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Eros, LLC et al v. Linden Research, Inc. et al
U.S. District Court, Northern District of California
Case No. 09-cv-04269, Filed September 15, 2009






Final Update:




This case was moved from court to private mediation on October 7, 2010 and plaintiffs filed for voluntary dismissal of the charges on March 15, 2011 under FRCP 41(a). Rule 41(a)(1) allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case it appears that a satisfactory solution was reached in ADR leading the plaintiffs to end their civil court case. The court dismissed the case on March 16, 2011.



Case Update:




As many of you know, and as was discussed in our previous post, Linden Labs runs and operates the internet-based interactive computer simulation Second Life which allows participants to see, hear, use, and modify the simulated objects in the computer-generated environment. Second Life is famous for its free-market economy. Players of Second Life, called “Residents,” can buy and sell goods with Second Life currency (“L$”). L$ can be exchanged for real currency.

Eros, LLC (“Eros”) and Shannon Grei (“Grei”) have filed an Amended Complaint against Linden Research Inc. and Linden Research Int’l., Inc. (“Linden”) alleging violation of real-world intellectual property rights and infringement of the trademarks and copyrights owned by the Plaintiffs. Eros markets a line of erotic items within Second Life under the mark SexGen® (See U.S. Reg. No.3483253, registered on August 12, 2008). According to Eros, over 100,000 active Second Life Residents are customers. In the Amended Complaint, Eros alleges that its SexGen® products have been “counterfeited, cloned, and ripped off countless times by a multitude of Second Life Residents.” Similarly, Shannon Grei markets clothing and other coverings, including “skins” for Residents to wear within Second Life. The Amended Complaint indicates that since 2004, Grei has sold hundreds of thousands of her products within Second Life, making her one of the most popular and successful sellers in the game. Ms. Grei has allegedly suffered financial loss at the hand of pirates who have made and sold copies of her “skins” for real-world profit, and infringement of her rights in the copyright to “Nomine Araignee Set,” which was registered on September 24, 2007 as VAu000958340. Similarly to Eros, Ms. Grei alleges that the Defendant, Linden, has profited off of these pirates with each transaction.

The Amended Complaint reiterates many aspects of the original Complaint. It alleges that Linden “knowingly and willingly profits" from infringing activities through several mechanisms. As asserted by Eros and Grei "pirates must rent (for real-world currency) virtual world ‘locations.’ …Second, pirates must then ‘upload’ their infringing work, products or services into the Second Life virtual world, for which Defendants impose a fee. Third, all inworld transactions on Second Life are made through the exchange of Linden Dollars. …Not surprisingly, Linden Lab also operates the most widely used currency exchange platform in the Second Life community, LindeX, for use at which it imposes an exchange fee of 3.5%. Fourth, Linden Lab operates the website XStreetSL.com, which is an online marketplace for goods and services to be used in Second Life. Fifth, Linden Lab also operates an in-world classified ads system. Pirated works are available both on XStreetSL.com and the in-world classifieds system.”

Eros and Grei acknowledge that “[t]he Second Life Grid utilizes what is effectively a Digital Rights Management (‘DRM’) scheme," but allege that "the nature of the system allows third-party programs to bypass the DRM.” The Amended Complaint further alleges that “Linden Lab conducts little supervision or enforcement to insure that such content copying is eliminated, minimized, or detected. Moreover, whatever DRM-type protection Linden Lab offers against such piracy-enabling programs is easily circumvented and hopelessly ineffective.” The Plaintiffs acknowledge that use of such programs is against Linden’s Terms of Service and that may result in the Resident being banded, but according to the Complaint, Linden “will not ban a user for simply uploading or even selling copied content [and t]hese actions evidence that Linden Lab limits its enforcement of intellectual property law to that required by the ‘safe harbor’ provisions of the Digital Millennium Copyright Act, therefore filing a real-world lawsuit is necessary to protect ones interests.”

The Plaintiffs have alleged twelve (12) causes of action:





  1. Trademark Infringement, 15 U.S.C. § 1114(1) (on behalf of Eros)




  2. False Designation of Trademark Origin, 15 U.S.C. §1125 (on behalf of Eros)




  3. Contributory Trademark Infringement, 15 U.S.C. §114 (on behalf of Eros)




  4. Vicarious Trademark Infringement, 15 U.S.C. §1114 (on behalf of Eros)




  5. Direct Copyright Infringement—Public Display, 17 U.S.C. §501 (on behalf of Grei)




  6. Direct Copyright Infringement—Reproduction, 17 U.S.C. §501 (on behalf of Grei)




  7. Contributory Copyright Infringement, 17 U.S.C. §501 (on behalf of Grei)




  8. Vicarious Copyright Infringement, 17 U.S.C. §501 (on behalf of Grei)




  9. Violation of Cal. Bus. Prof. Code §17200 (on behalf of all Plaintiffs)




  10. Violation of Cal. Bus. Prof. Code §17500 (on behalf of all Plaintiffs)




  11. Intentional Interference with Economic Relations (on behalf of all Plaintiffs)



  12. Negligent Interferences with Economic Relations (on behalf of all Plaintiffs)



The Plaintiffs also allege that Linden’s acts of infringement have been willful, intentional, and purposeful, and that the Defendants have caused injury to both Plaintiffs in the form of lost sales and revenue, lost business reputation, and consumer confusion.

We will continue to monitor this case.

Zynga Game Network, Inc. v. John Does 1-50
United States District Court for N.D. Cal.
Case No. 3:09-cv-02744-BZ, Filed June 19, 2009



Case Update:




This case was dismissed on February, 18, 2011. Given the large number of defendants, the case was resolved in different ways. Zynga voluntarily dismissed the case against several defendants early on. Judgments were entered against several defendants and were satisfied. In these the court found that Zynga indisputably owned the trademark rights to its name, and the defendants knowingly infringed Zynga’s rights. They were ordered to pay monetary compensation, and to cease any use of the mark. Consent judgments were entered against several other defendants who admitted infringing use of the mark, and agreed to stop use and pay monetary damages. Lastly, some defendants never showed up and default judgments were entered against them.


Original Post:



Zynga, the popular online social gaming company, has filed yet another lawsuit. Much like its suit against John Does 1-5, Zynga is again going after website operators infringing on its ZYNGA trademark. This time, however, Zynga has a problem with more than just the domain names.

One of the games Zynga operates is Texas Hold ‘Em Poker which uses virtual “chips.” Players get a set amount of chips when they first sign up and then may win more through game play or purchase more from Zynga. Zynga alleges that the defendants operate sites that sell virtual chips that can be used in the game for real world money, an act that Zynga’s Terms of Service expressly forbid.

The defendants are unnamed “John Does” for the time being because they “registered their domain names using the Domain by Proxy privacy protection service, preventing Zynga from accessing the name and contact information Defendants used to register the domain names.”

Examples of the domain names, some of which include Zynga’s mark, are: 123chips.net, facebookchips.com, and zyngachips.org.

Zynga alleges 7 causes of action for which it’s seeking an injunction and damages:



  1. Trademark Infringement – False Designation of Origin Regarding the Mark ZYNGA: The complaint alleges that consumers may be confused or misled into thinking a connection exists between Zynga and the defendants by the defendants’ use of the ZYNGA mark.


  2. Trademark Infringement – Federal Cybersquatting Regarding the Mark ZYNGA: The complaint alleges that the defendants registered domain names with the bad faith intent to profit from use of the ZYNGA mark.


  3. California Statutory Unfair Competition: The complaint alleges that by using the ZYNGA mark and selling the virtual chips required for the game the defendants are attempting to trade on Zynga’s goodwill and have gained an unfair advantage.


  4. Common Law Trademark Infringement of the Mark ZYNGA: The complaint alleges that the defendants’ use of the ZYNGA mark causes confusion or deception as to the source of, and authorization for, the defendants’ products in violation of California common law.

  5. California Common Law Passing Off and Unfair Competition: Zynga is seeking punitive damages for the defendants’ allegedly intentional and malicious actions which Zynga says resulted in an unfair advantage.


  6. Breach of Contract: Zynga claims the defendants agreed to be bound by the game’s Terms of Service by participating in the poker game. “By selling ‘chips’ for use in the Game through the Infringing Websites, and by using the Game itself to transfer the ‘chips’ they sell, Defendants have breached the Terms of Service, which specifically prohibit Game users from exchanging ‘chips’ “for ‘real-world’ money or otherwise exchange items for value outside of the Game.”


  7. Intentional Interference with Contractual Relations: Zynga alleges that the defendants intentionally acted to induce consumers to breach their contracts with Zynga by selling chips without authorization at a lower price than Zynga offered and by distributing the chips in a manner prohibited by the Terms of Service.

Read the full complaint here.


