would want to find a way to play less, the leveling in World of Warcraft is really only a part of the game, and a tedious part at that. Indeed, once a player reaches the maximum level, he or she can begin playing the “end game” content that is typically more challenging and dynamic than the other game content. Moreover, in addition to automating leveling, Glider also automates some of the other more tedious tasks in World of Warcraft, such as “grinding” reputation and “farming” gold, by automatically and repeatedly killing certain computer-controlled enemies. Glider accomplishes this automation by simulating the keystrokes and mouse movement that would normally be the control input from the player. Thus, instead of playing World of Warcraft for hours to level, grind, or farm, a player can configure Glider to perform whatever tasks he or she desires, and then leave Glider to play accordingly. As Blizzard sees it, however, Glider allows players to cheat by gaining an unfair advantage over others, thus detracting from everyone else’s gaming experience. Unfortunately for Blizzard, Glider was more than a mere demon that could be baninshed, and so they resorted to legal action to stop this alleged cheating.

According to MDY’s complaint, representatives for Blizzard and Vivendi appeared unannounced, (as if by magic?), at the private residence of Michael Donnelly, the sole member of MDY according to Blizzard, on the morning of October 25, 2006. At this confrontation, the Blizzard and Vivendi representatives allegedly accused MDY of copyright infringement, Digital Millennium Copyright Act (“DMCA”) violations, and interference with the contractual relationships between Blizzard and World of Warcraft users. The Blizzard and Vivendi representatives also presented Donnelly with a complaint against him and MDY that included all of these charges, and threatened to file this complaint in a federal court in California if he did not comply with their demands. In imminent apprehension of being sued, MDY brought this declaratory judgment action against Blizzard and Vivendi the same day.

Notwithstanding whether Glider’s violation of the Terms of Service for World of Warcraft is interference with contractual relationships, the real issue in this lawsuit is whether Blizzard can prevent MDY from distributing Glider. Indeed, in February 2007, Blizzard filed an answer to MDY’s complaint in which Blizzard asserted counterclaims against MDY seeking injunctive relief and money damages. In these counterclaims, Blizzard argued that it is entitled to an injunction and money damages against MDY based on, among other things, copyright infringement, trademark infringement, and trafficking in technology designed for the purpose of circumventing copyright protection systems in violation of the DMCA. MDY filed an answer to Blizzard’s counterclaims in March 2007 in which MDY denied most of Blizzard’s accusations and raised various affirmative defenses to all of Blizzard’s counterclaims.

As of August 2007, this case is in discovery under a protective order and will remain in fact discovery until January 25, 2008. For now, World of Warcraft players can still use Glider to do their virtual dirty work (as long as they are willing to risk being banned from World of Warcraft for a Terms of Service violation, that is).

Thanks to Rajit Kapur for his assistance with the preparation of this case summary.
United States Patent No. 6,992,654

System and Method for Providing User Input to Character Animation

Issued on January 31, 2006, to Electronic Arts Inc.

Summary:

This patent issued to EA, discloses a system and method for providing real-time control over character animation. Basically this patent allows the user to change a character’s animation by real-time input into a joystick. For example in a golf game, the user can control the back swing, forward swing, the power or speed of the swing, whether the ball is hooked, sliced or straight, or whether or not the character takes a practice swing. The input from the joystick is monitored real time by a processor which converts motions in the joystick, such as pulling the joystick handle backwards into a back swing. Since the input is detected real-time, the user is able to change the animation continuously, i.e. the user can change the golf swing in the middle of the back swing, which might not improve your score.

Exemplary Claim:

A system for providing user input for animated character display on an animation display system comprising:

an analog input module configured to receive user analog input related to animated character display and to normalize the user analog input, thereby creating normalized user analog input;

a control state machine module configured to receive normalized user analog input from the analog input module and create a time-based state based on the received normalized analog input, the time-based state modeling an intent of the user with respect to the animated character, and

an animation state machine module configured to receive the time-based state from the control state machine module and to create a list of animations and at least one blending percentage for combining the list of animations based on the time0based state, and providing the list of animations and at least one blending percentage to the animation display system.

United States Patent No. 5,727,786

Bingo Game Method

Issued on December 8, 1995 to Inventor Gary Weingardt

Summary:

This invention attempts to reinvigorate the classic game of Bingo and lure the gamblers away from video poker, slot machines and table games by providing larger bingo jackpots. The invention includes a bingo card with different colored squares, or a board readout that displays the numbers and their associated colors. The colors may be Blue, Red, Green, and Yellow, etc., and specific jackpots or progressive payouts are associated with each color. For example, a player could obtain the largest Bingo by getting a Bingo of all Blue numbers. The next highest payout might be a Green Bingo, followed by a Red Bingo and then a Yellow Bingo. The smallest payout would then go to a multi-colored Bingo. In this example, there would be the smallest amount of numbers designated as Blue, the next smallest as Green, a larger amount of Red, and the remainder of numbers would be Yellow. There may even be a payout for a “Case Bingo” meaning a Bingo which the player has missed by one number.

