Wireless Accessory Retaining, LLC v. GameStop Corp.
No. 2:17-CV-167-RWS (N.D. Ga. Aug. 9, 2017)

Fresh on the heels of Gamevice’s lawsuit against Nintendo, which we discussed in a previous post, Wireless Accessory Retaining, LLC has filed suit against video game retailer GameStop for selling the Nintendo Switch, which Wireless Accessory Retaining alleges infringes U.S. Patent No. 8,472,658 to Singh (the “’658 Patent”).

The ’658 Patent generally relates to a way to power wireless accessories using a “retainer port” defining an “accessory retaining structure” with a “cavity for retaining said retainable wireless accessory . . . by inserting said conductive member of said retainable wireless accessory within said cavity, wherein said conductive member of said retainable wireless accessory to enable flow of charge such that the retainable wireless accessory can function by wirelessly communicating with the hand-held.  Wireless Accessory Retaining alleges that the Nintendo Switch Joy-Cons, which may be powered by the Nintendo Switch tablet through a retaining structure, infringe this patent.  The images below capture part of the infringement theory set out in the complaint.

We’re unsure why Wireless Accessory Retaining sued GameStop but not Nintendo at this time.  Based on the filed complaint and in USPTO assignment records, Wireless Accessory Retaining is headquartered at a residence in Georgia and is the assignee of a plurality of patents by the same inventor, Dr. Sanjeev Kumar Singh.  And, based on public sources, this appears to be Wireless Accessory Retaining’s first lawsuit.  One possible reason Gamestop was sued instead of Nintendo may be to secure Wireless Accessory Retaining's (apparently) preferred venue of Georgia in view of recent venue law changes, as it seems likely Nintendo will want to step in to protect their vendor.

Thanks to Kirk Sigmon for his help in preparing this article.
Gamevice, Inc. v. Nintendo Co.
No. 2:17-CV-05923 (C.D. Cal. Aug. 9, 2017)

On August 9, 2017, Gamevice – perhaps best known for the Wikipad and slide- and snap-on cell phone controllers for Android and iOS – sued Nintendo in the Central District of California, alleging that the Nintendo Switch violates U.S. Pat. No. 9,126,119 B2 to Joynes et al (“the ’119 Patent”).

The ’119 Patent relates to a game controller, including a computing device (e.g. a tablet) which is attached to an input device with two sides (e.g. a left portion of a controller and a right portion of a controller), a “structural bridge” (e.g. something to hold the back of the tablet), a conduit, and a fastening mechanism (e.g. structure to connect it all together).  The Wikipad, for example, features a tablet which slides into a U-shaped controller featuring two analog sticks, a directional pad, buttons, and a speaker bar.  A figure from the ’119 Patent depicting a Wikipad-like device is shown above.

Interestingly, whereas the Wikipad product had a “structural bridge” comprising, for example, the above-pictured bottom speaker bar and back supporting mechanism, the Nintendo Switch does not have a bottom speaker bar or the like.  Rather, the Nintendo Switch’s Joy-Con controllers independently slide onto the left and right sides of the Nintendo Switch tablet.  Gamevice argues that a portion of the Nintendo Switch tablet itself is the “structural bridge”:
Given the Nintendo Switch’s explosive popularity, this may a particularly exciting case to watch. 

Thanks to Kirk Sigmon for preparing this article.