Nintendo of America v. Daniel Man Tik Chan
United States District Court for C.D. Cal.
Case No. 2:09-cv-04203-JFW-PLA, Filed June 12, 2009


Case Update:


This case ended on August 20, 2009, following a final judgment on consent. The judge ordered a permanent injunction, and a dismissal of the action with prejudice. Nintendo was also awarded damages in the amount of $1,100,000.

Original Post:



Nintendo of America (NOA) has filed suit against Daniel Man Tik Chan and Inspire Electronics for violation of the Digital Millennium Copyright Act, copyright infringement, trademark infringement, and unfair competition.

NOA is the wholly-owned subsidiary of Nintendo Co. Ltd. responsible for the marketing and sale of Nintendo products in the Western hemisphere and for enforcing Nintendo’s intellectual property rights worldwide (except Japan).



According to the complaint Daniel Man Tik Chan is the owner, President or CEO of the other defendant Inspire Electronics and does business as Inspire Technologies and Inspiretech Electronics as well as on the websites http://www.dselite.com/, http://www.thedsdeals.com/, and http://www.blogger.com/www.inspiretech.com.

NOA alleges that the defendant sells devices “designed to circumvent the technological security measures built into” Nintendo’s DS handheld video game systems. The accused devices, referred to in the complaint as “Game Copiers” are “commonly used to play illegally downloaded pirated copies of Nintendo DS video games on the Nintendo DS.” The Nintendo DS is Nintendo's popular dual-screen handheld portable video game system featuring a clamshell design with two LCD screens inside, the bottom one a touchscreen.

The complaint states that Nintendo is the target of a lot of intellectual property piracy because of the immense popularity of its games and systems. In addition to registering its intellectual property rights, the company builds protections into its systems and software. The Nintendo DS contains design-based protection in that the system will only play game cartridges that fit, with a certain size and matching electrical components. Nintendo also has a technological security measure where commands are exchanged between the system and game card inserted into the system. Copyrighted programs are repeatedly accessed and copied during the use of the system. So even if the game card fits, passing the design-based measure, if the game card doesn’t have the software necessary to pass (or circumvent) the technological security measure, the game can’t be played.

The defendants’ accused devices consist of two parts: 1) the game card itself (referred to as the “Game Copier Card”), which substantially matches the DS cartridges so it passes the design-based measure, and 2) a portable memory device (or instructions to purchase one) that can hold hundreds of illegally pirated DS games that can be inserted into the Game Copier Card for unauthorized play that passes the second measure. When the Game Copier Card is used as instructed by the defendants, Nintendo’s trademark appears on the screen. NOA alleges this may confuse users into thinking they are using an authorized copy of the game.

On June 1, 2009, NOA alerted defendants that they were infringing on NOA’s IP rights and ordered them to cease their infringing operations, but the defendants failed to respond.

NOA brings four causes of action in this suit:







  1. Violation of the Digital Millenium Copyright Act:

    NOA alleges that the defendants’ willfully violated the DMCA because their actions fell into at least one of the categories listed in 17 U.S.C. § 1201 (a), Violations Regarding Circumvention of Technological Measures:

    (1) (A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title.

    (2) No person shall manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part thereof, that:
    (A) is primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title;
    (B) has only limited commercially significant purpose or use other than to circumvent a technological measure that effectively controls access to a work protected under this title; or
    (C) is marketed by that person or another, acting in concert with that person with that person’s knowledge for use in circumventing a technological measure that effectively controls access to a work protected under this title.







  2. Copyright Infringement

    NOA alleges that the defendants’ actions “constitute the vicarious or contributory reproduction, preparation of derivative works, distribution, and inducement of the same, in violation of Nintendo’s exclusive rights in its copyrighted works under 17 U.S.C. § 106.”







  3. Trademark Infringement

    NOA alleges that the defendants violated the Lanham Act, 15 U.S.C. §§ 1114, 1125 (a) because they cause the Nintendo trademark to appear on the DS without Nintendo’s authorization. The complaint says the defendants violate § 1114 because they used a “reproduction, counterfeit, copy, or colorable imitation” of NOA’s registered trademark in commerce which is likely to cause confusion or to deceive. The defendants allegedly violate § 1125 (a) because use of the trademark is a false or misleading representation, likely to cause confusion or deceive the user as to the origin or approval of the goods provided.







  4. Unfair Competition

    Nintendo also alleges that the defendants have willfully and persistently violated the California Business and Professions Code section 17200 et seq.
Nintendo is seeking a preliminary and permanent injunction and monetary damages.






Read the full complaint here.

Brown et al. v. Entertainment Merchants Association et al.
United States Supreme Court
Case No. 08-1448



The Supreme Court ruled on Monday, June 27, 2011, that a California law regulating the sale or rental of violent video games to children was unconstitutional on First Amendment grounds. “No doubt a state possesses legitimate power to protect children from harm," said Justice Antonin Scalia, who wrote the majority opinion, "But that does not include a free-floating power to restrict the ideas to which children may be exposed." The California law bars the selling or renting of video games to people under 18 when the games involve killing, maiming, dismembering or sexually assaulting a human being. Retailers who violated the act would have been fined up to $1,000 for each infraction.

In ruling that the California law restricted free expression without valid justification, Justice Scalia was joined by four justices, while Chief Justice Roberts, and Justice Alito filed concurrences, and Justices Thomas and Breyer dissented. This is the first emphatic statement from the nation’s highest court that video games qualify for full First Amendment protections. The court noted that “Like the protected books, plays, and movies that preceded them, videogames communicate ideas—and even social messages…That suffices to confer First Amendment protection…Whatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment’s command, do not vary when a new and different medium for communication appears.”

In addition to confirming video games as free speech, the court drew a line between committing violence, and depicting violence. Citing last year’s 8-1 decision in U.S. v. Stevens, 559 U.S. (2010), striking down a federal law making it a crime to buy and sell depictions of animal cruelty like dog fighting videos, the court found the California statute to be an impermissible content-based restriction on speech, and that “there was no American tradition of forbidding the depiction of animal cruelty -- though States have long had laws against committing it.... As in Stevens, California has tried to make violent-speech regulation look like obscenity regulation by appending a saving clause required for the latter. That does not suffice."

The court also rejected California’s attempt to create a wholly new category of content-based regulation that is permissible only for speech directed at children. “That is unprecedented and mistaken... No doubt a State possesses legitimate power to protect children from harm... but that does not include a free-floating power to restrict the ideas to which children may be exposed. California's argument would fare better if there were a longstanding tradition in this country of specially restricting children's access to depictions of violence, but there is none.” Scalia then went on to cite Grimm’s Fairy tales as examples of gory material we already feed to children. Specifically he talked about the punishment for the evil stepmother in Snow White, who is made to dance in red-hot slippers till she fell dead on the floor. (This is definitely not in the Disney version!)

Justice Thomas’ dissent specifically disagreed with the majority on the point of regulating speech for minors. His dissent asserted the drafters of the First Amendment did not understand it to protect minors’ free speech rights—“The freedom of speech, as originally understood, does not include a right to speak to minors (or a right of minors to access speech) without going through the minors’ parents or guardians.” Justice Breyer also dissented, saying the statute survived First Amendment scrutiny. He relied on studies that he said showed violent video games were positively associated with aggressive behavior, arguing that the court should defer to legislatures, and expert opinions in such cases.

This is a landmark ruling, with implications for more than just violence in video games. As the court noted, this case is the latest in a series of attempts by the California legislature to regulate entertainment content. Industry experts predict that as gaming companies continue to expand their footprint and increasingly use digital distribution methods, including social networking games and mobile titles, legal action relating to privacy and security in games will increase. For more industry analysis, see Gamasutra.


Wizards of the Coast v. Radzikoski/Becker/Nolan

Case Updates:

As regards Case 1: Wizards of the Coast LLC v. Krysztof Radzikowski et al., case 2:09-cv-00460-RSM , the case was voluntarily dismissed by plaintiff on November 4, 2009.

As regards Case 2: Wizards of the Coast LLC v. Mike Becker and Arthur Le, case 2:09-cv-00461-RSM, a consent judgment was entered against defendant Le on August, 11, 2009. Default judgment entered against defendant Becker on November 2, 2009, as Becker never responded to plaintiff's summons and complaint.

As regards Case 3: Wizards of the Coast LLC v. Thomas Patrick Nolan and Stefan Osmena, case: 2:09-cv-00459-TSZ, following mediation, a consent judgment in the amount of $125,000 was entered against defendant Nolan on October 16, 2009. Plaintiff voluntarily dismissed the case against defendant Osmena on November 4, 2009.


Original Post:

If anyone is interested, Wizards of the Coast shot off three new copyright lawsuits against various defendants who uploaded the Dungeons & Dragons Players Handbook 2 to various file sharing web sites.