Exemplary Claim:

The method of playing a game of bingo comprising:

a) providing a player with a bingo card having a plurality of numbered spaces;

b) providing a plurality of bingo balls each having individual numbers corresponding to the numbered spaces on the bingo card;

c) providing an electronic number reader bingo board having a plurality of numbered spaces corresponding to the number of bingo balls used in the bingo game;

d) a player making a wager to be eligible for the bingo game;

e) randomly designating a portion of the numbered spaces on the bingo board with a first designated marking;

f) designating the remaining numbered spaces on the bingo board as a second designated marking;

g) randomly selecting consecutive bingo balls;

h) if the player achieves a predetermined winning combination on the bingo card of selected numbers having only the first designated marking, awarding the player a first preselected amount.

[Editor's Note: based on the breadth of that claim, at first blush it appears that the claim would read on a Bingo game in which there is a "four corners" bingo in addition to the usual bingo methods. That having been said, I have not read the entire specification or reviewed the prosecution history.]
I have a client that I am helping to get into the Guinness Book of World Records. For what? Well that has to wait until the record is published, but suffice it to say that it got me wondering about world records as intellectual property. Ok, I know they're NOT technically IP, but I've always had a fascination with getting world record, so I figure helping someone else do it would be good enough... for now. My day will come.

In any event, I ran across this article describing the exploits of DK'ers (Donkey Kong'ers) setting world record after world record at the game. An interesting read. But a warning, there is a documentary about attempts to break the Donkey Kong world record, and the article is essentially a spoiler to the movie (in case you planned to watch it).
An Illinois man was sentenced to two years in prison for violating copyright law through the unauthorized sale of video games on his Web site, the U.S. Department of Justice announced late Thursday, August 2, 2007.

Timothy W. Hall, of Mount Vernon, Ill., pleaded guilty May 8 to one count of criminal copyright infringement for his unlawful distribution of hundreds of thousands of copyright works on his Web site, Morbidbackups.net. Hall advertised the sale of hundreds of video games, for Xbox, GameCube, PlayStation 2, and other platforms, on recordable CDs. Hall also offered DVDs containing movies and television programs, the DOJ said.

Video game crime doesn't pay!

Read more here
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Well its not a video game lawsuit, but interesting nonetheless. And, yes, this post could be considered shameless self-promotion. Nonetheless, I was recently quoted in USA Today in an article regarding the Facebook lawsuit, and it's even a good sound bite! Usually quotes get taken out of context or they use the quote that you wish you never said (remember the "work hard, play hard" debacle?) In any event, I thought it noteworthy, so enjoy...
United States Patent No. 6,729,954

Battle Method with Attack Power Based on Character Group Density

Issued May 4, 2004, assigned to Koei Co., Ltd.


Summary:

Although the Sam Fishers, John Matrixs, Solid Snakes, and John Rambos of the world would gladly demonstrate how false this premise is, this patent contends a soldier’s attack and defense strength synergizes with the number of surrounding support soldiers. For example, a bow soldier’s attack strength is increased according to the number of surrounding bow soldiers transverse to the enemy’s army. Therefore, five archers in a line parallel to the enemy’s army would have an attack strength greater than five archers in a line perpendicular to the enemy army. This causes individual soldiers within a formation to have a variable attack/defense strength (displayed to a user by the soldier’s color). The differences in the attack/defense strength are due to changes in the soldier’s support area. The support area is defined by their relative position in the overall formation, the predefined size and shape of the support area, and the type of soldiers in the current soldier’s support area (e.g., archer, foot soldier, etc.). Additionally, different types of soldiers have support areas of different shapes. Interestingly, the patent manages to offend a plethora of game characters by capping a soldier’s attack/defense strength at a maximum value to prevent it from exceeding the strength of “an actual person.”

Exemplary Claim:


A character group battle method in which a plurality of characters that are displayed in a three-dimensional virtual space form groups of friends and enemies that battle against one another, comprising the steps of:

calculating the position of each of the characters in the three-dimensional virtual space;

calculating the character number of the other one or more friend characters existing in a predetermined region about the character; and

calculating at least one of an attack or a defense value respectively expressing at least one of an attack power or a defense strength of the character on the basis of the character number.

Courts have held that artists' copyright protection can extend beyond their literal pictorial works, and some courts have even insinuated that an artist can receive copyright expression for their artistic style, e.g., Steinberg v. Columbia Pictures Inc., 663 F.Supp. 706 (S.D.N.Y. 1987) (holding that cover artist for The New Yorker's copyright protection extended beyond literal copying of his work, and that poster for Moscow on the Hudson infringed his copyright).

