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If you've ever been to Queen Mary's excellent More than Just a Game events, you have probably heard of the new Interactive Entertainment Law Review journal launched by Profs. Dimita, Mimler, and Festinger. This new peer-reviewed journal offers analysis of legal issues arising from interactive entertainment, video games, virtual/augmented/mixed realities, social media, and all related and emergent forms of digital interactive entertainment. Ross and I serve as members of the Editorial Board, along with many others who are well-known in the video game legal community.

The first issue went live just the other day and we are very happy to report that it includes our new article on copyright issues raised by game input streaming and replays, titled "The Key to Key Presses: eSports Game Input Streaming and Copyright Protection."  In the article, Kirk and I explore whether and how copyright protection applies to recorded game inputs (e.g. mouse clicks and key presses in replay files), and who owns the copyright in recorded game play.  Here's the full abstract:
The eSports industry has exploded, in no small part due to the ease with which exciting matches may be watched. Many modern video games stream game user inputs to viewers, rather than bandwidth-intensive video. These game input streams can be used by the viewers’ game clients to perfectly reproduce a match in real-time. In World Chess U.S. v. Chessgames Services, a U.S. District Court held that allegedly pilfered chess game moves, as facts, were neither subject to copyright protection nor eligible for ‘hot news’ misappropriation. But might video game input streams (as facts, per the World Chess court) nonetheless be eligible for copyright protection to the extent that the input data corresponds to a copyright-eligible game performance? After all, input streams are significantly more granular and exacting than mere chess game moves: they capture millisecond-by-millisecond input and effectuate perfect reproducibility of gameplay, rather than a mere description thereof. This article explores the copyright issues under U.S. law presented by live streaming of video game inputs and proposes that video game input streams are, to the extent that they are usable to perfectly generate a faithful recreation of a gameplay performance, copyright-eligible and owned by the player of the game.
While these base-line rights are usually overruled by developer EULAs, the question of copyright ownership in replays may be particularly important in disputes between third party leagues.  In the past year, we've seen hints of this issue beginning to flare up in the form of the ESL/Valve/Twitch controversy back in January.  Allowing third party leagues to exercise copyright over their tournament game play (through agreement with the players) may foster further growth in the eSports community.

Check out the journal here and our full article here (free access).
Groove Digital, Inc. v. King.com, LTD. et al.,
United States District Court for the District of Delaware,
1-18-cv-00836, filed 06/04/2018
 
 
On June 4, 2018, Groove Digital filed a lawsuit in the District Court of Delaware alleging King.com infringed upon U.S. Pat. No. 9,454,762 (the '762 Patent), titled "System and Method for Delivery of Content to a Network Device." Groove Digital claims the '762 Patent relates to push notifications for mobile apps. In the Complaint, King's game, Candy Crush Saga, infringes upon the '762 Patent.

Claim 1 of the '762 Patent reads:
A system for delivering information to a networked device of a user, the system comprising:

a microprocessor running a software application for delivering an applet application to the networked device and managing the delivery of the applet application to the networked device, wherein the applet application passively deploys one or more applets at a time of deployment,

wherein the applet application provides for delivery of content to the networked device and a display of the content in a predetermined portion of a user display that is less than an entire display of the networked device, by the one or more applet, wherein the one or more applet is configured to deploy at least one of independent of or in conjunction with an internet browser window, wherein an internet browser is configured to deploy subsequent to deployment of the one or more applets based on at least one action or inaction of the user, wherein at least one of the applets is configured to become idle upon deployment of the internet browser, and wherein the deployment of the one or more applets is such that at the time of deployment of the one or more applets the user can continue to operate the networked device in a state prior to the deployment of the one or more applets;

a first database coupled to the microprocessor and storing a first set of information relating to the user; and

a second database coupled to the microprocessor and including a second set of information for comparison to the first set of information,

wherein the microprocessor compares the first set of information to the second set of information to determine whether the content should be transmitted to the networked device for display by the one or more applets. ('762 patent, col. 14, lines 9-43).

The '762 Patent has an interesting prosecution history. Samuel Gaidemak and Paul Chacko filed the '762 Patent on March 17, 2006, but the USPTO did not issue the patent until September 27, 2016. During those ten years, the PTO issued eleven office actions against the '762 Patent. On average a patent will face three or four office actions. The more office actions a patent faces, the more prosecution history estoppel the patent acquires, which is used to narrow the patent's claims and restrict the owner's use of the doctrine of equivalents. Groove Digital is asserting the doctrine of equivalents in addition to allegations of literal infringement. King has not yet filed an Answer in response to the Complaint.

Groove Digital is also suing United Bank for infringing the '762 Patent. Normally, we do not report on non-video game related case, but this is the only other lawsuit in which the '762 Patent is asserted. Groove Digital filed the lawsuit against United Bank on December 1, 2017, in the Eastern District of Virginia. The Complaint in that lawsuit alleges that United Bank's mobile banking app infringes the '762 Patent by using push notifications, and the Complaint filed against United Bank is very similar to the Complaint filed against King. United Bank has only filed a motion to dismiss for lack of jurisdiction. These lawsuits against United Bank and King could be the start of Groove Digital suing every mobile app developer that uses push notifications, so it will be interesting to see if Apple takes notice (in view of the integrated push notification technology built into iOS).

We will continue to follow Groove Digital's lawsuit against King and provide updates when available.
Call me old school, but Halo 2 is still my favorite multiplayer first-person shooter.  It was the most balanced FPS game I've ever played, and I still get excited with each new release.  The Halo franchise is one of those franchises that makes it in my top 10 list for all time best games (what are the other 9?  Well, there's the Myst franchise (including Obduction), but I'm otherwise still working on it).

Microsoft released a teaser video for Halo Infinite today, and it looks awesome. This will probably give me the push I needed to upgrade from my Xbox One to the newer Xbox One X. It wouldn't be the first time I've bought new hardware just to play a new game (Quake and America's Army also did that trick).

Check it out!

-Ross

On May 22, 2018, Sony Interactive Entertainment LLC (Sony) filed a petition for Inter Partes Review of U.S. Patent 8,206,218 (the '218 Patent), owned by Techno View IP. The '218 Patent is related to a method for displaying stereoscopic images based on how the right-eye and left-eye view the same object. Sony is alleging that the '218 Patent is invalid because it is obvious as a result of prior art.
 
 
Claim 1 of the ’218 Patent reads:
1. A method in a videogame system for displaying three-dimensional images, comprising the computer implemented steps of:

providing left and right backbuffers;

calculating first position coordinates of a first eye view;

storing a first eye view image captured virtually from the calculated first position coordinates of the first eye view of an object in the videogame into the left backbuffer;

determining a second eye view image of the object captured virtually from the calculated second position coordinates of the second eye view;

storing the second eye view image in the right backbuffer; and

displaying the first eye view image and the second eye view image to the user to provide a three dimensional perspective of the object from the videogame system to the user. ('218 patent, col. 13, lines 44-64).
The '218 Patent is related to U.S. Patent 7,666,096 (the '096 Patent), also owned by Techno View and also subject to an IPR petitioned by Sony. Both the '218 and '096 Patents are at the center of a lawsuit Techno View filed against Sony in the Central District of California, in which Techno View alleges that Sony's PlayStation VR infringes Techno View's patents. Sony is using the IPRs to challenge the validity of the allegedly infringed patents. Techno View is also suing Oculus VR claiming their VR system infringes the '218 and '096 Patents. Oculus was not part of the IPR petitions filed by Sony.