Filed: April 6, 2009
Court: U.S. Federal Court for the Western District of Washington

Case 1: Wizards of the Coast LLC v. Krysztof Radzikowski et al., case 2:09-cv-00460-RSM
Case 2: Wizards of the Coast LLC v. Mike Becker and Arthur Le, case 2:09-cv-00461-RSM
Case 3: Wizards of the Coast LLC v. Thomas Patrick Nolan and Stefan Osmena, case: 2:09-cv-00459-TSZ

Because this is more of a literary copyright issue (copying a book), we are not going to continuously track these cases, but for anyone who is interested this post will at least serve as a research point for posterity.
Dillinger, LLC v. Electronic Arts Inc.
United States District Court, Southern District of Indiana
Case No. 09-cv-01236, Filed October 1, 2009

Case Update:

Some time ago we wrote about Dillinger, L.L.C. ( a company that claims to own the rights of publicity and trademark to the names and nicknames of the late Depression Era bandit, John Dillinger) filing suit against Electronic Arts over its use of the “Dillinger” name in its “Godfather” line of video games. On June 15, 2011, the district court judge ruled that the plaintiffs could not bring state law right of publicity claims. On June 16, the court granted summary judgment to EA on Dillinger’s trademark claims, effectively handing EA a total victory in the case.

John Dillinger, according to the court order, was a notorious Indiana gangster who terrorized the Midwest for several years, until he was gunned down by the F.B.I. in a Chicago firefight, in 1934. Under a relatively recent Indiana statute, which recognized a descendible right of publicity, plaintiffs claimed the right to control Dillinger’s “personality” rights for commercial purposes. The court found however, that Indiana’s Right of Publicity Statute does not apply to persons who died before the enactment of the statute, and that videogames also fall under the “literary works” exception to the statute.

As regards the trademark infringement claims, the court found that EA had an affirmative fair use defense under the First Amendment. Plaintiff tried to argue that use of the Dillinger name had no artistic relevance to the video game, and so could not be eligible for First Amendment trademark protection under Rogers v. Grimaldi, 875 F.2d 994 (2nd. Cir. 1989). The court found, however, that EA’s use of the Dillinger name was protected under Rogers because it did have some artistic relevance to the game, and it did not explicitly mislead the public as to the source or content of the work. Dillinger, LLC plans to appeal the ruling.



Original Post:

Dillinger, L.L.C., a company that claims to own the rights of publicity and trademark to the names and nicknames of the late Depression Era bandit, John Dillinger, has filed suit against Electronic Arts over its use of the “Dillinger” name in its “Godfather” line of video games.

In the suit, Dillinger takes issue with EA’s use of the name “Dillinger” for several weapon upgrades that were offered in the Godfather and Godfather II video games. The complaint names two examples: the “Dillinger Level Three Tommy Gun” from the first Godfather game, and the “Modern Dillinger Level Four Tommy Gun” from the Godfather II game. The complaint refers to the former as a “swift and gruesome killing machine,” and having played those games, this author can confirm that the guns were indeed swift and gruesome.

Dillinger filed suit in Indiana, and the complaint charges EA with various counts, including alleged violations of Indiana’s Publicity Statute; federal, state and common law trademark law; state unfair competition law; and even includes claims for “Criminal Mischief,” “Conversion” and “Deception” under the Indiana Crime Victims Act. Dillinger seeks monetary damages and injunctive relief, and here’s hoping they resolve this before Valentine’s Day.

The case is Dillinger, L.L.C. v. Electronic Arts, Inc., No. 1:09-cv-1236 (S.D. Ind., filed Oct. 1, 2009), and we’ll keep you posted as we learn more.
Prime Table Games, LLC v. National Table Games Corp.
United States District Court for S.D. Miss.
Case No. 3:09-cv-346HTW-LRA, Filed June 11, 2009




Case Update:



On October 7, 2009, Prime Table filed a notice for dismissal of the case under FRCP 41(a)(1). Rule 41 allows a plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case National Table Games had not responded to Prime Table’s suit with any court filings before Prime Table filed the voluntary dismissal. Based on the amount of time between the lawsuit being filed and dismissed, the parties likely started settlement discussions immediately after the case was filed, and Prime Table Games kept agreeing to delay the deadline for National Table Games to file its Answer to the Complaint in view of ongoing settlement discussions.




Original Post:


Prime Table Games is the creator and marketer of gambling games that are generally intended for use in casinos but can also be played in other formats such as video and remote games. Prime owns U.S. Patent No. 6,503,145, issued January 2003, which describes a method for a poker "casino game with multiple playing modes and wagering options." According to the patent, the game is supposed to be a player-friendly version of showdown poker that operates with little-to-no casino advantage.

The ‘145 patent abstract describes the game as such:


A casino game incorporates a first compulsory playing mode and one or more optional playing modes without a house advantage. Preferably, the first playing mode is a three-, five- or seven-card poker game against a payout scale based on the respective hand poker rank. Optional modes without a house advantage include head-to-head poker games against the dealer and poker games against other players. Side wager options are also available for high hands, thereby increasing player interest by providing a chance for a high payout.
Representative Claim 1 reads:


1. A method of playing a casino game, comprising: (a) receiving a first wager for a first playing mode, the first playing mode being compulsory; (b) receiving at least a second wager for at least a second playing mode, wherein the second playing mode is without a house advantage; (c) dealing hands of playing cards to a dealer and to at least one player, and resolving the first wager according to a poker rank of the player hand against a payout scale; and (d) resolving the second wager without a house advantage according to a poker rank of the player hand against one of (1) a poker rank of the dealer hand, and (2) a poker rank of another player hand.
Prime is suing National Table Games (formerly Gammax, Inc.), alleging that National's casino poker game Flop Poker, released March 2003, infringes the ‘145 patent. Prime alleges National knew about Prime's patent since at least mid-2004. According to National's website, the Flop Poker game is National's most popular and is used in casinos across the country.

We’ll keep you updated as the case progresses. Read the full complaint here.
Walker Digital LLC v. 2K Games Inc. et al
U.S. District Court, District of Delaware
Case No. 1:11-cv-00368-GMS, Filed April 25, 2011

Earlier this year we reported on Walker Digital’s suit against Activision, Blizzard, and Zynga for alleged infringement of U.S. Patent # 6,425,828 (‘828 patent), issued in 2001, entitled “Database Driven Online Distributed Tournament System.” On April 25, 2011, Walker filed suit against a range of companies alleging violation of the ‘828 patent, and U.S. Patent # 6,224,486 (‘486 patent), issued in 2002 under the same title. These patents are related to technology that enables electronic tournament game play for multiple players and stores player information for future use.

Four companies (including 2K Games) originally named in the suit have been voluntarily dismissed by Walker. The remaining defendants are Capcom Entertainment Inc., Electronic Arts Inc., Konami Digital Entertainment Inc., Microsoft Corp., Sega of America Inc., Sony Computer Entertainment America LLC, Square Enix Inc., THQ Inc. and Ubisoft Inc. The complaint specifically accuses several popular games owned by these companies of infringing the ‘828 and ‘486 patents. These include EA’s "Madden NFL 11" and "FIFA Soccer 11," Capcom's "Super Street Fighter IV," Microsoft's "Halo 3" and Ubisoft's "Assassin’s Creed: Brotherhood."

This suit is the latest in a slew of litigious activity by Walker this year. On April 25, 2011, Walker also filed suit against Google, Amazon and Yahoo alleging infringement of a patent for modifying and displaying a merchant's advertisement to users by associating a data pattern with the merchant. The suit claims that the companies’ advertising programs infringe U.S. Patent # 7,933,893 which had been issued the day before, on April 24, 2011. This follows Walker’s aforementioned January suit against Activision et al, and their filing of 15 different suits against 100 different companies on April 11, 2011.

According to the complaint filed on April 25, Walker Digital is headed by Jay Walker, who says his inventions have formed the basis for many companies, generated billions of dollars in revenue and created thousands of new jobs. The best-known of these companies is Priceline, which lists itself as having a market value of more than $22 billion. The suit also asserts that Walker Digital has a patent portfolio of more than 400 issued and pending U.S. and foreign patents, and Jay Walker was the lead inventor on the majority of them.



For further coverage see Law360


LottoTron, Inc. v. Morris Mohawk Gaming Group
United States District Court for D. N.J.
Case No. 2:09-cv-03811-FSH-MAS, Filed July 31, 2009


Case Update:

Pursuant to a request by the plaintiff, this case was dismissed with prejudice on December 9, 2009, under FRCP 41(a)(1). Rule 41(a)(1) allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Morris Mohawk had not responded to LottoTron’s suit with any court filings before LottoTron filed the voluntary dismissal. Based on the amount of time between the lawsuit being filed and dismissed, the parties likely started settlement discussions immediately after the case was filed, and LottoTron kept agreeing to delay the deadline for Morris to file its Answer to the Complaint in view of ongoing settlement discussions.