The Simpsons, a popular TV show, video game, and now movie, are easily recognizable for the cartoonish style originated by its creator, Matt Groening:



Well now you, too, can look like the Simpsons. Yes, that's right, at SIMPSONIZEME.COM you can upload a picture of yourself and see what you would look like in Springfield, AS (AS=AnyState). In case you're curious, here I am in simpsonized form:




SimpsonizeMe.com is clearly "simpsonizing" people under the authority of the Simpson's copyright owner. However, it does make one wonder whether, if I had drawn the above cartoon myself, would I be liable for copyright infringement of the Simpsons' creator's style... food for thought.
Konami v. Roxor
(E.D.Tex 2007 - SETTLED)

We previously reported that Konami Corporation sued Roxor Games, Inc. in the Federal District Court for the Eastern District of Texas, alleging patent infringement, trademark infringement, unfair competition, trademark dilution, and trade dress infringement, under both Federal and Texas law, regarding Konami's game Dance Dance Revolution. It appears that we won't see trial or a decision on this case, as they settled out of court as of last autumn (ok, I'm a little late posting on this... sorry). The settlement gives Konami full control of In the Groove's intellectual property rights.

More details here.
Micro Star v. FormGen Inc.
154 F.3d 1107 (9th Cir. 1998)

Judge Kosinski opens his opinion by positing the most poignant of questions: “Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what about the dreaded Micro Star?” Duke Nukem 3D, the well known first person shooter that was distributed and owned by FormGen Inc., included an editor that enabled players to create their own levels [Editor’s Note: I once created a map duplicating two decks of a Carnival cruise ship. Regrettably, it didn’t make it onto the CD at issue]. Player-created levels could be posted onto the Internet for download by other players. Micro Star acquired 300 user-created levels, placed them onto a CD, and sold that CD commercially as Nuke It, whose packaging displayed screen shots of the new levels. FormGen threatened to sue, so Micro Star sought a declaratory judgment for non-infringement of FormGen’s copyrights in the game, while FormGen counterclaimed for a preliminary injunction against future copyright infringement by Micro Star. While the district court did grant a preliminary injunction as to the use of the screen shots, it also held that Nuke It was not a derivative work and therefore did not infringe FormGen’s copyright.

On appeal, Kozinski focused on whether Micro Star copied FormGen’s protected expression. Ultimately, the Court disagreed with Micro Star’s arguments that Nuke It was not a derivative work because the MAP files, which contain the instructions defining the custom levels, did not incorporate in a concrete or permanent form any of Duke Nukem 3D’s protected expression (i.e., the artwork rendered onto the screen). Instead, the Court found Nuke It to be a derivative work in concrete or permanent form because it was embodied onto a CD and the MAP files described in detail the audiovisual display that appears on the computer monitor. Additionally, Micro Star’s motive of financial gain worked against their position and foreclosed their ability to assert fair use protection. By selling Nuke It, the Court held, Micro Star “impinged on FormGen’s ability to market new versions of the Duke Nukem 3D story” and “only FormGen [as the owner of the copyright] has the right to enter that market.” FormGen, therefore, did not abandon their right to profit commercially from new levels by granting a license to players to freely distribute new levels to other players. Thus, FormGen received a preliminary injunction as to Nuke It’s commercial distribution. Now if only 3D Realms would hurry up and release Duke Nukem Forever, because we’re all getting a little tired their mantra “it’s done when it’s done…”

Today the Free Software Foundation released version 3 of the GNU General Public License. The new version of the license contains a lengthy patent license provision, copied below, that users should be aware of. Given that GNU GPLv3 might apply to some code used in your game, you should read it and make sure you understand all its ramifications. Give us a call if you need legal representation regarding open source contract issues, and we can discuss your situation.

---cut here---

11. Patents.

A “contributor” is a copyright holder who authorizes use under this License of the Program or a work on which the Program is based. The work thus licensed is called the contributor's “contributor version”.

A contributor's “essential patent claims” are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version. For purposes of this definition, “control” includes the right to grant patent sublicenses in a manner consistent with the requirements of this License.

Each contributor grants you a non-exclusive, worldwide, royalty-free patent license under the contributor's essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of its contributor version.

In the following three paragraphs, a “patent license” is any express agreement or commitment, however denominated, not to enforce a patent (such as an express permission to practice a patent or covenant not to sue for patent infringement). To “grant” such a patent license to a party means to make such an agreement or commitment not to enforce a patent against the party.