On Monday, June 19, 2017, the Supreme Court held in Matal v. Tam[i] that the disparagement clause of the Lanham Act violates the Free Speech Clause of the First Amendment, and therefore is unconstitutional. The disparagement clause—which prohibits federal registration of trademarks “that may ‘disparage or bring into contempt or disrepute’ any ‘persons, living or dead’”—the Court explained, “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” [ii]
The Supreme Court’s opinion is the climax in Simon Tam’s long-running battle to obtain a trademark registration for his dance-rock band’s name, THE SLANTS. Tam first submitted a trademark application in 2010, but the U.S. Patent and Trademark Office refused the application for being “disparaging to people of Asian descent.” Tam lost on appeal at the Trademark Trial and Appeal Board, as well as at a panel of the U.S. Court of Appeals for the Federal Circuit. His fortunes changed, however, when the Federal Circuit later issued a 9–3 en banc opinion holding that Section 2(a) of the Lanham Act—the provision under which Tam’s application was rejected—was unconstitutional. The Supreme Court eventually granted certiorari, and heard oral arguments in January 2017, which Banner & Witcoff analyzed at the time.
The Court’s decision is a decisive victory for Tam. All eight justices[iii] considering the case agreed that the Lanham Act’s disparagement clause is facially invalid under the First Amendment.[iv] Because the Lanham Act’s disparagement clause is unconstitutional, the USPTO’s refusal of Tam’s application based on that section was also impermissible.
All the justices agreed[v] that offensive speech is protected by the First Amendment, even in the trademark context. For example, Justice Alito’s opinion explained that the Supreme Court has “said time and time again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’”[vi] Additionally, Justice Kennedy wrote that “the Court’s cases have long prohibited the government from justifying a First Amendment burden by pointing to the offensiveness of the speech to be suppressed.”[vii] The danger of allowing the government to restrict offensive speech, Justice Kennedy explained, is that “[a] law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.”[viii]
The justices also all agreed that “trademarks are private, not government, speech.”[ix] The USPTO had argued that registered trademarks are government speech, which the First Amendment does not regulate. The Court rejected the idea, saying “it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”[x] Many registered trademarks say “unseemly things,” “express[] contradictory views,” “unashamedly endors[e] a vast array of commercial products and services,” and “provid[e] Delphic advice to the consuming public.”[xi] “And there is no evidence that the public associates the contents of trademarks with the Federal Government.”[xii]
The Court noted the “most worrisome implication” of the idea that trademarks constitute government speech “concerns the system of copyright registration”[xiii]; this was also the subject of the justices’ first question at oral argument.[xiv] In its opinion, the Court asked, “If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?” Acknowledging that “trademarks often have expressive content,” and that “powerful messages can sometimes be conveyed in just a few words,” the Court rejected the USPTO’s attempts to distinguish copyright as being “the engine of free expression.”[xv]
Ultimately, Justice Kennedy explained, the Court’s objective is to protect “a diversity of views from private speakers.”[xvi] And “our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”[xvii]
Despite the parade of horribles prophesied by Tam’s opponents, the Court’s decision is unlikely to have a significant impact—or even be noticeable—in the lives of most Americans. As the Court stated, “it is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.”[xviii] Thus, when businesses select names for themselves or their products or services, they are generally more focused on the marketing power of those names, not whether those names might ultimately be eligible for trademark protection. Those who seek to offend—or, like Tam, “reclaim[] an offensive term for [a] positive purpose”[xix]—are similarly unlikely to choose their message based on federal-trademark-registration eligibility.
The most famous exception to this argument is the Washington Redskins football team. The team’s trademark registration was cancelled in 2014 under the disparagement clause of Section 2(a) of the Lanham Act. The team’s appeal is currently before the U.S. Court of Appeals for the Fourth Circuit, which placed the case in abeyance in November 2016, pending the Supreme Court’s decision in Tam. Because the Supreme Court’s holding invalidated Section 2(a)’s disparagement clause altogether, the team is likely to prevail in its appeal.
Modern society provides many tools, such as social media, for opposition to those who wish to brand themselves with offensive terms. Yet the government may not join in that opposition, at least not by regulating trademarks or most other private speech. “[T]he proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”[xx]
The Court’s full opinion is available here.
A printable version of this article is available here.