Original Post:

LottoTron is a New Jersey corporation and owner of U.S. Patent No. 5,921,865. Approved in 1999, the ‘865 patent is for a “computerized lottery wagering system.” The patent claims a method of remotely enrolling a subscriber and taking wagers for different lottery games via phone or Internet. Here is a representative claim:







1. A wagering system for automatically accepting wagers comprising: a) communications means for receiving communications from subscribers, said communications means including computer means and a wireless link; b) message means connected to said communications means for receiving the incoming
communications routed from said communication means and for providing a series of messages requesting subscriber information particular to one of the plurality of wagering formats; and c) computer means having storage means connected to said message means for receiving and storing said subscriber wagering information, and assigning a reference number to a wager.
In 2007, MMGG signed an exclusive licensing agreement with Bodog, making it the sole operator of the Bodog online gaming brand in North America. Bodog “is one of the world's most successful and well-established digital entertainment and online gaming giants.”

In the complaint, LottoTron alleges that MMGG’s operation of the website bodog.com, which allows users to place online wagers, amounts to patent infringement. LottoTron also alleges that MMGG has “induced and contributed to the infringement of the claims of the ‘865 patent by others.” For relief, LottoTron is seeking monetary damages and an injunction to prevent future infringement of its patent.

LottoTron has initiated similar lawsuits over the past few years. In 2005, LottoTron alleged GTech Corp. infringed the same ‘865 patent with its eCheck system which allowed consumers who bought a lottery ticket at a retail location to check online whether they had won. LottoTron, Inc. v. GTech Corp., Case No. 3:05-cv-0462-FLW-JJH (D. N.J. 2008). The court in that case granted summary judgment of non-infringement to GTech because the lottery results were predetermined at the time of the ticket purchase and the consumers had to return to the retail location to collect any winnings. In October of 2007, LottoTron filed a complaint against Microsoft but then voluntarily dismissed the suit in November 2007. LottoTron, Inc. v. Microsoft Corp., Case No. 3:07-cv-05085-FLW-JJH (D. N.J. 2007). In that suit, LottoTron alleged that Microsoft infringed on its “Computerized lottery wagering system” patents with its MSN website that offered multiple-game, online-gaming online poker and casino games. LottoTron similarly sued PokerStars in September of 2008 for infringing the ‘865 patent through its operation of its “on-line, interactive gaming website.” LottoTron v. Rational Poker School Ltd. d/b/a PokerStars, Case No. 2:08-cv-04874-WJM-MF (D. N.J. 2008).
Double Fine Obtains Publishing Rights to “Psychonauts”


As of June 14, 2011, the rights to the hit 2005 adventure game, Psychonauts, have reverted to its original publisher Double Fine. Previously, Double Fine could produce new games in the Psychonauts series (which they haven’t because of a lack of funds) but could not re-publish or financially benefit from the original. The rights to the original Psychonauts had been signed over to Majestic Publishing, but that contract has now expired. While there are some contractual obligations that need to be worked out before Double Fine gets the full financial benefit of ownership and sales in Psychonauts, fans are hoping this will lead to the long awaited development of Psychonauts 2. Double Fine has no plans to develop a sequel for now, but they assure fans they have “some [other] fun stuff to announce” in the near future.



For full coverage see Gamasutra


Ads on Xbox

As advertising continues to evolve for game platforms, the New York Times reports that Microsoft is set to launch a new suite of advertising tools called NUads (short for natural user interface ads) on the Xbox Kinect gaming consoles.

Developments at the USPTO earlier this month indicated that Microsoft had plans for a new, interactive advertising platform utilizing the Xbox 360 Kinect camera controller. On June 6, 2011, Microsoft filed a trademark application for the term “NUADS” for “advertising services, namely, promoting and marketing the goods and services of others through online interactive video games by enabling consumers to interact with third-party advertising content through voice or body gestures via computer game console and sensor devices.” See full trademark application here.

Both Gamasutra and Techie Buzz speculated that this could be the natural user interface that Microsoft had been talking about for quite a while, which would allow them to offer a similar service to iAds, the Apple advertising platform for app developers to create apps/ads that offer an interactive and aesthetically pleasing experience for the user. According to the Times, NUAds will allow Xbox users to use voice and motion commands to interact with advertisements while they are playing games or watching videos.

The NUAds will be located on the console dashboard, embedded in games and other video content. They are intended to help advertisers keep the attention of Xbox users in a way traditional television advertising does not by creating a way for users to interact and engage with their televisions. Using voice commands, gamers will also be able to send messages about ads to networking sites like Twitter, to text messages about ads, or to vote as part of promotions.

These new advertising options will be presented today (June 21, 2011) to advertisers at the Cannes Lions International Festival of Creativity, an annual conference for advertisers and marketers.

Digital Reg of Texas, LLC v. Adobe Systems Incorporated et al
U.S. District Court, Eastern District of Texas
Case No. 6:11-cv-00305, Filed June 14, 2011


This recently filed case coming out of the Eastern District of Texas shows that video game companies are not immune from lawsuits regarding conventional technologies. Digital Reg of Texas, a subsidiary of DRM Technologies LLC, describes itself as a "leading pioneer and innovator in the areas of securing digital content, secure delivery of digital content, and tracking and authorizing use of digital content." It is suing a number of businesses, including gaming companies Electronic Arts Inc., UbiSoft Entertainment Inc., and Zynga Inc. for the alleged infringement of seven patents delivering electronic content in relation to payment methods, storing downloaded games onto computers, and delivering digital content across devices.

The patents-in-suit are U.S. Patent Numbers 6,389,541, issued in 2002 and titled "Regulating Access to Digital Content;" 6,751,670, issued in 2004 and titled "Tracking Electronic Component;” 7,127,515, issued in 2006 and titled "Delivering Electronic Content;" 7,272,655, issued in 2007 and titled "Delivering Electronic Content;" 7,421,741, issued in 2008 and titled "Securing Digital Content System and Method;" 7,562,150, issued in 2009 and titled "Delivering Electronic Content;" and 7,673,059, issued in 2010 and titled "Tracking Electronic Content." These are the exact patents at issue in a similar suit filed by Digital Reg on April 21, 2011, against many of the same companies (see Digital Reg of Texas v. Adobe Systems et al, case no. 11-cv-00200). The April 21 suit alleges that the defendants sell products that include digital rights management features that restrict the use of the product in ways that infringe Digital Reg's patents. UbiSoft’s Game Launcher, and EA’s Download Manager (a secure tool that lets users download video games purchased online directly onto a computer) were specifically cited in the April 21 complaint.

One of the same patents at issue in the current suit (the ’541 patent) was also at issue in a previous suit Digital Reg filed against a slew of technology giants in 2007. In that case, Microsoft, Apple, Sony, Playboy, Blockbuster and Macrovision all reached settlements with Digital Reg and the case was terminated in 2009.


Lodsys LLC. V. Combay Inc. et al.
United States District Court, Eastern District of Texas
Case No. 11-cv-00272, Filed May 31, 2011

Seven developers of iPhone applications, including the developers of games like Labyrinth and Mega Poker Online Texas Holdem, were sued on May 31, 2011, by Lodsys, a Texas company that had licensed its patents to Apple. Lodsys claims that its agreement with Apple did not give third-party developers free rein to use the patented technology. Less than two weeks later, on June 9, 2011, Apple filed a motion to intervene in the suit in an effort to protect its third-party software developers …and the substantial stream of revenue they generate for the company.

The main patent in question is U.S. Patent No. 7222078, "Methods and systems for gathering information from units of a commodity across a network" (the ‘078 patent). Lodsys had previously sent letters to the developers informing them that their apps violated its exclusive right in the ‘078 patent, and asking them for a small but not insignificant licensing fee. Lodsys threatened suit for non-compliance. Apple itself responded with a stern letter asserting that it had already licensed these patents and this license extended to its customers and business partners.

Despite Apple’s response Lodsys proceeded to file suit against the developers, saying that “Unfortunately for developers, Apple’s claim of infallibility has no discernible basis in law or fact.” Given that these are small independent app developers, and that patent suits are expensive to fight, Apple’s motion to intervene is welcomed by the defendants. Apple argues in its motion that it has the right to intervene because it has a vested interest in the property at issue, because the suit has “fundamentally disrupted Apple’s relationships with … developers, and places in jeopardy the revenue that Apple derives from those relationships,” and because independent developers “lack the resources to fully and fairly litigate the issue of whether Lodsys’s claims are exhausted” under the doctrines of first sale and exhaustion.

Further complicating the issue is the fact that Lodsys itself is being sued in the Northern District of Illinois. ForeSee results, an online survey company, is asking the court for declaratory judgment that four Lodsys patents, including the ‘078 patent in question in the Apple suit, are invalid. In what could be argued as a forum shopping technique, Lodsys is incorporated in Eastern Texas, apparently for the benefit of filing patent infringement suits there, but its allegedly sole employee actually operates out of Illinois. If a declaratory judgment against Lodsys were entered in Illinois before a trial ended in Texas, Apple and the developers could move to dismiss the lawsuit.