If you convey a covered work, knowingly relying on a patent license, and the Corresponding Source of the work is not available for anyone to copy, free of charge and under the terms of this License, through a publicly available network server or other readily accessible means, then you must either (1) cause the Corresponding Source to be so available, or (2) arrange to deprive yourself of the benefit of the patent license for this particular work, or (3) arrange, in a manner consistent with the requirements of this License, to extend the patent license to downstream recipients. “Knowingly relying” means you have actual knowledge that, but for the patent license, your conveying the covered work in a country, or your recipient's use of the covered work in a country, would infringe one or more identifiable patents in that country that you have reason to believe are valid.

If, pursuant to or in connection with a single transaction or arrangement, you convey, or propagate by procuring conveyance of, a covered work, and grant a patent license to some of the parties receiving the covered work authorizing them to use, propagate, modify or convey a specific copy of the covered work, then the patent license you grant is automatically extended to all recipients of the covered work and works based on it.

A patent license is “discriminatory” if it does not include within the scope of its coverage, prohibits the exercise of, or is conditioned on the non-exercise of one or more of the rights that are specifically granted under this License. You may not convey a covered work if you are a party to an arrangement with a third party that is in the business of distributing software, under which you make payment to the third party based on the extent of your activity of conveying the work, and under which the third party grants, to any of the parties who would receive the covered work from you, a discriminatory patent license (a) in connection with copies of the covered work conveyed by you (or copies made from those copies), or (b) primarily for and in connection with specific products or compilations that contain the covered work, unless you entered into that arrangement, or that patent license was granted, prior to 28 March 2007.

Nothing in this License shall be construed as excluding or limiting any implied license or other defenses to infringement that may otherwise be available to you under applicable patent law.

---end of provision---

If you're looking for copies of patents, here are a few resources to help you out:
1) The USPTO web site. Great for getting text searchable copies
2) Google's patent site. Great for searching patents and reviewing text searachable results
3) www.PatentMonkey.com. Free searching and PDF copies of patents.
4) www.PatentRetriever.com. Free searching and PDF copies of patents.
I recently wrote a short article regarding Film Sanitization, the practice of removing objectionable content from a movie without the copyright owner's consent. Groups remove the sex, violence, nudity, language, drug use, etc., to create versions suitable for "families and children." This raises various copyright issues, discussed in my article, which you can download and read here. The initial conclusion is that those who sanitize films without the copyright owner's consent do so at their own risk.

Similar issues could very well arise with respect to video games, except that it's harder to remove just the objectionable content from a video game without the help and assistance of the game's developer, as evidenced by the "Hot Coffee" exploit for Grand Theft Auto: San Andreas. In any event, some issues to ponder, and you might just find the attached article an interesting, if brief, read.

FilmSanitization.pdf
Ok, consider this post shameless self-promotion. Steve Chang and I were recently interviewed by a writer at Entrepreneur.com, and are showcased in an article about playing video games at work.

Link to Article.
Well it was really only a matter of time. When an industry gets large enough, we need awards to distinguish the good from the bad. MMOs and Virtual Worlds are the latest addition to the awards fray, with "live" ceremonies to be held in Second Life and Entropia Universe.

Read more here.

I guess it's true: IP begets IP.
Linden Labs recently added voice capabilities to Second Life. Their beta test went public in March, and commentary has been, for the most part, positive. Voice is a natural extension for MMO games, and introduces new IP issues that will eventually crop up, e.g., voice theft. Digital voice means you can capture someone else's voice relatively easily. Could you create a voice synthesizer based on someone else's speech patterns and tone? Just a thought. In any event, Second Life just got a whole lot more interesting for the rest of the world who doesn't already spend every waking moment as an avatar...

(Fortune Magazine) -- May 14, 2007: Free software is great, and corporate America loves it. It's often high-quality stuff that can be downloaded free off the Internet and then copied at will. It's versatile - it can be customized to perform almost any large-scale computing task - and it's blessedly crash-resistant.


There's a shadow hanging over Linux and other free software, and it's being cast by Microsoft (Charts, Fortune 500). The Redmond behemoth asserts that one reason free software is of such high quality is that it violates more than 200 of Microsoft's patents. And as a mature company facing unfavorable market trends and fearsome competitors like Google (Charts, Fortune 500), Microsoft is pulling no punches: It wants royalties. If the company gets its way, free software won't be free anymore.

Read full story here.

Needless to say, this applies to free and open source software (FOSS) games as well.
KSR International Co. v. Teleflex, Inc.
U.S. Supreme Court, April 30, 2007


While technically not a video game case, this landmark Supreme Court case just (expectedly) rocked the patent world. The technology: drive by wire for automobiles. The issue: when is an invention nonobvious? The answer: don't know for sure, but we DID learn a little more about when an invention IS obvious--whenever the invention is merely the combination of known elements with predictable results.

