U.S. Patent No. 8,000,581: Advertisement scheme for use with interactive content

Issued August 16, 2011, to Sony Computer
 Entertainment America LLC


For anyone who’s ever been interrupted from playing a game by an advertisement, this patent at least tries to lessen the agony. Patent ‘581 describes a method to suspend gameplay, display an advertisement, and then resume the gameplay. After a game is initiated, the computer program will provide a player with an indication that the game will be suspended. This could include such indications as the game gradually slowing down, a warning indicating that game play is about to stop, or a visual signal such as a blinking light. A similar warning would indicate that the game is about to continue. The patent also describes the possibility of the program rewinding the game to some extent before resuming the gameplay. While advertisements are no one’s favorite thing to see while gaming, patent ‘581 at least allows free-to-play players to enjoy someone’s content without it impairing their ability to get that high score.


A method for use in advertising includes initiating playing of interactive content, suspending playing of the interactive content, displaying an advertisement, and resuming playing of the interactive content. A computer program product includes a medium embodying a computer program for causing a computer to perform these operations, and a system for use in advertising includes a display and a processing system configured to perform these operations.

Illustrative Claims:

1. A method comprising: initiating, through a processor based apparatus, playing of interactive content; suspending, through the processor based apparatus, playing of the interactive content; and displaying a different item of content; wherein the suspending playing of the interactive content comprises synchronizing the suspending playing of the interactive content among a plurality of users interacting with the interactive content.

Research By: Rachel Johns

We’ve previously written with updates about inter partes reviews (“IPRs”), where an accused infringer files a petition with the US Patent and Trademark Office arguing that the asserted patent should’ve never been granted in the first place.

A law passed by Congress in 2011 created, for use starting in 2012, this IPR procedure to allow for the challenge of issued patents. IPRs were designed as a low cost alternative to long, expensive lawsuits with patent owners who hold bad patents. Anyone bothered with a patent can bring an IPR challenge if they meet the standards of the law and regulations, by having a reasonable likelihood of cancelling the patent, acting within deadlines, and paying necessary (and not small!) fees.

The patent owner gets to respond, but the IPR will be decided by highly patent-and-technology-experienced Patent Trial and Appeal Board (“PTAB,” said “Pea-Tab”) administrative patent judges (“APJs”) in 3-judge panels. Once the IPR “petition” is accepted, which usually happens within 6 months, the IPR almost always ends within a year. Some features of IPR favor patent owners, but challengers get first and last briefs in IPR, have the right to use technology experts, get PTAB APJs who decide cases “by the book,” not like juries, and win IPRs at a rate of about 65%, cancelling patents. The procedure is so valued by challengers that they have filed thousands of IPRs, including 1,434 in USPTO fiscal year 2017 alone.

A quick search on Docket Navigator reveals that IPRs have been a popular option for game companies when faced with patent assertions. Since 2013, the top 50 game companies have filed over 250 IPR petitions. Some recognizable names using IPRs as part of their litigation strategy include Sony, Microsoft, Nintendo, Electronic Arts, Activision Blizzard, Valve, Bungie, Ubisoft, and Naughty Dog. Of the IPRs we found that reached a final decision, around 68% had claims of the challenged patent found unpatentable and cancelled. Not a bad success rate for accused infringers!

An interesting statistic close to home at our law firm, Banner & Witcoff, is that its lawyers, paralegals, and staff filed more IPR petitions than any law firm filed in the first half of 2017. We filed 45 IPR petitions for one client in those six months, as well as appearing in about double that number of proceedings when other petitions and appearances on behalf of patent owners as well as patent challengers are counted.

The constitutionality of the IPR process has recently been challenged at the Supreme Court. It remains to be seen whether this popular alternative to litigation will remain a useful option for defendants in patent matters. But what is clear is that IPRs have truly changed the current patent landscape and the dynamics of patent litigation.

We will continue to post updates about interesting IPRs that catch our attention.

Special thanks to Charles Shifley for his help in preparing this post.
Atari Interactive, Inc. v. Nestlé, SA

No. 3:17-CV-04803-SK (N.D. Cal. Aug. 17, 2017)

On August 17, 2017, Atari Interactive sued Nestlé, alleging that a Nestlé KIT KAT® advertisement titled “Kit Kat: Breakout” infringed Atari’s rights relating to the video game BreakoutSpecifically, Atari has sued Nestlé for trademark and copyright infringement, false designation of origin, dilution, and both state and common law unfair competition.

Like many early Atari games, Breakout has a storied history.  Atari founder Nolan Bushnell originally conceptualized Breakout.  As noted by Atari’s Complaint, Steve Jobs and (“[i]n reality”) Steve Wozniak reduced Breakout from 100-175 chips down to 20-30 chips, allowing Breakout to be produced much more cheaply.  Some of the reward money earned by Jobs and Wozniak by improving Breakout was used to form Apple, and many of Wozniak’s innovations from the Breakout circuit board were used in developing the Apple II personal computer.

Nestlé’s “Kit Kat: Breakout” advertisement depicts four adults on a couch holding video game controllers and playing what appears to be a Breakout-style video game on a television in a train station:

Per its complaint, Atari appears particularly worried that Nestlé’s association with various scandals may be falsely imputed to Atari.  This is particularly the case because Atari heavily relies on its brand recognition to expand into new markets.  For example, most recently, Atari has been heavily promoting both a new throwback console as well as Atari-branded “speakerhats” (which are exactly what the name suggests).

Ed. - I checked and it's too late to get into the speakerhats beta.

Thanks to Kirk Sigmon for preparing this post
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.
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