For further coverage see Ars Technica
Stephen Slesinger Inc. v. Disney Enterprises Inc.
USPTO, Trademark Trial and Appeal Board
No. 91179064, June 8, 2011


A panel of judges at the TTAB has ruled that a former licensee of rights to “Winnie the Pooh” is collaterally estopped from pursuing trademark opposition and cancellation proceedings against Disney. In 1930, A.A. Milne, the creator of Winnie the Pooh, transferred his exclusive merchandizing and other rights to Stephen Slesinger who then granted these rights exclusively to Walt Disney Productions in 1961. Some dispute over the rights ensued but these were resolved contractually in 1983 with Disney securing exclusive ownership rights in all Pooh works, including any trademark rights attached to them.

Disney is currently seeking to register several Pooh-related marks at the TTAB in conjunction with various goods, including computer games, and other internet-related uses. According to Slesinger’s complaint, Disney has been exploiting the Pooh characters in mediums to which it did not receive rights under the 1983 Agreement. These mediums include: “Internet use, wireless use, advertising uses, credit cards, ringtones on mobile phones, greeting cards, computer graphics, Internet computer games, computer screen savers, computer wallpapers, character meals, convention services, magazines, multi-media kits, and other products and services.”

Disney argued that the 1983 agreement transferred all rights in the Pooh works to Disney, including rights to use the trademarks in technological mediums that could not have been contemplated at the time. Disney also asserted that this issue had already been decided in Disney’s favor in prior district court proceedings where Disney was awarded summary judgment against similar challenges from Slesinger (Milne v. Slesinger, Document 545, Case No. 02-08508 (C.D. Cal., Sept. 25, 2009.) Slesinger argued that the issues now before the TTAB were not addressed in that district court ruling.

Ultimately, the TTAB disagreed with Slesinger. It reviewed the district court’s order of summary judgment and found that the district court had considered all issues of ownership in finding that there was no genuine dispute as to Disney’s exclusive rights to the Pooh marks coming out of the 1983 agreement, namely, that Disney owns all rights whatsoever to the Pooh marks.

The TTAB found that the issues Slesinger raised in the case before it were identical to the issues involved in the prior civil action. Thus, under the doctrine of collateral estoppel, Slesinger was barred from re-litigating these matters. The doctrine of collateral estoppel, or “issue preclusion,” mandates that once an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is normally conclusive in a subsequent suit involving the parties to the prior litigation. See Int'l Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984.) The underlying rationale is that a party who has litigated an issue and lost should be bound by that decision and cannot demand that the issue be decided again.
Hillcrest Laboratories Inc. v. Nintendo Co., Ltd. et al
United States District Court, District of Maryland
Case No. 8:08-cv-02188-RWT, Filed August 20, 2008

Case Update:

On September 24, 2009, the parties submitted a joint request to stay the case pending resolution of a concurrent case in the United States International Trade Commission. In late September, 2009, pursuant to a confidential settlement by the parties, the case before the ITC was terminated, and the District Court case was dismissed with prejudice shortly thereafter on October 16, 2009.


Original Post:

Nintendo faces another lawsuit over various aspects of its Nintendo Wii video game console. This time from Hillcrest Laboratories, Inc., a Maryland-based startup, that designs, develops and sells an interactive media system called HoME, which uses a combination of graphical, zooming and interface software for TV and motion control technology called Freespace.

In a strategic move, Hillcrest filed suit both in the U.S. District Court of Maryland, as well as with the International Trade Commission. The patents at issue are 7,139,983; 7,158,118; 7,262,760; and 7,414,611. According to Law360, the patents relate to the following technology:

"The company's U.S. Patent Numbers 7,158,118; 7,262,760; and 7,414,611 cover a technology that is often used on television sets and allows users to access several forms of digital content, such as digital photographs, Internet Web sites and games, according to Hillcrest. The software typically uses a main menu that prompts users to choose which program they wish to use.


U.S. Patent Number 7,139,983, meanwhile, protects technology for a hand-held, three-dimensional pointing device that, unlike a two-dimensional device such as a computer mouse, allows the user to translate or rotate the pointing tool in space, instead of detecting movement relative to a flat surface."

The district court's docket number is 8:08-cv-02188. We'll add this case to our tracking list and keep you posted of new developments.
ADC Technology Inc. v. Microsoft Corporation et al
United States District Court for the Western District of Washington
Case No. 2:08-cv-01579-RSM, Filed October 27, 2008


Case Update:

On July 9, 2009, ADC filed a motion for stay of proceedings pending the outcome of reexamination proceedings ADC initiated in the USPTO with respect to each of the five patents-in-suit. On July 21, 2009, the court entered the stipulated motion to stay the proceedings pending the outcome of requests for reexamination. Plaintiff was ordered to file a status report every six months advising the court of the progress of the reexamination requests. The third and latest status report was filed on January 20, 2011. Plaintiffs are still awaiting reexamination at the PTO.


Case Update 3/25/09:

In a previous post, we reported on the filing of this patent lawsuit regarding pay-for-download software over a computer network, e.g., including games. Well it appears that Sony is out of the lawsuit, and Microsoft & Nintendo remain. The dismissal was voluntary by ADC, as Sony never made an appearance in the lawsuit. The dismissal is also without prejudice, which means that ADC could refile a lawsuit against Sony regarding these same patents in the future. In interesting twist, to be sure. If we find out more, we'll let you know.


Original Post:

ADC Technology on October 27, 2008, filed a new patent infringement lawsuit against Microsoft, Nintendo, and Sony, alleging that each of the Xbox360, Wii, and PlayStation3, respectively, infringe on one or more of 5 different patents owned by ADC. The case was filed in the Western District of Washington, and is captioned ADC Technology, Inc. v. Microsoft Corp. et al., and is case number 2:08-cv-01579. Here is a copy of the complaint: ADC.pdf

The patents in suit are:




  • 5,775,995: Interactive Communication System for Communicating Video;


  • 6,193,520: Interactive Communication System for Communicating Video Game & Karaoke Software;


  • 6,488,508: Interactive Communication System for Communicating Video Game & Karaoke Software;


  • 6,702,585: Interactive Communication System for Communicating Video Game & Karaoke Software; and


  • 6,875,021: Interactive Communication System for Communicating Video Game & Karaoke Software.
The patents appear to relate to remote distribution of software to terminal devices. For example, claim 1 of the '021 patent reads:

1. A software distributing system for



transmitting at least one of the program, the data, and a combination of the program and data stored in a database provided in a distribution center to a requested communication terminal device via communication lines;




storing the transmitted program, the data, and the combination of the program and data in a memory provided in the communication terminal device; and




enabling execution of the program or data processing according to the program, the data, and the combination of the program and data in the memory,




said distribution center comprising:


a transmitter device for transmitting the program, the data, or the combination of the program and data at the request of said communication terminal devices to said communication terminal device; and


a charging device for charging a fee for at least one use of the transmitted program, the data, or the combination of the program and data in said communication terminal device.
On its face the claim appears to cover software downloads where the user pays for the download. There is nothing in the claims limiting this to game console use, and ostensibly could apply to any pay-for-software dowloads, e.g., PC downloads over the Internet, which have been going on for years. The '021 patent has a priority date at least dating back to 1998, and possibly back to 1994, which could explain the apparent broadness of the claims. Thus, while ADC appears to have broad claims, that makes it easier for the defendants to try to invalidate the patents. However, the early priority dates of the patents will make it more difficult for the defenedants to find prior art to be able to do so. Nonetheless, with software and media downloads now playing a principal role as the console makers each try to make their console the primary "living room device," this lawsuit is sure to heat things up.

I have not studied the patent specifications in depth, and this is just my initial cursory thoughts. The opinions in this article are not legal opinions of validity, invalidity, infringement, or noninfringement, but are rather intended as a general introduction to the issues. We will add this case to our tracker list and keep you posted.
Beneficial Innovations Inc. v. Blockdot Inc. et al


United States District Court, Eastern District of TexasCase No. 2-07CV-263,


Filed June 20, 2007

Case Update:

This case was well on its way to jury trial, but was dismissed on March 25, 2011, following a settlement by the parties.


Case Update 12/9/09:

As previously reported, Beneficial Innovations, Inc. (“Beneficial”) filed suit in the Eastern District of Texas accusing several entities of willfully infringing claims of U.S. Pat. No. 6,712,702 entitled “Method and system for playing games on a network.” Beneficial, a patent-holding company based out of Nevada, subsequently amended its complaint to include U.S. Pat. No. 6,183,366 entitled “Network Gaming System.” On November 30th, Beneficial and three defendants - Digg Inc., CBS Interactive Inc, and Jabez Networks Inc. indicated that a settlement had been reached and filed motions requesting dismissal. The motions, which were granted by Judge Ward, dismissed all claims, affirmative defenses, and counterclaims between the three defendants and Beneficial with prejudice. While the terms of the settlements are confidential, the court’s order indicated that each party would bear their own legal fees and costs.