[i] Matal v. Tam, No. 15-1293 (Jun. 19, 2017).
[ii] Id., slip op. at 1-2.
[iii] Justice Gorsuch took no part in the consideration or decision of this case.
[iv] Matal at 1.
[v] All the justices joined the Opinion of the Court authored by Justice Alito. Chief Justice Roberts and Justices Thomas and Breyer joined a further opinion by Justice Alito. Justice Kennedy authored a concurrence joined by Justices Ginsburg, Sotomayor, and Kagan. Justice Thomas also authored a concurrence.
[vi] Matal at 22-23.
[vii] Matal at 4 (Kennedy, J.).
[viii] Id. at 8.
[ix] Matal at 18.
[x] Id. at 14-15.
[xi] Id. at 15.
[xii] Id. at 17.
[xiii] Id. at 18.
[xiv] See R. Gregory Israelsen, IP Alert: The Slants Perform at the Supreme Court, Banner & Witcoff (Jan. 20, 2017),
[xv] Matal at 18.
[xvi] Matal at 7 (Kennedy, J.).
[xvii] Id. at 8.
[xviii] Matal at 15.
[xix] Matal at 4 (Kennedy, J.).
[xx] Matal at 25 (Alito, J.).
BREAKING NEWS: Lanham Act Held Partially Unconstitutional

Today the United States Supreme Court held that the disparagement clause of the U.S. Trademark Act (also known as the Lanham Act) is unconstitutional.  In Matal v. Tam (formerly Lee v. Tam, but Michelle Lee recently resigned as Director of the USPTO and was replaced with Acting Director Joseph Matal), the Court affirmed the Federal Circuit's previous finding that the disparagement clause was unconstitutional.

The Government's primary argument was that Federal trademark registrations somehow constitute government speech, and the government therefore should not be required to grant marks that are disparaging.  However, the Court quickly dispatched this notion, stating:
...It is [] farfetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.
The immediate effect of the ruling is that Simon Tam will be allowed to register the mark THE SLANTS for his rock band, The Slants.  The secondary effect of the ruling is that the Washington Redskins will likely be allowed to keep its REDSKINS trademarks.  I doubt there will be a flood of new registrations for disparaging marks because, quite frankly, those products just won't sell well to the consuming public, and the market will ultimately decide which marks and how often companies pursue a registration for something that may be construed as disparaging.

The case is Joseph Matal, Interim Director, United States Patent and Trademark Office v. Simon Shiao Tam, Case No. 15-1293, June 19, 2017.

More analysis forthcoming.  Stay tuned...
 Digital Reg of Texas, LLC v. Adobe Systems Incorporated et al.
U.S. District Court, Northern District of California
Case No. 3:12-cv-01971-NC, Filed April 20, 2012

As reported previously, Digital Reg of Texas LLC sued Valve Corporation, Adobe Systems Inc., Electronic Arts, Inc., Symantec Corporation, AVG Technologies USA, Zynga Inc., Zynga Game Network Inc., Valve Corporation, Ubisoft Entertainment, Inc. and Intuit Inc. for infringement of one or more of seven patents related to digital rights management. The suit, which echoes a similar suit Digital Reg settled in 2009, claimed among other things that software such as EA’s Download Manager and Adobe’s Digital Publishing Suite had infringed its patents.

Digital Reg alleged the defendants all sold products which included digital rights management product restrictions that infringed Digital Reg’s patents. For example, EA uses the Download Manager to allow games that are purchased online to download directly to a computer.

The case progressed normally.  There were initially some discovery disputes between Digital Reg and EA. Digital Reg was seeking royalties for the infringed patents, and requested EA's financial information regarding their Origin platform for distributing online games. EA maintained that Origin is a free-to-use platform, and because EA's computer games were not allegedly infringing, the financial information regarding Origin would have only marginal relevance.

On June 10, 2014, the Court granted a summary judgment motion in part which was brought jointly by Adobe, Symantec, and Ubisoft jointly regarding non-infringement of patents.

The case subsequently proceeded to trial.  On December 22, 2014, the court found in favor of Adobe on Digital Reg's claims for infringement, after a jury verdict on September 8, 2014. The jury verdict found that Digital Reg’s patents were invalid as obvious. Any remaining claims against Adobe were dismissed with prejudice. Judgment was also entered in favor of Ubisoft on Digital Reg's claims for infringement. Any remaining claims against Ubisoft were dismissed with prejudice as well.

