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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.


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