This is the third IPR petition Sony has filed this year relating to stereoscopic images. For background on the previous two IPR petitions click here and here.
PUBG Corporation, makers of PlayerUnknown's Battlegrounds, have filed a lawsuit against Epic Games, makers of Fortnite, in South Korea. The lawsuit was filed in the Seoul Central District Court in January. PUBG asked the Seoul Central District Court for an injunction against Epic, claiming copyright infringement. We do not usually comment on litigation outside the United States, but PlayerUnknown's and Fortnite are two of the most popular games, are both battle royale games, and both have had an enormous impact on the video game industry by popularizing the battle royale game genre as a whole.
 

So why sue in South Korea? Likely answer: sue where you think you can win. PUBG is a subsidiary of Bluehole, a South Korean game developer. Choosing South Korea as the forum gives Bluehole and PUBG home-court advantage. Also, the legal standard for copyright infringement might be different in South Korea than in America. The differences in the legal standards might give PUBG an edge depending on the claims asserted.

 
As of this writing, the specific claims PUBG is asserting against Epic Games are unknown. According to a Korea Times article, Bluehole had previously stated its belief that Epic Games copied core elements and the user interface of PlayerUnknown's. Earlier this year, PUBG filed a similar lawsuit against NetEase for copyright infringement in the US. PUBG filed that lawsuit in the United States District Court for the Northern District of California. In the US claim, PUBG listed a series of elements which individually may or may not be copyrightable, but which together they allege have copyright protection. Essentially, the claim argues that NetEase copied the total look and feel of PlayerUnknown's by including all of the similar elements listed. Check out our previous post for more on the NetEase case. Both lawsuits are in the very early stages of litigation, so there has not been any significant ruling yet.

PlayerUnknown's currently runs on the Unreal Engine 4, which is an Epic Game property. It will be interesting to see if there will be any fallout as a result of PUBG instigating litigation. As it stands now, this case is a big deal, but if this lawsuit grows beyond South Korea's borders, it could get UNREAL! (get it? Unreal, like the game engine? Sorry Canon, had to go there...).
Game and Technology v. Activision Blizzard et al., C.D. Cal.,
Case No. 2:16-cv-06499-MLH-SK, Filed August 29, 2016

On March 14, 2018, the Patent Trial and Appeal Board (PTAB) invalidated U.S. Patent 8,253,743 (the '743 Patent), which Game and Technology (GAT) owns and asserted in this lawsuit. Activision Blizzard, Riot Games, and Valve had petitioned for Inter Partes Review of the '743 Patent in response to litigation we had reported on earlier. The '743 Patent is related to the layering of items on a character avatar in a video game.
 
FIG. 5 shows avatars (gamvatars) having a game item function according to an embodiment of the present invention, and it exemplifies gamvatars 530 and 540 generated by combining an avatar 510 which wears clothes purchased at the avatar shop 430 and a game item 520 purchased at the item shop 440. The gamvatar 530 shows the avatar 510 but is arranged in the background layer. As described above, it is possible for the avatar 510 to wear the item 520 or not wear the item 520 depending on the user's setting. ('743 patent, col. 6, lines 33-44).
The PTAB found that the '743 Patent would have been obvious based on the combined teachings of a Diablo II manual and a 2005 publication of U.S. patent application 2005/0127015 A1 filed August 19, 2004. GAT filed an appeal to the United States Court of Appeals for the Federal Circuit on May 16, 2018.
 
Earlier, we had reported on Activision Blizzard and Wargaming filing a petition for IPR on another asserted patent, U.S. Patent 7,682,243 (the '243 Patent). The petition was granted but the PTAB has not yet issued a final written decision in that matter. The Central District of California granted a stay on the original lawsuit until the IPR and the appeals process for the '243 and '743 Patents have concluded.
 
In the original lawsuit, GAT claimed the defendants infringed upon three patents. Indeed, Activision had sought an IPR on the third patent, U.S. Patent 8,035,649 (the '649 Patent). But on February 28, 2017, the PTAB denied instituting a review of the '649 Patent. Then, on May 17, 2018, both sides jointly asked the District Court to drop all claims relating to the '649 Patent, which the court granted four days later.
 
As of this writing, the Central District of California case remains stayed until the PTAB and the Federal Circuit determine the validity of the '743 and '243 Patents, while the claims relating to the '649 Patent have been dismissed. We will continue to track any new developments.
On May 15, 2018, the Patent Trial and Appeal Board (the “PTAB”) instituted two Inter Partes Review (“IPR”) proceedings against U.S. 5,822,523 (the “’523 Patent”).  The ’523 Patent generally relates to group messaging in interactive applications.  The petitioner is Riot Games, Inc. (“Riot Games”), maker of popular titles like League of Legends The patent owner is Paltalk Holdings, Inc. (“Paltalk”).  From 2006-2009, the ’523 Patent was asserted by Paltalk in patent infringement cases against Microsoft, Sony, Activision Blizzard, NCsoft, Jagex, and Turbine Inc., among others.



Claim 1 of the ’523 Patent reads:
1. A method for providing group messages to a plurality of host computers connected over a unicast wide area communication network, comprising the steps of:

   providing a group messaging server coupled to said network, said server communicating with said plurality of host computers using said unicast network and maintaining a list of message groups, each message group containing at least one host computer;

   sending, by a plurality of host computers belonging to a first message group, messages to said server via said unicast network, said messages containing a payload portion and a portion for identifying said first message group;

   aggregating, by said server in a time interval determined in accordance with a predefined criterion, said payload portions of said messages to create an aggregated payload;

   forming an aggregated message using said aggregated payload; and

   transmitting, by said server via said unicast network, said aggregated message to a recipient host computer belonging to said first message group.
Both Riot Games and Paltalk agree that the ’523 Patent expired.  While it might seem strange for Riot Games to attack the validity of an expired patent, a patent owner may sue for damages that were incurred when their now-expired patent was valid, though they cannot recover damages that were incurred more than six years prior to the filing of the lawsuit.  As it appears that the ’523 Patent expired in 2016, Paltalk could potentially file patent infringement lawsuits up until around 2022, but only for damages that they incurred prior to 2016, and only so long as their damages were in the six years before they filed the lawsuits.  For example, if Paltalk sued a game company for patent infringement on Jan. 1, 2021, they could recover damages from Jan. 1, 2015, up until the date the ’523 Patent expired in 2016.
On May 15, 2018, Sony Interactive Entertainment LLC (“Sony”) filed a petition for Inter Partes review (“IPR”) of U.S. Patent No. 7,666,096 (the “’096 Patent”).  The owner of the ’096 Patent is Techno View IP, Inc. (“Techno View”).  The ’096 Patent generally relates to hardware and software for displaying stereoscopic images (e.g., by providing different images that are offset from a user’s left and right eyes to create a three-dimensional effect).  While not explicitly discussed in the petition, the IPR is likely related to Sony’s Playstation VR system.