This judgment disposed of all claims before the Court, and the claims against all other Defendants which were previously dismissed. This included Docket Nos. 309 (Zynga Game Network Inc. and Zynga, Inc.), 319 (AVG Technologies USA, Inc.), 346 (Intuit Inc.), 387 (Valve), 460 (EA), and 582 (Symantec). This was a final, appealable judgment. On April 8, 2016, the judgment in favor of Adobe was affirmed.

There are a number of implications stemming from the outcome of this case. Adobe celebrated the outcome as a big win, as did members of the tech community who have been advocating for patent reform. Patent reform advocates argue for a reduction in the number of software patents as well as limiting the amount of patent protection currently in place. Adobe argued that Digital Reg was going after money-making companies seeking to profit after failing to find success with its patents. Whichever side you take, this case pushes in the direction of reform for the IP community.

Additional research by: Rachel Johns

From Law360:

The U.S. Supreme Court on Monday put tighter restrictions on where patent owners can file infringement lawsuits, a decision that upends nearly 30 years of established practice and will likely force many lawsuits out of the patent litigation hotbed of the Eastern District of Texas.
In an 8-0 decision, the Supreme Court reversed a Federal Circuit rule that effectively allowed a patent holder to file suit anywhere a defendant makes sales, which critics complained has fueled a plague of forum shopping and a concentration of cases in a few jurisdictions.
Ruling in favor of liquid sweetener maker TC Heartland LLC, the justices reinstated a more restrictive standard from a 1957 Supreme Court decision, saying it remained good law.

“We therefore hold that a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute,” the court wrote.

Innkeepers, shopkeepers, and others in the E.D. Texas that rely on patent lawsuits for a disproportionately large part of their economy are likely slack-jawed right now, for good reason.  Their sleepy little town is about to become just that... a sleepier little town.
Read more at Law360 here.

The case is TC Heartland LLC v. Kraft Food Brands Group LLC, case number 16-341, in the Supreme Court of the United States.
We previously reported on White Kunckle's assertion of U.S. Pat. No. 8,540,575 against EA.  Last year, EA secured a win against the patent under 35 USC 101 when the District of Utah found the claims were directed to ineligible subject matter.  That decision was appealed to the Federal Circuit, who affirmed the holding on April 6, 2017.  (Fed. Cir., Case no. 2016-2286).

EA also had an inter partes review pending against the '575 patent.  In view of the Federal Circuit's decision, White Knuckle informed the USPTO that they disclaimed every claim of the patent.  As a result, the USPTO terminated the IPR proceedings on May 12.  (IPR2016-00634).

Ineligible subject matter remains one of the most frequent attacks on patent validity.  The lines have become more clear since Alice v CLS Bank in 2014, but it is still very difficult to predict whether any particular patent claim directed to software features will survive.  White Knuckle's '575 patent did not.
Wow.  You've likely read the news today about Google suing Uber.  No?  Here's a good summary at The Verge.  Here's the post on Medium.  From the post on Medium:

We found that six weeks before his resignation this former employee, Anthony Levandowski, downloaded over 14,000 highly confidential and proprietary design files for Waymo’s various hardware systems, including designs of Waymo’s LiDAR and circuit board. To gain access to Waymo’s design server, Mr. Levandowski searched for and installed specialized software onto his company-issued laptop. Once inside, he downloaded 9.7 GB of Waymo’s highly confidential files and trade secrets, including blueprints, design files and testing documentation. Then he connected an external drive to the laptop. Mr. Levandowski then wiped and reformatted the laptop in an attempt to erase forensic fingerprints.

If these allegations are true, Uber is in for a heap of pain, which it does not need right now in the wake of the other scandals its dealing with (i.e., sexual harassment, #deleteUber campaign).