This case will have a ripple effect in the patent world, regardless of technology area. No longer is the Federal Circuit's "Teaching, Suggestion, Motivation" test the BMOC. While the TSM test is one way to determine obviousness, it is by no means the ONLY way to do so. The KSR case is a welcome relief for all those who have been advocating that it's too easy to get a patent under the Federal Circuit's TSM regime, but at the same time the post-KSR era will experience higher prosecution costs and less certainty regarding patentability of any invention (at least in the short term, until some clarity is provided through subsequent caselaw).

How does this apply to video game patents? Folks have been criticizing patents for years by saying that the USPTO is granting patents to combinations of known ideas and concepts, including game play patents where the claimed "invention" is a combination of known elements found in previous video games. Such patents were being granted because there was no prior art that explicitly or implicitly suggested the combination, even when each of the combined elements was being used in its normal manner, i.e., providing predictable results. No longer will that be the case. Instead, the price of poker, i.e., the "inventiveness" required to get a patent, just went up, and more will be required of game developers before a patent will be granted for a game play concept.

There will be many who relish in the nuances of the KSR opinion's text, and provide lengthy analysis regarding its mantras, so I won't go into all that here. But I will provide some notable quotes:
  • "If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability."
  • "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
  • "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."
  • "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
The entire opinion may be found here. Happy reading!
People often ask the same introductory questions when they first start seeking patent advice and counsel, and are often concerned about getting billed for the attorney's time just to learn the answers to a few basic questions. I typically don't bill for such initial consultations and introductory questions (I say "typically" because, as attorneys, we usually don't make absolute statements... ;)

The proof is in the pudding, right? So we have started a new feature here at the Patent Arcade: Patent FAQs. The Patent FAQs should answer your initial questions to help you decide whether to consult a patent attorney or not. If you have a questions that's not on the list, then send us an email and we'll endeavor to add it.

Have a question that is not covered here? Send us an email, and we’ll endeavor to keep this FAQ updated. Keep in mind that this is not legal advice, as each scenario factually differs. Always discuss your specific situation with your own attorney. You can reach us at info (at) patentarcade (dot) com with further questions.


I think I invented something and I’d like to patent it. What do I do now?

Talk to a patent attorney. Before you make any public uses or disclosures of your invention, before you offer it for sale to anyone, and before you publish anything describing your invention, talk to a patent attorney, as each of these actions can have a negative impact on the patentability of your invention. If you’ve already done one of these things, it is even more imperative that you talk to a patent attorney to determine whether you still have rights to your invention, because there is only a 1 year grace period in the United States to file your patent application after you’ve done one of those things.

What will a patent attorney do for me?

A patent attorney will discuss the legal requirements that must be met before the United States Patent & Trademark Office (USPTO) will grant you a patent, and will also discuss your invention with you to learn about the invention so that he or she can draft a patent application and file the patent application on your behalf in the USPTO. A patent attorney may also assist with a "prior art" search, where previous patents and other documents are search to see if anyone has already created the same or a similar invention as you.

My invention is complicated. Will an attorney be able to understand it?

In order to practice patent law, patent attorneys must pass a special Patent Bar exam administered by the USPTO. In order to be eligible to take the Patent Bar, an attorney must have a scientific, engineering, or computer science degree. In addition to having a technical undergraduate degress, many patent attorneys worked in industry for before going back to law school. For example, Ross Dannenberg was an Information Systems Manager for Carnival Cruise Lines for two and a half years after getting his bachelor's degree in computer science before going back to law school.

Should I do anything to prepare to meet with the patent attorney? What level of detail and information will a patent attorney need?

A patent must describe an invention with enough detail so that someone of “ordinary skill in the art,” after reading the patent, can make and use the invention. You will therefore need to provide enough detail as if you were describing your invention to a competent person in your own field of work. A patent must also describe the “best mode” contemplated by the inventor of making and using the invention, so make note of any special tricks or modifications that need to be performed or made in order to get the invention to work best. The more of these types of details you can gather ahead of time, the more efficient the patent drafting process will go.

I’ve seen a patent before, and it had a bunch of drawings. Where do those come from?

Ideally, from you. While your patent attorney may refine the drawings and add additional drawings to help describe and illustrate your invention, you (the inventor) are in the best position to create rough (napkin) sketches or drafts of diagrams, flow charts, data flow, schematics, etc.

There are a bunch of numbered sentences at the end of a patent. What are those?

The numbered sentences at the end of the patent are the claims. Claims are required to be only one sentence, regardless of length, so they can be a little confusing. However, the claims are the “legalese” that define the boundaries of your invention, and specify what it is that others are not allowed to do. So if anyone performs every element of at least one claim in your patent, then that person infringes your patent.

Who writes the claims?