Claim 1 of the ’096 Patent reads:
1. A method of displaying images in a videogame system that supports two-dimensional and three-dimensional display of the images, said method comprising the computer implemented steps of:
   clearing left and right backbuffers in the videogame system;
storing an image into the left backbuffer;
   determining if the image is in a two-dimensional format or a three-dimensional format, wherein when the image is in a three-dimensional format, calculating the coordinates of a second view position of the image and storing a second view position image into the right backbuffer;
   displaying the image stored in the left backbuffer onto one or more displays when the image is in a two-dimensional format; and
   simultaneously displaying the images stored in the left and right backbuffers onto the one or more displays to create a three dimensional perspective of the image to a user when the image is in a three-dimensional format.
This isn’t the first IPR that Sony has filed regarding stereoscopy.  Back in February, Sony filed an IPR petition against U.S. Patent No. 9,503,742, which relates to stereoscopic image decoding via data compression.

This filing is a great example of a defendants using IPRs to attack patents asserted in litigation.  Per Sony’s IPR petition, the ’096 Patent is involved in a patent infringement lawsuit (No. 8:17-CV-01268) filed by Techno View in the Central District of California against Sony.  The ’096 Patent was also asserted by Techno View against Sony in a U.S. District Court for the District of Delaware suit on May 15, 2017, though that case was dismissed.  Techno View has apparently also asserted the ’096 Patent against Oculus VR, LLC and Facebook, Inc.
Certain Portable Gaming Console Systems with Attachable Handheld Controllers and Components Thereof
International Trade Commission, Inv. No. 337-TA-1111

-and-

Gamevice, Inc. v. Nintendo Co., Ltd. et al
CAND-3-18-cv-01942


Last year, we reported on Gamevice's lawsuit against the Nintendo Switch filed in August 2017.  That case was voluntarily dismissed by Gamevice in October 2017 without comment as to why.

At the end of March this year, Gamevice came back to try again.  They filed corresponding lawsuits in the Northern District of California as well as at the International Trade Commission. On May 1, the ITC announced that it would institute the investigation against Nintendo.  The CAND case will be stayed now that the ITC investigation has begun, once the parties notify the court.

The ITC can be a desirable venue for patent owners because it offers an accelerated timeline and is more likely to award injunctions than District Courts.  Another significant advantage of the ITC in this age of inter partes review challenges is that the ITC typically refuses to stay its proceedings even if the USPTO decides to institute an IPR.  However, monetary damages are not available at the ITC.

The patents at issue are US 9,855,498 and 9,808,713, titled "Game Controller with Structural Bridge."  Looking at the '713 patent, the claims appear to recite a "structural bridge" connecting the two controllers.  One issue in this case may be identifying which component of the Nintendo Switch corresponds to the claimed "structural bridge."

US 9,808,713 - Fig. 35

This suit involves some newer patents that claim partial priority to the patents asserted in March of last year.  These are "continuation-in-part" patents from the earlier asserted patents, meaning they added some new material.  Importantly, these new CIPs name different inventors than the original patents, suggesting that the claims may be directed to the new subject matter.  If that's the case, then these patents will have a later priority date than their earlier parents, and the earlier parents might themselves become usable as prior art.  If the new subject matter in the claims is just an obvious variation of the earlier patents, yet was not disclosed in the earlier patents, Gamevice might have trouble defending their patents.

We'll continue to watch for interesting developments.


On April 23, 2018, Epic Games, Inc. (“Epic”) filed a response to a Motion to Dismiss filed by Lauren Rogers, the mother of a teenaged Fortnite hacker (“C. R.”) facing a copyright infringement and breach of contract lawsuit filed by Epic last year.


Epic’s complaint argues that C.R. infringed its copyrights by injecting unauthorized computer code (that is, cheats) into Fortnite.  C.R. allegedly recorded himself cheating in Fortnite and uploaded those videos to YouTube.  Epic filed a DMCA request to take down those videos, to which CR apparently replied: “i did noting rong this strike is all wrong I was modding in a video game that isn’t against youtubes TOS Why was i striked ‼!.”  According to Epic, C.R. had been banned from Fortnite at least fourteen times, but continued to dodge bans using fake names.  Neither C.R. nor his mother have legal counsel.

The suit is extremely similar to Epic’s other Fortnite lawsuits (discussed here, here, here, herehere, here, and here). 

Ms. Roger’s Motion to Dismiss, actually a letter filed by Ms. Rogers, allegedly admits that C.R. was a cheater but argues that the case should be dismissed because (1) Epic “has no capability of proving [that C.R. performed] any form of modification,” because (2) Epic “illegally” released C.R.’s name, because (3) Epic cannot prove “profit loss” from the cheating or that C.R. profited from his cheating, and (4) because Epic’s contracts (e.g., its terms of service) are invalid because C.R. is a minor.  Epic responded by not only moving to seal certain portions of the trial record, but also by arguing that it was not required to make certain proofs at the pleading stage, and that, in any event, Ms. Roger’s arguments were legally unfounded.

These developments appear to put Epic in a useful, albeit awkward, position.  On one hand, this suit provides a clear warning that even minors may find themselves sued for cheating in Fortnite.  On the other hand, Epic is now pursuing a copyright suit against an unrepresented teen and his mother – definitely an interesting position from a public relations perspective.

On April 17, 2018, Catherine Alexander, a tattoo artist from Illinois, sued Take-Two Interactive Software, Inc., 2K Games, Inc., 2K Sports, Inc., World Wrestling Entertainment, Inc. (the “WWE”), Visual Concepts Entertainment, Yuke’s Co., Ltd., and Yuke’s LA Inc. for copyright infringement relating to the tattoos on Randy Orton


Randy Orton is a 13-time world champion professional wrestler for the WWE whose arms are almost entirely covered by tattoos.  Between 2003 and 2008, Alexander tattooed Mr. Orton’s arms.  Alexander’s complaint alleges that various WWE-branded videogames, including WWE 2K16, WWE 2K17, and WWE 2K18, feature “meticulous reproduction[s]” of those tattoos.  Per Alexander, the WWE offered her $450 for the rights to Orton’s tattoos, which she declined.

This is far from the first time that the gaming industry has been involved in a copyright dispute over in-game tattoos.  One suit, still ongoing, involves various tattoo artists suing Take-Two Interactive over reproductions of the tattoos of professional basketball players such as Kobe Bryant and LeBron James.  Similarly, an Arizona tattoo artist once sued THQ over a tattoo in UFC Undisputed, though it appears that case was settled.  In the movie industry, a similar dispute arose over the depiction of Mike Tyson’s tattoo in the movie Hangover II, though the dispute was quickly settled.