Original Post:

A new gaming lawsuit was recently filed in the Eastern District of Texas. Beneficial Innovations owns U.S. Pat. No. 6,712,702 on in-game advertising in network games. Claim 1 of the patent reads as follows:

1. A method of playing game instances on the Internet, comprising: first receiving player identification at a game playing Internet accessible node (GPIAN) for first and second players; transmitting, via the Internet, from the GPIAN, first information related to communications between: (a) the GPIAN, and (b) a first Internet accessible node from which the first player communicates with the GPIAN; wherein said first information is utilized in subsequent Internet communications between the GPIAN and the first Internet accessible node; wherein said first information is stored on the first Internet accessible node so that it is available in subsequent different Internet connections by the first player; second receiving, via the Internet, at the GPIAN, first responsive information indicative of said first information being present on said first Internet accessible node; first playing with the first player a first instance of a game, wherein one or more game play representations are transmitted to the first player via the first Internet accessible node; second playing with the second player a second instance of a game, wherein one or more game play representations are transmitted to the second player and from the GPIAN while the first player is playing the first instance; transmitting to at least one of the first and second players, respectively, during one of said first and second games instances, a presentation substantially unrelated to plays of the one game instance, wherein said presentation is advertising a product or service; wherein said step of second receiving at the GPIAN occurs when the first player has reconnected the first Internet accessible node to the Internet after said first information has been stored on the first Internet accessible node and said first Internet accessible node has disconnected from the Internet.

Not exactly bedside reading.

The case is Beneficial Innovations, Inc. v. Blockdot, Inc. et al., Case No. 2-07CV-263, in the District Court for the Eastern District of Texas, filed June 20, 2007. We'll add this case to our watch list and let you know what happens...
Parallel Processing Corporation v. Sony Corporation of America
United States District Court, Eastern District of Texas
Case No. 07-353, Filed July 26, 2007

Case Update:

This case was dismissed without prejudice on October 8, 2007. Plaintiff Parallel Processing Corp filed a notice of voluntary dismissal under Rule 41(a) of the FRCP. This allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Sony had not responded to PPC’s suit with any court filings before PPC filed the voluntary dismissal.


Original Post:

Parallel Processing Corp. has filed a lawsuit alleging that Sony's PlayStation 3 infringes U.S. Pat. No. 5,056,000, entitled "Synchronized parallel processing with shared memory." Not the sexiest of patents with respect to game console hardware, but given the convergence of game consoles and general purpose computers, it's not surprising.

The lawsuit is Parallel Processing Corp v. Sony Corp. of America, case number 07-353, in
the U.S. District Court for the Eastern District of Texas, filed July 26, 2007.

We will add this case to our tracking list and keep you posted of new developments.

Read more here, and here.
WizKids Inc. v. Wizards of the Coast Inc.
United States District Court for the Western District of Washington
Case No. 2:07-cv-00809-MJP, Filed May 25, 2007

Case Update:

This case was dismissed with prejudice on June 30, 2008, pursuant to settlement by the parties.


Original Post:

On May 25, 2007, WizKids, Inc. filed a declaratory judgment action against Wizards of the Coast (WOTC) regarding WOTC's patent no. 7,201,374, entitled Method and Article of Manufacture for Collectable Game." WizKids allege invalidity and noninfringement of the '374 patent, based on previous threatening letters received from WOTC regarding WizKids Pirates of the Spanish Main game.

The case is civil action C07-0809-CMP in the Federal District Court for the Western District of Washington (Seattle Division).

We will add the case to our list of lawsuits and keep you updated as we learn more, and a brief summary of the '374 will follow as well.

Hochstein et al. v. Microsoft et al.
United States District Court for E.D. Mich.
Case No. 04-cv-73071, Filed August 11, 2004


Case Update:


After 6 long years of litigation, Hochstein’s case against Microsoft alleging patent infringement by the Xbox game was dismissed on July 20, 2010. To recap, Hochstein alleged that Microsoft’s Xbox infringed on his patent (link to U.S. Patent No. 5,292,125) for a device that allows two or more people play video games together without being in the same location (such as over a telephone line.) Hochstein argued that this patent should be construed to cover all systems that can have multiple players, like the Xbox, and sought royalties on Xbox sales, plus an order barring further use of his invention.

When last we checked in (June 2009) the court had dealt Microsoft a blow by accepting the Special Master’s construction of “video game communication circuit” to mean “a circuit operatively associated with a local video game and at least one remote video game without limitation as to the circuit's physical location or attachment to the local video game.” Microsoft objected to the master’s recommendations as too broad, but the court granted plaintiffs’ motion to adopt the recommendation anyway.

Ultimately the judge ruled that Hochstein’s patent only covered "game systems that are electrically connected" and that such a connection doesn’t include the type of link among players used by the Xbox. The issue of whether Microsoft infringed Hochstein’s patent turned on the definition of “electrically connected” and whether Hochstein’s use of this term in his patent application included the phenomenon of electromagnetic induction—the technology used in the Xbox.

In the Special Master’s report of June 2009 he recommended that “electromagnetic induction” be excluded from the scope of “electrically connected” but reversed in his December 2009 report to conclude that the term “electrically connected,” as used in the ‘125 patent did include the phenomenon of “electromagnetic induction” after all.

The court rejected these conclusions in a detailed analysis, ruling:

1) that the Special Master erred in considering extrinsic evidence in making this decision;
2) because in this case the ordinary meaning of term could be deduced using the intrinsic evidence contained in the patent application itself absolving the need to look elsewhere, and;
3) that the term “electrically connected” as contemplated by the 125 patent did not include the phenomenon of electromagnetic induction, rather it is only used to describe connections by means of electrically conductive wires.

The court also considered whether Microsoft’s litigation conduct—namely the fact that they hadn’t raised the non-infringement defense several years earlier—was properly determined by the Special Master to be an admission by Microsoft that they too believed that “electrically connected” encompassed electromagnetic induction. The court determined that patent cases are unlike contracts cases where “silence is acceptance.” Rather silence in this regard could not be considered as evidence and Microsoft’s failure to present the non-infringement defense earlier could not count as proper extrinsic evidence against its case.




Original Post:

On June 22, 2009, the day before trial began, the judge in this patent infringement case made a key decision by opting to use the special master’s construction of a disputed claim.


In 1991, Peter Hochstein and Jeffrey Tenenbaum came up with the idea of communicating live while playing the same video game in separate locations. They patented the technology for doing so in 1994. In 2002, Microsoft released Xbox Live, a gaming service that also allows users to communicate while playing the same game. Sony also released similar capabilities for PlayStation 2. In 2004, Hochstein, Tenenbaum and Harold Milton, Jr. (an assignee of the patent) brought a patent infringement suit against Microsoft and Sony alleging that the voice and data communications technology used in the gaming systems infringed on the patent claims. For relief they sought a permanent injunction and treble damages. Sony settled its suit in April 2009, leaving Microsoft as the only remaining defendant.

While U.S. Patent No. RE36,574 is also asserted, the primary patent at issue is U.S. Patent No. 5,292,125, which is for an “apparatus and method for electrically connecting remotely located video games.” See representative claim 1:





1. A video game communication assembly (100) for communicating command signals between a local video game (28) having at least two player ports (A, B), at least one set of player controls (20), and at least two operating modes, and at least one remote video game (30) through a medium (110) capable of transmitting a plurality of data signals and voice signals, said assembly (100) comprising:



control means (106) for controlling command signals received from a set of player controls (20) of the local video game (28) and for creating communication signals;



modem means (114) for bilaterally transmitting said communication signals between said control means (106) and at least one remote video game (30);



first port means (112) for bilaterally transmitting said communication signals between said control means (106) and said modem means (114), said assembly (100) characterized by



said control means (106) including transit time means (126) for determining the amount of time required for said communication signals to travel between said first port means (112) and the remote video game (30).



After years of discovery, last fall Microsoft alerted the court that some claims still needed to be construed before trial began. Microsoft submitted its motion for construction of claim 39 in February 2009. See claim 39:





39. A video game communications circuit for communicating command signals between a local video game having at least two player ports (A, B), at least one set of player controls (20), and at least one remote video game (30) in a medium capable of transmitting plurality of data signals and voice signals, said circuit comprising:



a first microprocessor (140) electrically connected to one set of player controls (20), two player ports (A, B) and an oscillating circuit (Y1, C2, C3, R2);



two player port logic circuits (108, 124) electrically connected between said first microprocessor (140) and the two player ports (A, B);



a switch (150) connected to said first microprocessor (140) having at least two positions;



a modem circuit (114) electrically connected to said first microprocessor (140) for bilaterally transmitting communication signals to and from said first microprocessor (140);



a voice over data circuit (134) for filtering voice signals from communication signals and for transmitting both to said modem circuit (114); and



communication couplers (L1, L2) for connecting said voice over data circuit (134) to the medium of communication.