The moral of the story:

The allegations in the complaint, believe it or not, probably happen more often than you think.  As noted in the article, it was only happenstance (read: dumb luck) that Google was alerted to the alleged theft of trade secrets.  This situation is why document management systems are critical to enterprise security, including video game developers.  Can someone walk out with your code without any record or trace?  If so, you need to rethink your document repository solution.  A secure document repository (E.g., iManage is one good example) has become critical to enterprise security to track who is accessing, editing, printing, using, copying, or even exporting each and every file your company has.  If you don't have one... get one.
It's that time of year again. (as part of Banner & Witcoff) is looking for a summer Research Intern.  Full or part-time.

Hiring criteria are simple.  Qualified candidates:

  • Must be enrolled in an accredited US law school.
  • Must have an interest in video game and IP law.
  • Must not be eligible to take the patent bar (this is a requirement of our firm, for various reasons, which I am happy to explain if anyone has questions about it).
The incumbent's responsibilities will include:
  • Researching and updating our database of video game patents
  • Researching and updating our database of video game IP lawsuits
  • Staying abreast of recent developments in IP/video game law, and writing content for publication on the blog.
Preference is for someone local in the Washington, DC, area, but we have accommodated remote interns in the past for the right fit.

Banner & Witcoff is also developing content for other blogs and microsites, so there may be opportunities to contribute to those as well.

If interested, please submit Resume, Writing Sample, and all college/law level Transcripts through our online recruiting portal here.

If the above link isn't working, go to or copy and paste the following direct link into your browser:
I've been preaching this for years.  We need people to go into computer science and electrical engineering.  Here's more proof.

Calling all computer science majors: jobs are waiting for you.
From the Smithsonian Institution:

From: SI Email Announcements
Sent: Monday, February 13, 2017 11:01 AM
Subject: Calling All Teens!

Calling all teens who are museum-lovers, performers, gamers, designers and adventurers! The Office of Visitor Services and Smithsonian Institution Archives are teaming up to create a mobile game based on the Castle scheduled to launch summer 2017. We are seeking local teens to help design and facilitate the experience! Please help us spread the word about these new volunteer opportunities for teens!   

There are two ways teens can get involved:

Teen Opportunity #1
We are recruiting teens to participate in a human-centered design workshop to co-develop the mobile game at the Castle. The daylong workshop on March 4, 2017;10:00 A.M. – 4:00 P.M will be held at the Castle. Participants will take part in a behind-the-scenes tour to learn about the history and people of the Castle and develop game prototypes.
Teens must be between the ages of 14-17 and register to participate in the workshop. Lunch will be provided. Register by February 24 by emailing or calling Kristi Delich; (202)
For more information about the workshop, contact Kristi Delich, Office of Visitor Services, (202)

Teen Opportunity #2
We are recruiting teens to help facilitate the mobile game and welcome teens to the Castle this summer. The Castle Teen Volunteer Program is a great opportunity for local teens who have an interest in history, gaming, theater, and story-telling and are looking for a fun summer activity. For more information about the program and to apply click hereApplications are due March 1
For more information about becoming a Castle Teen Volunteer, contact Abbey Earich, Office of Visitor Services, (202)

This program is sponsored by the Smithsonian’s Women Committee. The Smithsonian Women’s Committee celebrates fine American crafts through two signature events: the Smithsonian Craft Show and Craft2Wear. From the funds raised at these shows the Committee awards grants and endowments throughout the Smithsonian.

Banner & Witcoff has an open position for a design patent attorney.  Qualified applicants must hold a a JD from an accredited law school, be admitted to practice (or eligible) in the District of Columbia, hold a USPTO registration number, have significant, substantive experience prosecuting design patents and have experience analyzing design patents for purposes of rendering legal opinions in the course of client counseling.  Ideal candidates are self sufficient at design patent prosecution, comfortable managing large dockets, and work well in team environments.

Pay based on experience.

Send me an email if interested.

In a meeting on Sunday in Orlando, Florida, the IPO Board of Directors adopted a resolution supporting legislation to amend 35 U.S.C. § 101 as follows:

Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.
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