One strategy, explored by companies like Electronic Arts, has been to require that athletes acquire the rights to their tattoos if they want them properly represented in-game.  Another option would be for athletes’ contracts to require that they acquire all rights to any tattoos they receive, such that the athletes may grant licenses to use the tattoos if necessary.

In any event, the outcome of these cases are likely to hinge on, among other arguments, whether tattooed individuals like Randy Orton have an implied license to their tattoos, and whether depiction of an individual’s tattoos is fair use.   Another potential issue is whether a tattoo is sufficiently “fixed” to warrant copyright protection in the first place (there is precedent that a living garden is not “fixed” and one might make the same argument about artwork on living skin).  We will monitor the cases and keep our readers informed of any updates.

Summer Intern - Patent Arcade *
Washington, DC

Banner & Witcoff, a recognized leader in the practice of intellectual property law, is seeking a summer intern to work in its Washington, DC office for the summer of 2018.

As a Summer Intern, the student will assist in researching new and historical video game IP lawsuits, writing content for publication on the PatentArcade.com blog, researching and updating our database of video game patents, working with PatentArcade.com attorneys to research developing areas of video game IP law, developing topics and potentially preparing a paper for submission to the Interactive Entertainment Law Review

Successful 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 (i.e., no candidates with engineering or science degrees.  It's an odd requirement, I know, but we have our reasons).

Please upload your resume with cover letter, law school and college transcripts, and a writing sample. Candidates should redact social security numbers and similar information before submitting materials. Electronic documents should be sent in Microsoft Word or PDF format.

*This is a paid position
Apply here.
On April 11, 2018, Infernal Technology, LLC and Terminal Reality, Inc. (“Infernal”) filed a complaint for patent infringement against Microsoft Corporation (“Microsoft”).  The asserted patents, U.S. 6,362,822 and U.S. 7,061,488, relate to lighting and shadowing methods for graphics simulation. According to Infernal, both patents have already survived an Inter Partes Review challenge filed by Electronic Arts in 2016.



According to the complaint, Terminal Reality was the developer of games such as Nocturne, Bloodrayne, Ghostbusters: The Video Game, Kinect Star Wars, The Walking Dead: Survival Instinct.  As part of their game development work, Terminal Reality developed a graphics engine (“Infernal Engine”).  Infernal Technology has an exclusive license to patents related to the Infernal Engine, including those asserted against Microsoft.

Infernal alleges that games developed by Microsoft on the Unreal Engine 4, CryEngine 3, CryEngine 4, Alan Wake Engine, Renderware Engine, Forge Engine Forzatech Engine, Northlight Engine, Unity Engine, Foundation Engine, Halo 4 Engine, Halo 5: Guardians Engine, and Halo: Reach Engine infringe the asserted patents.  These allegations seem to include the lions’ share of games on Microsoft’s consoles, including but not limited to Alan Wake, Crackdown, Crackdown 2, Crackdown 3, Dead Rising 3, Fable Legends, Forza Motorsport 6, Forza Motorsport 7, Gears of War 4, Halo 4, Halo 5: Guardians, Halo: Reach, Kalimba, Ori and the Blind Forest, PlayerUnknown’s Battlegrounds, Quantum Break, ReCore, Rise of the Tomb Raider, Ryse: Son of Rome, Sea of Thieves, State of Decay, and Super Lucky’s Tale.

Interestingly, Infernal’s case was filed in the Eastern District of Texas.  While that venue was once a hotbed of patent litigation, in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the Supreme Court limited venue in patent infringement actions to where (1) the defendant resides, or (2) the defendant has committed acts of infringement and has a regular and established place of business.  This ruling has generally been seen as a significant limitation on bringing cases in the Eastern District of Texas.  Nonetheless, Infernal alleges that Microsoft is a resident of the State of Texas, has a designated agent for service of process in the State of Texas, and has committed acts of infringement in the State of Texas.  Whether the facts underlying these assertions are sufficient for venue in the Eastern District of Texas after TC Heartland remains to be seen.

We will monitor this case and keep our readers informed of any updates.
On April 9, 2018, the Federal Circuit ruled in favor of defendants Microsoft Corporation, Ubisoft, Inc., Nintendo of America, Inc., Electronic Arts Inc., Harmonix Music Systems, Inc., and Majesco Entertainment in a patent infringement suit brought by Australian individual Richard J. Baker.   The suit relates to Baker’s U.S. Patent No. 5,486,001, which relates to an instructional aid for movements.  The accused products included video games that incorporated an image capturing device (like a camera) connected to a gaming console or personal computer.


The ’001 Patent reads, in claim 1 and as amended during prosecution:
capturing and storing initial visual image signals representative of a particular movement at a first location,

storing preferred image signals representative of a selected preferred movement at a second location remote from said first location in a data base of a computer,

transmitting said captured and stored visual image signals from said first location to said computer at said second location,

. . .

transmitting said regenerated signals from said computer at said remote second location to said first location and stored in image presentation means which permits viewing thereof with dialogue relating to said regenerated visual secondary image signals.

The Federal Circuit affirmed the district court’s finding that “remote,” as used above, requires “more than physical separation at the same location.”  The Federal Circuit found that this amendment prevented infringement by any of the defendants, both literally and under the doctrine of equivalents.

Cases like these emphasize the importance of careful patent prosecution.  Per the Federal Circuit, the “first location” and “second limitation” language used above was added to traverse a reference (U.S. Patent No. 5,184,295 to Mann).  Little changes like these, which invoke the doctrine of prosecution history estoppel, can have significant ramifications during litigation, as demonstrated here.  It’s game over for Mr. Baker in this case.
On April 2, 2018, PUBG Corporation and PUBG Santa Monica, Inc. (“PUBG”) sued NetEase, Inc. and NetEase Information Technology Corp. (“NetEase”) over alleged copyright infringement, trade dress infringement, and unfair competition.  The complaint alleges, in short, that NetEast’s titles Rules of Survival and Knives Out are knockoffs of PUBG’s massively popular Playerunknown’s Battlegrounds.


PUBG’s lengthy (155 page!) complaint provides a listing of all instances in which Rules of Survival and/or Knives Out allegedly copied Playerunknown’s Battlegrounds.  Some examples, as alleged by PUBG:
  • “Pre-Play Area” – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out feature a pre-play area “where players can meet each other and try out weapons while waiting for other players to join.”
  • Play Map – The layout of the maps in all three games are “strikingly similar.”
  • “Scenes and Locations” – Both Rules of Survival and Knives Out feature, like Playerunknown’s Battlegrounds, locations such as a shooting range, a rural aqueduct, a port with shipping containers, a farm area, two-story hexagonal towers, and the like.
  • Air Jump – In Rules of Survival and Knives Out, as in Playerunknown’s Battlegrounds, players jump at any point from an airplane onto various portions of a map.  Players may then descend in freefall and release a parachute. 
  • Weapons – For example, where Playerunknown’s Battlegrounds features a M416, Rules of Survival features an MA14.  Both games also feature, for example, red dot sights, vertical foregrips, bullet loops, and other similar accessories.
  • Frying Pans – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out feature frying pan weapons. 
  • “Winner Winner Chicken Dinner” – Both Playerunknown’s Battlegrounds and Rules of Survival use this phrase to indicate the winner of a match.  Rules of Survival also has a rubber chicken which may be used as a melee weapon. 
  • Shrinking Gameplay Area – Playerunknown’s Battlegrounds, Rules of Survival, and Knives Out have a progressively shrinking gameplay area and a timer which warns players when a next shrinking event will occur.
Individually, all of the above examples could arguably be found in other video games or in real life.  For example, the M416 in Playerunknown’s Battlegrounds is arguably a version of the Heckler & Koch HK416.  As another example, Playerunknown’s Battlegrounds is far from the progenitor of the term “Winner Winner Chicken Dinner,” as the term originated during the Depression. It seems likely that PUBG will argue that the combination of such elements, rather than the individual elements themselves, has been copied by NetEase.