Given their importance in determining infringement of the patent, the claims should be drafted by a patent attorney. Minor variations to claim language can seriously affect the enforceability and scope of the claims, so anyone other than a patent attorney is discouraged from writing their own claims so that they don’t inadvertently give up some patent rights. Inventors are encouraged to discuss what they consider necessary and inventive aspects of their invention with their patent attorney, and then the patent attorney will craft and tailor the claims to maximize your scope of protection.

This sounds expensive. How much will preparation of the patent application cost?

Keep in mind that a patent is property and, like any other property, is an investment. Most attorneys bill by the hour, or some fraction thereof. The amount of time it takes to prepare a patent application naturally depends on the complexity of the invention, the level of detail provided, preparation by the inventor, and the number of claims required to adequately protect the invention, among other factors. Patent applications can cost $5,000 to $20,000 or more in attorneys’ fees to prepare and file, depending on a variety of these factors. An "average" complexity application is usually in the $10,000 - $15,000 range. Additional fees may be charged if a professional draftsman has to prepare drawings from the inventor’s or attorney’s sketches, typically under $1,000. There are also filing fees when you file the application in the USPTO.

How much does filing cost?

The USPTO charges various filing fees based on whether the applicant is considered a small or large business entity, and also based on the number of claims in the application. For a large business entity, filing fees about $1000 + extra claims fees if your application concludes with more than an allotted number of claims. For a small business entity, filing fees are about $500 + extra claims fees. A full schedule of fees is maintained by the USPTO.

Sounds like I can save money by doing this myself, right?

Some inventors do prepare their own patent applications and file them in the USPTO themselves. This is known as representing yourself "pro se". However, even though inventors CAN represent themselves does not necessarily mean it's a good idea. Patents prosecuted pro se are often difficult to enforce against infringers because of various problems, mistakes, or oversights made during prosecution, e.g., drafting the claims too narrowly, drafting the claims so that no single legal entity can infringe them, not describing the invention in enough detail to satisfy the enablement and best mode requirements, etc.

We recognize that many small businesses and startups are on a budget, and we try to work with each client within their financial means, but there is a threshold minimum amount of money it takes to properly prepare a patent application. One way that some of our clients save money is by preparing the first draft of the "Detailed Description" that goes in the patent application. The Detailed Description is where you describe how to make and use your invention with enough detail so that someone of ordinary skill in the art could build the invention without undue experimentation. Think of the Detailed Description as a document that, if you had to hand it off to someone else, that other person could make and use the invention based on the Detailed Description without having to come back and ask you ANY questions. In fact, when preparing the Detailed Description, assume that the person you hand it off it is not even allowed to ask you any questions or get any clarifications. That should put you in the right mindset if you do decide to prepare the document yourself.

How does the USPTO determine if my invention is patentable?

An invention is patentable if it is new, useful, and nonobvious. A patent examiner will be assigned to your case, and that person will search for “prior art” such as previous patents, publications, white papers, journals, magazines, known products, etc., to determine if your invention is patentable. The patent examiner will analyze the prior art to determine whether anyone else has already invented the same thing (i.e., your invention is not new), or if your invention is a specifically suggested combination of things that have been done before (i.e., your invention is obvious). The USPTO will provide a written report, referred to as an Office Action, that details its reasoning for why or why not you should receive a patent for your invention.

How long will it take to receive an Office Action? What happens next?

Application pendency varies, but the USPTO is notoriously backlogged. Expect to wait at least 2-3 years for the USPTO to send a first Office Action. When you (or your patent attorney) does receive an Office Action, your patent attorney will analyze the arguments made by the USPTO, discuss them with you, and then craft written arguments and or claim amendments in response to the Office Action. This is the other major cost associated with obtaining a patent, and can cost $2,000 - $4,000 or more to respond to complex Office Actions.

The USPTO has determined my invention is patentable… now what?

When you receive a Notice of Allowance from the USPTO, you have three months to pay the Publication and Issue Fees ($1,700 as of this writing). It will then take the USPTO 2-4 months to assign a patent number to you and publish the patent.

The USPTO has determined my invention is not patentable. Do I have any other options?

You can always appeal a rejection by the USPTO. The first step is to appeal the examiner’s decision within the USPTO to the Board of Patent Appeals & Interferences (BPAI). If the BPAI agrees with the examiner, then you can appeal further to the federal courts of the United States.


Ok folks, the technical difficulties appear to be resolved (for now, at least). Sorry to anyone who had trouble with the RSS feed in the meantime...