Microsoft wanted the claim to be construed to mean that the “video game communications circuit” and its associated components were separate and distinct from the video game computer to which the circuit is attached.



Microsoft argued that a distinction between the claimed apparatus and its video game computer was expressly reflected in claim 39, which asserts that the video game communications circuit is not the local video game, but instead, a separate circuit that connects to the local video game. ‘Plaintiffs want to collapse this distinction and ignore the claim's clear direction as to where particular components must be located — i.e., in a separate apparatus, and not in the video game computer itself,’ Microsoft argued in its motion.



In May, the special master to whom the matter was referred issued his report and recommendations, denying Microsoft's proposed limiting construction. Instead, he construed “video game communication circuit” to mean “a circuit operatively associated with a local video game and at least one remote video game without limitation as to such circuit's physical location or attachment to the local video game.” Microsoft objected to the master’s recommendations, but the court granted plaintiffs’ motion to adopt the recommendation anyway, dealing Microsoft a blow right before trial.



Read the court's claim construction order here.

A couple side notes:

This is the same case where Microsoft got in trouble for wasting the court’s time by filing an objection to discovery because of a typo Hochstein made in the discovery request. In February 2009, Hochstein deposed a Microsoft employee, Ms. Mason, about Xbox marketing and then filed a formal request for all marketing documents related to Xbox “including but not limited to all such documents identified by Ms. Mason at her February 12, 2008 [sic] deposition.” Microsoft responded five weeks later with general objections, including “Microsoft objects to this request as vague in that Ms. Mason’s deposition took place in 2009, not in 2008.” Over the next week, Microsoft proceeded to provide over 140,000 documents to Hochstein without any index.

The court, upset by Microsoft playing dumb in its written response, said the frivolous objection to an obvious, harmless typo was a waste of time for all the parties involved. The court issued a separate order directing Microsoft to explain why its counsel shouldn’t be sanctioned “for unreasonably and vexatiously multiplying the proceedings.”

Microsoft’s five week delay and “document dump” less than two months before trial also annoyed the court. The court ordered Microsoft to provide an index of the marketing documents within one week and barred Microsoft from introducing the marketing documents against Hochstein or contesting the admissibility of the marketing documents at trial.

Read the court’s discovery order here.

Also, in January 2009, Hochstein filed an almost identical suit as the one discussed here (dubbed Hochstein I), again brought against Microsoft and Sony. According to the complaint, during a Hochstein I pretrial conference in January 2008, the parties discussed whether the defendants’ new game consoles (Xbox 360 and PlayStation 3) should be litigated in Hochstein I or a separate lawsuit. Hochstein filed this complaint to adjudicate the possible infringement of the new products separately.

Read the Hochman II complaint here.

Forterra Systems, Inc. v. Avatar Factory
case 5:05-cv-04472-PVT, N.D. Cal


Case Update:


Following a confidential settlement by the parties, this case was dismissed with prejudice on January 17, 2008.



Original Post:


Forterra Systems, Inc. on November 3, 2005, filed a patent infringement lawsuit against the Avatar Factory for infringement of U.S. Patent No. 6,784,901, entitled "Method, System and Computer Program Product for the Delivery of a Chat Message in a 3D Multi-User Environment." Claim 1 of the '901 patent reads as follows:

1. A system for delivering a message between a sender and a recipient in a three-dimensional multi-user environment, wherein said three-dimensional multi-user environment maintains respective digital representations of the sender and the recipient, comprising:
a sender interface; and
a recipient interface, including a recipient viewport;
wherein said recipient interface receives the message from said sender interface, maps the message to a texture to generate a textured message, and renders said textured message at locations along a path in the three-dimensional multi-user environment, whereby the recipient can visually ascertain at least portions of the path of the textured message through said recipient viewport.

The lawsuit was filed in the Northern District of California, and is docketed as case no. 5:05-cv-04472-PVT. We will add this case to our tracking list and update of any significant developments.

Case Update:

This case is now closed. On March 7, 2007, plaintiff Interlink filed a voluntary dismissal of the case under FRCP 41(a) 1. Specifically this allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Nintendo had not responded to Interlink’s suit with any court filings before Interlink filed the voluntary dismissal.


Original Post:

In today's economy, it is inevitable that any successful product will result in the filing of at least one lawsuit for patent infringement. Nintendo similarly appears to have its first lawsuit based on the Wii. Interlink Electronics, Inc., owner of U.S. Patent. No. 6,850,221, filed a lawsuit against Nintendo on December 4, 2006, in the United States District Court for the District of Delaware. The lawsuit alleges patent infringement based on Nintendo's Wii controller.

The '221 patent is entitled TRIGGER OPERATED ELECTRONIC DEVICE. We will keep you posted as we learn more regarding this lawsuit. All claims of the '221 patent are reproduced below for your own analysis and reading pleasure:

1. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between a first finger and a thumb of a user's hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the first finger of the user's hand; an electronic circuit mounted on a board contained within the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board, the first switch being responsive to pressure selectively to open and close the electronic circuit such that the electronic circuit generates a first output signal upon operation of the first switch, the electronic circuit further including a second switch on the second side of the board, the second switch being responsive to pressure selectively to open and close the electronic circuit upon operation of the second switch; a first control element mounted with the housing at the first face of the contoured step and operatively connected to the first switch to be responsive to finger pressure such that pressure applied to the first control element causes the first control element to operate the first switch; a second control element mounted with the housing at the top face and operatively connected to the second switch to be responsive to thumb pressure such that pressure applied to the second control element causes the second control element to operate the second switch; and an output signal emitter responsive to an output signal from the electronic circuit to wirelessly emit the output signal for reception by the electronically responsive system.

2. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between an index finger and a thumb of a user's hand, the housing having a generally, straight elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the index finger of the user's hand; an electronic circuit mounted on a board affixable to the housing within the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board, the first switch being responsive to movement of the user's index finger selectively to open and close the electronic circuit such that the electronic circuit generates a first output signal upon operation of the first switch, and a second switch responsive to movement of the user's thumb selectively to open and close the electronic circuit such that the electronic circuit generates a second output signal upon operation of the second switch, the electronic circuit further including a second switch on the second side of the board, the second switch being responsive to pressure selectively to open and close the electronic circuit upon operation of the second switch; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to pressure applied by the user's index finger to operate the first switch; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to pressure applied by the user's thumb to operate the second switch; and an output signal emitter affixable to the housing and responsive to output signals provided by the electronic circuit to wirelessly emit the output signals for reception by the electronically responsive system.

3. A pointing device as in claim 2, wherein the second switch is a transducer responsive element.

4. A pointing device as in claim 2, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

5. A pointing device as in claim 2, wherein the output signal emitter is positioned to transmit in a direction generally along the longitudinal axis from the forward end the output signals provided by the electronic circuit.

6. A portable, trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between a finger and a thumb of a user's hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the finger of the user's hand; an electronic circuit mounted on a board affixable to the housing, the board having first and second opposed sides, the electronic circuit including a first switch on the first side of the board and a second switch on the second side of the board; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to movement of the user's finger to operate the first switch and thereby cause the electronic circuit to provide a corresponding first output signal; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to movement of the user's thumb to operate the second switch and thereby cause the electronic circuit to provide a corresponding second output signal; and an output signal emitter affixable to the housing and responsive to output signals provided by the electronic circuit to wirelessly emit the output signals for reception by the electronically responsive system.

7. A pointing device as in claim 6, wherein the first switch is a mechanical switch and the first control element is operative to respond to pressure applied by the user's finger to operate the first mechanical switch.

8. A pointing device as in claim 6, wherein the second switch is a transducer responsive element and the second control element is operative to respond to movement of the user's thumb to cause a change in a condition of the transducer responsive element.

9. A pointing device as in claim 6, wherein the first switch is a transducer responsive element and the first control element is operative to respond to movement of the user's finger to cause a change in a condition of the transducer responsive element.

10. A trigger operated pointing device for use with an electronically responsive system, the pointing device comprising: a housing for location at least partly between an index finger and a thumb of a user's hand, the housing having a generally straight, elongated profile defining a longitudinal axis and having a forward end, a rear end, opposed sides, a top face, and a bottom face, the bottom face including a contoured step positioned medially of the forward and rear ends and transversely of the opposed sides, the contoured step having a first face for generally providing a rest location for the index finger of the user's hand; at least one electronic circuit mounted on a board affixable to the housing, the board having first and second opposed sides, the at least one electronic circuit including a first switch mounted on the first side of the board, the first switch being responsive to movement of the user's finger selectively to open and close the at least one electronic circuit and thereby generate a first output signal, and the at least one electronic circuit further including a second switch mounted on the second side of the board, the second switch being responsive to movement of the user's thumb selectively to open and close the at least one electronic circuit and thereby generate a second output signal; a first control element affixable to the housing at the first face of the contoured step and provided in communication with the first switch, the first control element operative to respond to movement of the user's finger to operate the first switch; a second control element affixable to the housing at the top face and provided in communication with the second switch, the second control element operative to respond to movement of the user's thumb to operate the second switch; and an output signal emitter affixable to the housing and responsive to output signals provided by the at least one electronic circuit, wherein the output signal emitter is positioned to wirelessly transmit from the forward end a transmitted output signal in a direction generally along the longitudinal axis for receipt by the electronically responsive system.