PUBG is far from the first game company to sue creators of alleged copycat game titles.  Tetris Holding, the company that owns the rights to Tetris, won a battle against a copycat app.  In that case, the Court found that the fact that game mechanics and game rules are not entitled to protection “does not mean, and cannot mean, that any and all expression related to a game rule or game function is unprotectable” such that Tetris Holdings was “entitled to copyright protection for the way in which it [chose] to express game rules or game play as one would be to the way in which one chooses to express an idea.”  Similar battles occurred between the creators of The Sims Social and The Ville and between the creators of Triple Town and Yeti Town.  Our firm (Banner & Witcoff), for example, represented Wargaming.net in a similar dispute against Changyou.com involving an alleged knockoff of Wargaming’s World of Tanks.
On March 30, 2018, Universal Entertainment Corporation (“Universal”) sued Aruze Gaming America, Inc. (“AGA”) and Japanese billionaire Kazuo Okada (“Okada”).  The asserted patents generally relate to slot machines.  The accused products include a wide variety of products made by AGA, including the G-SERIES, G-STATION, CUBE-X family of games (e.g., “Fire and Thunder,” “King of Dragons,” and “Mighty Lion”).


This case is interesting not necessarily because of the patents themselves, but rather because of the alleged corporate drama involving Okada, Universal, and AGA.  According to the complaint, Okada was the founder of Universal, which at one point owned AGA as a subsidiary.  Around 2008, Universal allegedly transferred all of its shares of AGA to Okada, spinning off AGA as an independent company.  Around 2009, Okada allegedly instructed Universal employees to license certain patents to AGA, though a license was never executed.  Around June of 2017, Universal purportedly discovered that Okada committed some form of “misconduct in relation to foreign business,” purportedly costing Universal around 2.2 billion Japanese Yen (around 20 million US dollars).  According to the complaint and other news sources, Okada was later voted out of Universal (by, among others, his son, daughter, and wife), and Okada appears to have turned his attention to AGA while he attempts to regain control of Universal.

This case is an excellent example of a danger commonly faced by many companies: founder overreach.  Savvy, charismatic leaders can enable companies to grow fast, but such founders can become overly powerful and dominate company decision-making.  In the intellectual property context, this can easily result in inventorship disputes, questionable licensing practices, and attempted theft of intellectual property (e.g., trade secrets) by departing founders.  Needless to say, such issues can easily be remedied through careful legal counsel.
On March 29, 2018, the New York State Court of Appeals, New York’s highest court of appeal, rejected actress Lindsay Lohan’s contention that the character “Lacey Jonas” from Grand Theft Auto V (“GTAV”) appropriated her likeness. A similar suit by Karen Gravano (a “Mob Wives” personality) regarding the “Andrea Bottino” character from GTAV was rejected on the same day.

Lohan alleged that at least two parts of GTAV unlawfully duplicated her likeness. First, in an “Escape Paparazzi” event, a female character named “Lacey Jonas” (who describes herself as a “really famous” “actress slash singer” and a “voice of a generation”) hides from the paparazzi. Second, a “Beach Weather” splash screen in GTAV allegedly duplicated Lohan’s likeness. That image is duplicated below.



The Court rejected Lohan’s argument, finding that both “Lacey Jonas” and the woman depicted in “Beach Weather” were “indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman that are not reasonably identifiable as [Lohan].” This is arguably a formal way of saying that self-important blonde actresses aren’t exactly in short supply in Los Angeles.

Karen Gravano similarly asserted that GTAV’s character “Antonia Bottino”–in the game, the daughter of a mobster planning to go on a television show–unlawfully duplicated her likeness. The Court similarly found that Gravano was “not recognizable from the images at issue.”

Though Lohan and Gravano lost, the Court’s ruling did hold that an avatar, such as a videogame character, may unlawfully misappropriate the likeness of an individual. Developers may want to be cautious in view of this holding–the wrong cutting edge satire could invite a lawsuit, no matter how poorly-founded.

On March 27, 2018, Hybrid Audio, LLC (“Hybrid Audio”) sued Nintendo of America Inc. and Nintendo Co., Ltd. (“Nintendo”) for alleged infringement of RE 40,281, a reissue of U.S. 6,252,909.  The allegedly infringing products include the Nintendo Wii and the Nintendo DS.  RE 40,281 generally relates to signal processing and is part of technology used for MP3 technology, and Hybrid Audio’s argument is that Nintendo infringes via practicing various parts of the MP3 technical standard (ISO/IEC 11172-3:1993).


As part of Hybrid Audio’s complaint, it notes that Nintendo may enter a Reasonable and Non-Discriminatory (“RAND”) agreement to license RE 40,281 as part of the MP3 Standards. Hybrid Audio also indicates that products supplied by Microsoft Corporation are not part of the allegedly infringing products, suggesting that Microsoft has possibly already entered into such an agreement.

RAND agreements, sometimes called FRAND agreements (for “Fair, Reasonable, and Non-Discriminatory”), are commonly used in patent pools. In industries where standards (e.g., audio standards like MP3 and cellular communications standards like 3G or LTE) are important, patent owners often collectively pool “standards-essential” patents and mutually agree to license those patents on FRAND/RAND terms. For patent owners, this can be a good deal: once their patents become standards-essential, users of the standard must license their patent, albeit on RAND/FRAND terms. For licensees, this can also be a good deal: because all patent owners must license their standards-essential patents on RAND/FRAND terms, they can usually acquire licenses to the standard fairly easily and with reasonable terms.

Strangely, Hybrid Audio's complaint specifically identifies the Nintendo Wii and Nintendo DS as infringing products.  The Nintendo Wii was launched in 2006, whereas the Nintendo DS was launched in 2004.  35 U.S.C. § 286 limits damages to six years prior to the filing of a complaint, meaning that Hybrid Audio's recovery will be limited to the period from 2012 to 2018.  During that period, Nintendo was marketing different a next generation of game consoles (the Wii U and the 3DS), which are not referenced in Hybrid Audio's complaint.  Potential damages related to sales of the Wii and DS are likely to be extremely small.
On Mar. 9, 2018, Epic Games, Inc. (“Epic”) sued Joseph Sperry (a/k/a “Spoezy”), yet another alleged distributor of cheats for the popular online game Fortnite.