-Ross
From the April 2007 ABA Journal, citing the U.S. Department of Justice special report:

Of the 7,445 vicil intellectual property lawsuits filed in 2002:
  • 140 (1.9%) made it through trial and received a trial verdict.
  • In 83 cases (59.3%) the plaintiff won.
  • In 53 of the 83 cases, the reward included money.
  • Overall median damages award was $965,000
  • Median damages in patent cases was $2.3M
  • Median damages in copyright cases was $159,000
  • Median damages in trademark cases was $84,500
As everyone knows by now, Sony settled with Immersion for about $150M. So while the primary issues have been decided, there is still a little cleaning up to do. Namely, there was a third party involved in the litigation, Internet Services, LLC (ISLLC), which claimed it had some rights in the Immersion patents via a license from Immersion, and thererfore ISLLC should be entitled to some of that $150M. The district court initially dismissed all of ISLLC's claims, and ISLLC appealed. Today the Federal Circuit affirmed the district court's decision to dismiss ISLLC's claims, confirming that ISLLC lacks standing to sue Sony based on its limited license to the Immersion patents.

The full decision can be found here.
While not directly related to video games, this case may have some applicability to the game world, given the convergence of service providers and MMOs (think Linden Labs). In a solid win for the service providers/content providers (think YouTube or MySpace, or Second Life!), a federal appeals court has largely rejected Perfect 10's claim that a service provider violated laws by linking to sites that improperly posted its images. The March 29, 2007, decision from the Ninth Circuit Court of Appeals affirmed the lower court's ruling that CCBill "reasonanly implemented" a noninfringement policy under the DMCA, and was therefore not liable for widespread copyright infringement by numerous web sites that it linked to.

The case is Perfect 10 v. CCBill, __ F.3d __ (9th Cir. March 29, 2007).

Read more here.
As reported on Gamespot:

Nearly three years ago, Midway released Psi-Ops: The Mindgate Conspiracy, a third-person stealth-action game and--alongside The Suffering and Roadkill--one of a handful of then-recent original intellectual properties the company had brought to market. However, a Los Angeles County screenwriter is now claiming that the intellectual property wasn't all that original...

Read full story here.

The case is Crawford v. Midway Games Inc., C.D. Cal., Docket 2:07-cv-00967-FMC-JC

We'll start tracking this case and let you know of any significant developments.
Hey everyone. Sorry we've been radio silent for a while. We've been having technical difficulties with our hosting service, and its taken some time to pinpoint the problem. We've identified the problem, and have come up with a band-aid, but we are still working to resolve the root of the problem. Please bear with us...
Alas, Sony has agreed to fork over $150M to Immersion to settle their ongoing patent dispute. The deal ends a five year battle including allegations of fraud and misconduct after a jury initially awarded Immersion $82M in damages. With the very real threat of an injunction hanging over its head, Sony settled. Most likely because the PS3 is still not selling as well as Sony has hoped, and Sony can't afford to have its still-selling-like-hotcakes PS2 yanked from store shelves.

Read more from Reuters here.
Bragg v. Linden Lab, E.D. Pa. (Pending)

Well I had some initial reservation about including this case on our tracking list, given that it wasn't a "pure" IP case. However, in today's day and age, virtual property is the new IP, so we're adding the case to our tracking list, and will keep you posted. In the meantime, here is a link to a nice summary of the proceedings thus far.
Looks like Joost is in Beta. If you haven't heard of Joost, it's a potential cable TV killer from the founders of Kazaa and Skype. Like Skype, this is legit on the copyright front, and could pose a serious threat to cable and satellite TV, because this time they are catering to the desires of content providers. There was an article in the February issue of Wired, which is a pretty good read. With this new content delivery system, it will be interesting to see if they build in the capability for episodic delivery of video games as well. We'll all just have to wait and see, unless,... if you have a Joost beta token, send one my way to rdannenberg@bannerwitcoff.com.
Still trying to wrap your head around intellectual property? The following video game IP resources are provided for your use. Please keep in mind that all articles and publications are for informational purposes only, and are not intended as legal advice. Always consult an attorney with fact-specific questions if you have a specific scenario you need assistance with. Ross Dannenberg can be reached at (202) 824-3153, or rdannenberg bannerwitcoff com, and Steve Chang can be reached at (202) 824-3154, or schang bannerwitcoff com if you would like to discuss a specific issue or need legal advice.

Books:
Publications:

TOP TEN VIDEO GAME PATENTS
by Ross Dannenberg & Steve Chang

When the editors at Gamasutra asked us to prepare a list of the top ten video game patents, we initially thought "Hey, no problem, that will be easy." As we’ve dug into this in a little more detail, we realized that what we signed up for was no easy task, because there are quite a few issues that make it difficult to simply whip up a list of the top 10 video game patents.

First, what makes a patent a video game patent? Is it a video game patent if it describes video game play methods? What about hardware? Audio/video processing techniques? There are endless patents that may be utilized in some form or another when playing a video game.

Second, what determines whether a patent is a good patent or a bad patent? Its coolness factor? Financial worth? Something else entirely?