11. A pointing device as in claim 10, wherein the at least one electronic circuit further includes a third switch mounted on the third side of the board, the third switch being responsive to movement of the user's thumb selectively to open and close the at least one electronic circuit and thereby generate a third output signal; wherein the pointing device further includes a third control element mounted with the housing at the top face and operatively connected to the third switch to be responsive to thumb pressure such that pressure applied to the third control element causes the third control element to operate the third switch.

12. A pointing device as in claim 1, wherein the second switch is a transducer responsive element and the second control element is operative to respond to movement of the user's thumb to cause a change in a condition of the transducer responsive element.

13. A pointing device as in claim 1, wherein the electronic circuit further includes a third switch responsive to pressure selectively to open and close the electronic circuit such that the electronic circuit generates a third output signal upon operation of the third switch; wherein the pointing device further includes a third control element mounted with the housing at the top face and operatively connected to the third switch to be responsive to thumb pressure such that pressure applied to the third control element causes the third control element to operate the third switch.

14. A pointing device as in claim 1, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

15. A pointing device as in claim 1, wherein the output signal emitter is positioned to transmit from the forward end a transmitted output signal in a direction generally along the longitudinal axis.

16. A pointing device as in claim 6, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

17. A pointing device as in claim 10, wherein the first control element is located in a position to act as a trigger movable under pressure at least partly towards the rear end, such movement acting to operate the first switch, and the first switch being a mechanical element.

18. A pointing device as in claim 17, wherein the second switch is a mechanical switch and the first control element is operative to respond to pressure applied by the user's finger to operate the second mechanical switch.
Freedom Wave LLC v. Mad Catz Inc. et al., CV 2:05-cv-02954 (C.D. Cal. 2005)

Technology at issue: Wireless game controllers

Case Update:

This case is now closed. In July of 2005 the case was ordered by the court to a private mediator based upon a stipulation of the parties. On February 8, 2006, Mad Catz filed a joint settlement report, and on March 3, 2006, the action was dismissed without prejudice.


Original Post:

Freedom Wave LLC, apparent owner of at least six patents directed to various technologies for wireless game controllers, has sued Mad Catz Inc., Nyko Technologies Inc., and Logitech Inc. for patent infringement. The specific patents at issue are:
U.S. Pat. No. 6,280,327 - Wireless Game Control Units
U.S. Pat. No. 6,878,066 - Wireless Game Control Units

In its complaint filed April 21, 2005, Freedom Wave LLC alleges that Mad Catz et al. infringe the above patents by "making, using, selling, and offering for sale, products embodying the patented invention including, but not limited to, wireless game controllers that feature vibration." Complaint at 3-4 (emphasis added). In addition to the above-named patents, Freedom Wave LLC also owns the following patents, which were not asserted in the April 21, 2005, complaint:
U.S. Pat. No. 6,585,596 - Wireless Game Control Units
U.S. Pat. No. 6,659,871 - Wireless Game Control Units
U.S. Pat. No. 6,719,633 - Wireless Game Control Units
U.S. Pat. No. 6,743,101 - Wireless Game Control Units

The Patent Arcade will continue to monitor this case on a regular basis and provide new information as it becomes available.
MP Games LLC et al. v. Shuffle Master, Inc.
Case 2:05-cv-01017 (W.D.Wash., filed 6/6/05)


Case Update:


Pursuant to an agreement between the parties this case was dismissed with prejudice on October 10, 2006.


Original Post:



MP Games, Alliance Gaming, and Ballys Gaming have sued Shuffle Master for a misappropriation of trade secrets, breach of contract, and patent infringement. The patent at issue is U.S. Pat. No. 6,460,848. The reason we're tracking this case is because the patent is directed to software algorithms used by a card reader in the discard rack to determine which cards have been dealt and played in a casino game, based on a bar code of sorts. While not strictly a video game, the software aspect of this case presents an interesting twist in conventional "gaming."

Figures 5-6 of the '848 patent are reproduced below:


The Abstract of the '848 patent reads as follows:
"A system automatically monitors playing and wagering of a game, including the gaming habits of players and the performance of employees. A card deck reader automatically reads a symbol from each card in a deck of cards before a first one of the cards is removed. The symbol identifies a respective rank and suit of the card. A chip tray reader automatically images the contents of a chip tray, to periodically determine the number and value of chips in the chip tray, and to compare the change in contents of the chip tray to the outcome of game play for verifying that the proper amounts have been paid out and collected. A table monitor automatically images the activity occurring at a gaming table. Periodic comparison of the images identify wagering, as well as the appearance, removal and position of cards and other game objects on the gaming table. A drop box automatically verifies an amount and authenticity of a deposit and reconciles the deposit with a change in the contents of the chip tray. The drop box employs a variety of lighting and resolutions to image selected portions of the deposited item. The system detects prohibited playing and wagering patterns, and determines the win/loss percentage of the players and the dealer, as well as a number of other statistically relevant measures. The measurements provide automated security and real-time accounting. The measurements also provide a basis for automatically allocating complimentary player benefits."

Claim 1 of the '848 patent reads as follows:
"1. A card deck reader, comprising:
a housing having a cradle sized to receive a plurality of playing cards; and
a reading head positioned in the housing to read a respective symbol on each of the playing cards before a first one of the plurality playing cards is manually removed from the housing."

We'll monitor the case and keep you apprised of further developments.

The Learning Company v. Zynga Inc.
United States District court for the District of Massachusetts
Case No. 11-cv-10894, Filed June 07, 2011

The Learning Company (TLC), creators of the popular computer game “Oregon Trail” filed a motion in Massachusetts federal court on Tuesday to stop Zynga Game Network Inc. from using the phrase “Oregon Trail” in its similar “FrontierVille” game. TLC has asked the court to 1) issue an order requiring Zynga to remove all references to “Oregon Trail” in its FrontierVille game, and 2) mandate that Zynga shall not use the phrase “Oregon Trail” within its FrontierVille game until a final resolution of the issue.

Zynga makes games designed to be played on Facebook. TLC’s game, “The Oregon Trail” is a popular educational game used in classrooms across the country that simulates the life and experiences of Pioneers heading west. According to TLC, Zynga’s new model FrontierVille game, called “FrontierVille’s Oregon Trail,” is a deliberate appropriation of the look and style of its own game. The initial trademark lawsuit filed on May 18, 2011, alleges that Zynga’s use of the “Oregon Trail” name is likely to confuse consumers into believing that TLC is affiliated with Zynga. “The Oregon Trail” was originally developed in 1971 and TLC’s suit reports that 65 million people have played the game since its release and 60% of elementary school teachers have reported using the game to teach about the pioneer period. TLC believes Zynga’s appropriation of “Oregon Trail” will cause irreparable harm to its goodwill.

After the filing of the initial suit Zynga indicated in court documents and in attorney correspondence that it would voluntarily remove all references to “Oregon Trail” from FrontierVille. However, it has not yet done so, and in a declaration filed last week Zynga’s general manager for FrontierVille asserted that the newest version of the game was based on American history, not TLC’s game. The latest motion for a court order mandating that Zynga remove all references and stop any use of “Oregon Trail” follows this declaration and much back and forth between attorneys for both parties.

In an exhibit filed with the court, attorneys for Zynga dispute the need for this injunction since Zynga is no longer “launching a new game, new feature, new element or new storyline bearing the name Oregon Trail or FrontierVille's Oregon Trail.” Despite these assurances, TLC remains uncomfortable with Zynga’s continued use of the “Oregon Trail” mark “in connection with the
pre-launch marketing of its [Zynga’s] game extension, as well as in connection with the trail missions that are already offered.” TLC also believes that even if Zynga removes “Oregon Trail” from within FrontierVille “it might still make enough use of the mark to cause The Learning Company to be less than satisfied with the resolution.” TLC also makes mention that in light of their uncertainty regarding Zynga’s plans for the future of FrontierVille Oregon Trail, this injunction is the security they seek prior to negotiating any resolution.

While Oregon Trail may be a computer game, it was first a 2,000 mile long east-west wagon route connecting the Missouri River to valleys in Oregon and points in-between. On the one hand, TLC has invested considerable time, effort, and money into its game. On the other hand, Zynga is referencing history. This will be an interesting case to watch, to see if one rights holder can block someone else from using a historically significant reference.

Read more at Law360.
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