Similar to previous cases (discussed here, herehere, and here), Epic alleges that Spoezy made, used, and sold cheating tools for Fortnite.  Much unlike previous cases, however, to acquire jurisdiction against Spoezy, Epic merely argues that Spoezy purposefully availed himself to the privileges of conducting activities and doing business in North Carolina, rather than using the YouTube DMCA process.  This may be because Spoezy is a resident of New York, unlike previous, non-American defendants.

As a fun side note, Spoezy’s website formerly listed him as a “Cheater[,] Designer[, and] Editor,” though it now lists him as a “Gamer[,] Designer[, and] Editor.” 
On January 29, 2018, FaZe Clan, Inc. (“FaZe Clan”) , an online gaming team, was sued by FAZE Apparel, LLC (“FAZE Apparel”) for trademark infringement, false designation of origin, and unfair competition.  The case, originally filed in the Northern District of California, was transferred to the Central District of California on Mar. 13, 2018.  The case is now undergoing court-directed alternative dispute resolution.


When FaZe Clan is not sponsoring energy drinks (“FaZeberry”) or awkwardly self-promoting in Gamestop stores, FaZe Clan sells merchandise promoting their brand.  FAZE Apparel asserts that FaZe Clan is an “admitted past infringer” of its marks which simply attempted to “steamroll [FAZE Apparel] and improperly profit off its brand.”  According to FAZE Apparel, FaZe Clan has been well aware of FAZE Apparel for at least four years: in 2013, the USPTO refused to register various trademarks for FaZe Clan, finding that such marks would be confusingly similar to those owned by FAZE Apparel.  Since then, per FAZE Apparel, FaZe Clan has repeatedly attempted to market “FaZe” materials, only to (allegedly) back off when confronted by FAZE Apparel.

Cases like these underscore the importance of careful brand planning.  FaZe Clan is now in an awkward position: if FAZE Apparel’s assertions have any merit, FaZe Clan will be forced to either re-brand or seek some form of license from FAZE Apparel.  Even if FAZE Apparel’s assertions are not meritorious, FaZe Clan will likely have to spend significant sums to defend themselves from this lawsuit. 

Either or both of these issues could have been avoided had FaZe Clan taken a more informed and/or conservative approach when selecting its name.  This case evidences that an ounce of prevention is worth a pound of cure.
Plaintiffs Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC (“Lucasfilm”) have challenged attempts by defendant Ren Ventures Ltd. and Sabacc Creative Industries Ltd. (“Ren”) to dismiss a lawsuit by Lucasfilm alleging that Ren infringes Lucasfilm’s copyrights and trademarks and has violated unfair competition laws.  The game at issue is Ren’s “Sabacc,” a mobile card game which allegedly infringes Lucasfilm’s Star Wars trademarks.



“Sabacc” is the fictional game of chance in the Star Wars universe that was played by Han Solo to win the Millennium Falcon from Lando Calrissian.  Lucasfilm has sold various real-life versions of the Sabacc card game, though Ren disputes the significance of such sales.  According to Lucasfilm, on the eve of the release of the movie Star Wars: The Force Awakens (Dec. 18, 2015), Ren–without permission from Lucasfilm–released the mobile card game “Sabacc.”  Videos of the game available online suggest that it contains imagery which allegedly depict Han Solo, Lando Calrissian, and a holographic Millennium Falcon.  Lucasfilm sued Ren on December 21, 2017.

Ren’s Motion to Dismiss argues, in part, that because Sabacc is a “fictional good,” it cannot be amenable to trademark protection or an unfair competition violation.  Lucasfilm’s Opposition to Ren’s Motion to Dismiss calls Ren’s arguments “specious,” asserting that Ren “ignore[s] all cases that have granted common law trademark protection to fictional elements of expressive works.” 

As many franchises sell real versions of in-universe games (Star Trek’s Tri-Dimensional Chess and The Witcher’s Gwent come to mind), the ruling in this case may have implications far beyond Sabacc.
Konami, no stranger to invalidity challenges against their video gaming patents, recently had four more patents directed to slot machines struck down as directed to abstract ideas.

On Feb. 21, 2018, the U.S. District Court for the District of Nevada granted summary judgment for defendant High 5 Games, LLC (“High 5”) against plaintiff Konami Gaming, Inc. (“Konami”).  The Court, dismissing Konami’s case, found all four of Konami’s asserted patents invalid as directed to unpatentable subject matter.



In the case, Konami alleged infringement of four patents: U.S. Patent Nos. 8,096,869, 8,366,540, 8,662,810, and 8,616,955. All asserted patents generally relate to slot machines, and High 5’s allegedly infringing products included various online and “land-based” slot machine games featuring a “Super Stack” feature (including, inter alia, “Bah, Humbug,” “Bollywood Bride,” “Dangerous Beauty,” “Diamonds of Athens The Dream,” “Shadow of the Panther,” and many others).
Claim 1 of the ’869 Patent reads:
1. A gaming machine comprising:
   a processor configured to execute a game displaying a matrix of symbol containing elements having a plurality of rows and a plurality columns;
   at least one column of said matrix comprising a portion of a simulated rotatable reel of a plurality of said symbol containing elements;
   said simulated rotatable reel comprising sections of symbol containing elements displaying a plurality of symbols that are fixed for each game played on said gaming machine;
   said simulated rotatable reel including at least one section in which a consecutive run of three or more of said symbol containing elements is populated by an identical symbol so that, as the simulated rotatable reel rotates, a consecutive string of said same identical symbol is sequentially displayed within said consecutive string of symbol containing elements; and
   said identical symbol is randomly selected anew for each play of said game, wherein said identical symbol is selected by virtually spinning a notional, non-visible, inner reel comprising a subset of said plurality of symbols.
After a lengthy discussion of claim construction, the Court found Konami’s patents’ claims “individually and collectively” invalid for abstractness.  Per the Court, the claims “perform the functions of what may be described as an aesthetic variation on a play of the game” because “the primary focus of the patents, as acknowledged even by Konami, is displaying a consecutive run of a randomly selected identical symbol in one reel of the simulated digital reels in each iteration of a game as a means of increasing interest in the game and ‘increasing probability of a winning outcome.’”  The Court was unpersuaded that the claims recited more than this idea: “[c]hanging how often a symbol appears and where it appears in a slot game without more is simply altering the manner of display of random symbols – i.e. changing the rules of the game.”