Third, how do you compare patents that cover completely disparate technologies from completely different times? How do you compare the original Pong patent with a patent for giving "kudos" based on driving style? The coup de grace then is this: how do you rank patents that each derive merit from a different one of these metrics?

The fact of the matter is you can’t, because there are many ways in which patents can be valuable. Some patents are widely licensed and bring lots of licensing revenue to its owners; other patents introduce a key technological advance that becomes an industry standard; and other patents possess a certain je ne sais quoi, the “IT” factor of a really neat idea.

Needless to say, given these complexities, this list is fairly subjective, and we would be blown away if no one disagreed with us...

Read the entire article at Gamasutra.com.
Video-game sales a record $12.5B in '06
By BARBARA ORTUTAY, Associated Press, Business Writer
, January 12, 2007

A strong December capped off a record year for the video game industry, with U.S. sales of software, hardware and accessories up 19 percent to $12.5 billion in 2006, according to market research firm NPD Group.

Read full article here.


The Federal Circuit heard oral arguments yesterday in the Immersion v. Sony appeal. As previously reported, the sole issue on appeal is Sony's allegation of misconduct by Immersion.

Sony's arguments at the hearing attempt to highlight its position that the errors of fact regarding a preexisting licensing agreement and prior art document "could have" changed the outcome of the trial had the errors been corrected, and Sony should thus be entitled to a new trial. Sony argued that it was never afforded a chance to determine whether the error was significant or not, because it never knew about a piece of "hidden" prior art. The court questioned the impact of any error on the ability of Sony to litigate the case fairly, and appears hesitant to second-guess the district court judge who witnessed the entire trial and made a judgment call based on information gathered over the course of time during the litigation.

Immersion countered that any error was immaterial and insignificant, implying that such error should not warrant a new trial. Immersion's counsel also pointed out how little significance the "hidden" prior art document played during trial (e.g., zero references to it by Sony's primary invalidity expert, zero references to it by Sony in closing arguments, etc.). The court questioned the basis for such a conclusion, because how could the hidden piece of prior art play a prominent role at trial when Sony didn't know about it?

While I personally found Sony's arguments to verge on a last ditch effort of a 5 year old whining to a parent "it's not fair," and Immersion's counsel came across a little overconfident (perhaps better prepared?), you never know how the court will rule.

It will likely be months before the court hands down its decision.
It appears that Sony's game controller woes just continue to grow. Fenner Investments Ltd. has sued Microsoft (Xbox 360), Sony (PS2), and Nintendo (Gamecube) for allegedly infringing U.S. Patent No. 6,297,751, which describes a low voltage joystick port interface. The case is Fenner Investments Ltd. v. Microsoft Corp. et al., case no. 06-cv-08, in the U.S. District Court of the Eastern District of Texas. We're adding the case to our tracking list, and we'll keep you updated as we learn more.
Planet Bingo v. Gametech International
__ F.3d __ (Fed. Cir. 2006)

Planet Bingo is the exclusive licensee of both the '289 and '786 patents. The patents claim alternative methods of playing bingo by coupling numbers with additional "indicia" or "markings," such as colors or shading patterns. These additional designations overlay a traditional bingo game to produce more winning combinations for more prizes. For example, a player may achieve a classic bingo (e.g., a straight line) and then couple that line with an additional indicator (e.g., a straight line that is also all red) to win a greater jackpot. The additional designations come into play either with markings on the bingo balls in the '289 patent or with a marked bingo flashboard in the '786 patent. The patents also specify that players might make a second, separate wager to access a progressive jackpot. In this type of bingo with wagers, the unclaimed purse in each round carries over to the next game (think Powerball). The bingo hall may also set aside a portion of this second wager to pay winners of the progressive jackpots. Gametech International came along and started producing a similar game, albeit with minor variations.

The Federal Circuit affirmed district court's decision finding non-infringement and invalidity where the district court correctly found that the defendant did not literally infringe the claims, properly refused to find infringement by equivalents, and correctly found certain patent claims invalid as anticipated by a prior art bingo game.

Planet Bingo's exclusive bingo days appear to be near an end. We include this case because the concept could be applied to networked video gaming machines in Las Vegas or elsewhere where gambling is legal.
Sorry we took a bit of a hiatus over the holidays. We're back at work, which includes blogging...

So for those following the Immersion v. Sony case regarding haptic (vibration) feedback patents owned by Immersion and Sony's alleged infringement (i.e., PlayStation 2 controllers that have vibration feedback), today the appeal is being heard by the Federal Circuit Court of Appeals in Washington, DC. The oral arguments are scheduled for 3 P.M. this afternoon. We'll try to give an update afterwards, but it still will be months before a decision is likely handed down.
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