This decision underscores the continued impact of the Supreme Court’s 2014 decision in Alice v. CLS Bank.  In this case, the Court was clear: “changes to game rules of a generic slot machine using conventional technology are not patentable.”  Such a ruling may suggest that patents directed to game play rules may also be invalid as directed to abstract ideas.  Patentees may improve their likelihood of surviving similar challenges by, where possible, tying their claimed inventions to technology and technical problems.
Hello Patent Arcade readers. Something a little different today. An old friend from law school has published his own book:

What They Don't Teach You in Law School | How to Get a Job: The Six-Step Process for Landing a Great Legal Job Even if You Don't Know Where to Start
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Law school doesn’t teach you how to get a job. This Book Does. It arms you with a fresh perspective from students who landed great legal jobs. These personal, enlightening stories and the insight they reveal form the foundation of a straightforward six-step process to take control of your career path and professional advancement, starting in law school, and create multiple job opportunities. You'll quickly learn how to: • Create an entrepreneurial approach to your career planning. • Be seen by potential employers as integral to achieving their objectives. • Build your brand to get the job you want with the employer you want. In an easily relatable fashion, this book shares nearly 20 years’ worth of experience and advice (including guidance and feedback from all types and sizes of employers) that has helped the author’s clients secure their dream legal job. Now, this book and its easy to implement, proactive approach can help you too!



If you've been struggling with getting where you want to be in the legal profession, give it a read and let us know what you think.

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Kindle edition.

Other Books by Adam Gropper:

Making Partner: The Essential Guide to Negotiating the Law School Path and Beyond.
On Feb. 8, 2018, Pure Data Systems, LLC (“Pure”) sued Electronic Arts, Inc. (“EA”) and Ubisoft, Inc. (“Ubisoft”) for alleged infringement of U.S. Patent Nos. 5,999,947 to Zollinger et al. and 6,321,236 to Zollinger et al.  



Claim 1 of the ’947 Patent reads:
1. A method of distributing database differences corresponding to change events made to a database table located on a server computer to client copies of the database table located on one or more client computers comprising the steps of:
  creating and storing on the server computer one or more sequentially versioned updates, each update containing database differences in a generic format, the database differences corresponding to database change events made to the database table since the preceding update;
  receiving, from a client computer, a request for all the database differences needed to make the client copy of the database table current;
  determining which updates are necessary for making the client copy of the database table current;
  ascertaining a client database engine type wherein the client copy of the database table is held;
  generating and translating specific database differences, selected based on the necessary updates, into instructions based on the ascertained database engine type prior to transmission; and
  transmitting the specific database differences to the client computer so that the client computer may execute the instructions on the client database engine, thereby making the client copy of the database table current in response to the specific database differences translated into the instructions.
Pure claims that EA and Ubisoft infringe their patents via their “game library updates.”  For example, “if a user purchases a game through the [EA’s] Origin website using a browser, the user’s game library is updated on a server” such that “[w]hen the user next logs into the Origin client, those updates are transmitted to the Origin client running on the user’s computer.”

The lawsuits against EA and Ubisoft are different, likely due to venue issues, but the complaints are almost identical. Pure appears to have also filed similar complaints against Valve Corporation, the Fox News Network, Imgur, CNET, CNN, and Pinterest, among others.  
On Feb. 7, 2018, Nintendo Co., Ltd. and Nintendo of America, Inc. (“Nintendo”) filed two petitions for Inter Partes Review of U.S. 6,219,730 to Nguyen, a patent owned by Genuine Enabling Technology LLC (“Genuine”). 

The challenged ’730 Patent relates to user input:

1. A user input apparatus operatively coupled to a computer via a communication means additionally receiving at least one input signal, comprising:
   user input means for producing a user input stream;
   input means for producing the at least one input signal;
   converting means for receiving the at least one input signal and producing therefrom an input stream; and
   encoding means for synchronizing the user input stream with the input stream and
   encoding the same into a combined data stream transferable by the communication means.
According to Nintendo, the ’730 Patent is anticipated at least in part by the practice of “bit-robbing” which, in short, involves combining an existing signal (e.g., an audio signal) with other signals (e.g., input signals) such that a single data stream could be used to transmit multiple types of data from multiple input.  For instance, Fig. 1B of the ’730 Patent depicts plugging a microphone and speaker into the mouse, in effect combining audio and input data streams:



The use of means-plus-function language may make these claims narrower in scope than they look at first glance.  Before granting Nintendo’s IPR petition, the USPTO Patent Trials and Appeals Board (“PTAB”) will have to figure out what structure is required by the claimed means, and whether Nintendo’s prior art shows that structure.

Nintendo’s Petition for Inter Partes review comes on the heel of the case Genuine Enabling Technology LLC v. Nintendo Co., 1:17-CV-00134-MSG, filed in the District of Delaware on Feb. 8, 2017.  In that case, Genuine asserts that Nintendo’s Wii Remote infringes the ’730 Patent. Per Nintendo, Genuine has also sued Sony for infringement of the same patent.
On Feb. 1, Sony Interactive Entertainment, LLC (“Sony”) filed a Petition for Inter Partes Review of U.S. Patent No. 9,503,742 (the “’742 Patent”).  The prosecution history of the ’742 Patent is not something you see every day: a dispute over a typographical mistake followed an allowance because, despite an admittedly valid rejection, “applicant wishes to obtain a patent.”

As described by Sony, the ’742 Patent relates to stereoscopic image decoding via data compression.  It seems likely that Sony’s filing of the Petition for Inter Partes Review relates to their sales of PlayStation VR headsets.

Strangely, the ’742 Patent has only one claim, which Sony claims should have never been allowed.  According to Sony, during prosecution of the ’742 Patent, the patent examiner made a typographical mistake in an office action: forgetting to cite U.S. Patent No. 5,907,364 to Furuhata et al. (“Furuhata”) to reject dependent claim 23, though Furuhata was cited to reject the independent claim from which claim 23 depended.  On appeal, the Board affirmed all of the examiner’s rejections except for claim 23, noting that the examiner’s error was “perhaps inadvertent” and opening the door for a correction of the rejection.  Perplexingly, the examiner then allowed claim 23, noting in the Notice of Allowance:
The omission of the Furuhata reference appears to be a typographical mistake . . . Examiner informed applicant’s representative that claim 23 should have been affirmed by the board for the same reasons as set forth for claim 1. However, applicant’s representative informed Examiner that applicant wishes to obtain a patent since claim 23 was reversed by the board.
It will certainly be amusing to see what the Board has to say about the above allowance.
On January 30, 2018, Barbaro Technologies, LLC (“Barbaro”) sued Niantic, Inc. (“Niantic”) for the alleged infringement of U.S. Patent Nos. 7,373,377 and 8,228,325. Barbaro’s asserted patents are generally directed to integrating real-world information (e.g., a real-world geographic location) with an augmented reality environment. Barbaro specifically asserts that both Niantic’s Pokémon GO and Ingress infringe the asserted patents.


Claim 1 of the ’377 Patent reads:

1. A method of integrating real-time information into a virtual thematic environment using a computer system including a client and a server, comprising:
   providing a graphics user interface (GUI) module for use in the client system;
   providing a quantum imaging environment (QIE) module in one of the client or the server system;
   providing a digital logic library in one of the client or the server system;
   providing a primary application in the client system;
   providing a first user interface that is associated with the primary application;
   sending a request for first real-time information via the QIE module to the world wide web;
   obtaining the first real-time information via the world wide web;
   downloading the first real-time information from the world wide web into the primary application;
providing access to the first real-time information within the virtual thematic environment via the first user interface;
   providing at least one secondary application within the primary application at the client system;
   sending a request for second real-time information via the QIE module;
   obtaining the second real-time information via the world wide web;
   downloading the second real-time information into the secondary application;
   enabling a user to access the at least one secondary application through the first user interface; and
   enabling the user to control the at least one secondary application through a second user interface.

Niantic, which was spun off from Google, Inc. (“Google”), may have been aware of the Barbaro patents as early as 2006. Per Barbaro, around October 26, 2006, Barbaro sent Google’s Deputy General Counsel a copy of patent publications that led to the issuance of Barbaro’s asserted patents. Google, Inc. allegedly acknowledged the letter but “refused to discuss the matter before the patent issued.” No further detail regarding exchanges between Barbaro and Google are provided in the complaint.

This is case 2:18-CV-00773 in the District Court for Central District of California.  We will track it and keep you apprised of significant updates.
On January 17, 2018, U.S. District Judge John Michael Vazquez of the District of New Jersey dismissed all patent infringement claims asserted by Joseph Scibetta (a/k/a “Bankers & Brokers”) (“Scibetta”), against Slingo, Inc. and RealNetworks, Inc. (collectively, “Slingo”).  The reason: none of Scibetta’s patents survived scrutiny 35 U.S.C. § 101.

Scibetta is the owner of various intellectual property rights relating to a card and casino game called “BANKERS & BROKERS.”   U.S. Patent No. 6,220,597, one of the patents asserted in the case, describes the game in detail:

1. A method for playing a wagering card game comprising the steps of:
   Providing a shuffled stack of playing cards where the cards are touched only by the dealer during the game comprising at least one deck thereof;
   providing a planar game playing surface comprising a plurality of separately delineated areas adapted for the placement of bets;
   establishing odds for payout of winning bets placed in any of the aforesaid plurality of separated and delineated areas;
   establishing an initial order of play where players are designated as first player, and so on to a last player;
   initiating a round of play by a first player establishing a bet by placing a wager in a designated space on the table near a pot designated and marked onto a surface for displaying a face-up side of a card dealt to each said player;
   dealing a stack of six face-down cards as a player's pot concealing the faces of each dealt card from each player and a dealer, to the first player and any other player in the game;
   dealing a stack of six face-down cards, concealing the faces of each dealt card from each player and the dealer, to the dealer as a dealer's pot;
   then, only the dealer turning the dealer's pot over and turning over the pots over for each player one at a time;
   then the dealer immediately determining a player's winning status or loss status by comparing a face-up card dealt to each player and a now face-up card dealt to the dealer in the dealer's pot;
   after comparing a dealer's face-up card to a player's face-up card, paying any winning bets placed by each player in the game;
   collecting the played or turned up cards from each pot after bets are paid and placing these cards in a discarded cards designated area on the table;
   determining whether the turned-up dealer's card matches the corresponding turned-up player's card, whereby at any time during the game or before the dealer may imposed step of disqualifying and discarding any got touched by a player.

The other asserted patents (U.S. Patent Nos. 6,626,433, 7,331,580, 7,618,044, and 7,857,314) are similar.

Slingo is alleged to have distributed an unlawful copy of BANKERS & BROKERS on their website slingo.com, which was later acquired by RealNetworks, Inc. The alleged copy of BANKERS & BROKERS is reproduced below (as retrieved from archive.org).



On December 12, 2016, Slingo moved to dismiss Scibetta’s case.  Among other assertions, Slingo claimed that all of Scibetta’s patents were invalid under 35 U.S.C. § 101.

The Court agreed. With regard to Alice step one, the Court noted that Scibetta’s asserted patent claims were substantially similar to the “method of conducting a wagering game” patent found invalid in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), cert. denied sub nom., Trading Techs. Int’l, Inc. v. Lee, 137 S.Ct. 453 (2016).  Indeed, the Court noted that “there is no meaningful distinction between, on the one hand, the unpatentable abstract idea found in In re Smith and, on the other hand, the method and system claims here.”  Per the Court, the fact that some claims recited, among other things, a “‘means’ for identifying player/dealer positions” did not “change the fact that [BANKERS & BROKERS] stems from a patent ineligible abstract idea.”

With regard to Alice step two, the Court found that BANKERS & BROKERS “reflects well-understood, routine, and conventional wagering activity” such that “Plaintiffs made no technical improvement on the original abstract idea of a card wagering game using a standard deck of cards.”  The mere implementation of such a game on a computer did not change the Court’s analysis: “the claims do nothing more than simply describe the application of the game-related abstract ideas to a generic computer system.”

Scibetta’s case is not doomed.  Scibetta still has a viable claim for misappropriation against Slingo.  Moreover, while Scibetta’s trademark and unjust enrichment claims were also dismissed by the Court, the claims were dismissed without prejudice and largely based on pleading deficiencies.  As such, Scibetta will be afforded an opportunity to amend and supplement his complaint.

This case illustrates the difficulties of enforcing patents that, despite their presumption of validity, were granted prior to the Alice decision when the USPTO was using a different standard of examination.  A trend is appearing where the presumption of validity applied to those patents by courts appears to be inherently lower than that given to more recently granted patents.  Scibetta asserted five patents, and not one survived a motion to dismiss.  Those looking to acquire patent portfolios, for example, should be particularly wary of purchasing patents which may look great but may face significant hurdles during enforcement.  Sometimes, a single strong patent is worth more than a hundred unenforceable ones.

On January 12, 2018, photographer Christopher Sadowski sued IGN Entertainment, Inc. (“IGN”) for copyright infringement.  The copyright in question: a photograph of the Pokémon GO homepage on Sadowski’s cell phone, similar to (but not the same as!) the stock photo shown below.


Sadowski licensed his photograph to the New York Post for a July 12, 2016, article regarding a man who got caught cheating on his girlfriend through Pokémon GO.  It appears that IGN may have infringed Sadowski’s copyright by using the image when discussing the New York Post article in an IGN Hungary article titled “6 Crazy Pokémon GO Stories.”  The image is absent from IGN’s U.S. version of the article.

However, Sadowski’s case may have an Achilles' heel.  Because Niantic and Nintendo have intellectual property rights in their game (including the login screen), Sadowski’s photograph is arguably a derivative work, and his copyright would thereby extend only to the “material contributed by the author of such work, as distinguished from the preexisting material employed in the work.”  That’s not likely to be much.  Moreover, whatever minimal copyright Sadowski has in his photo “does not imply any exclusive right in the preexisting material.”  Lastly, protection for a derivative work using someone else’s material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully (e.g., without the appropriate license).  In other words, there’s a fair argument that Sadowski’s photograph rights are only as good as Nintendo and/or Niantic will allow them to be.

Sadowski’s case against IGN is a cautionary tale for Internet content creators. While many questions about the applicability of fair use on the Internet exist, it remains a bad idea to use images from other websites–even news websites–without appropriate permission.  Indeed, a royalty free version of the exact same photo exists and could have saved IGN a lot of grief.
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