Patent Arcade

Back in July 2006, Anascape Ltd. sued Microsoft and Nintendo over various game controller patents, including United States Patent Numbers 5,999,084; 6,102,802; 6,135,886; 6,208,271; 6,222,525; 6,343,991; 6,344,791; 6,347,997; 6,351,205; 6,400,303; 6,563,415; and 6,906,700. Microsoft settled for an undisclosed sum on May 1, apparently before trial. Nintendo, however, fought on... to no avail.

On May 14, 2008, Nintendo was ordered to pay Anascape Ltd. $21 million after a jury found that Nintendo infringed Anascape's patents with its WaveBird and Gamecube controllers for the Gamecube and Wii Classic controller for the Wii. The Wii remote and nunchuck controllers were not accused of infringement in the suit. Nintendo plans on appealing.

The case is Anascape Ltd. v. Microsoft Corp. et al., case number 9:06-cv-158 in the U.S. District Court for the Eastern District of Texas.

Labels: Lawsuits, Patents

The status quo is that video game play methods are patentable subject matter, provided the game play methodology is new, useful, and nonobvious. Never before has there been a case with the potential to limit video game patents as with the In re Bilski appeal. Today the Federal Circuit heard oral arguments in this case, en banc (i.e., the entire court), including arguments from two amicus parties, which is almost unheard of. A summary of today's arguments is provided below, as prepared by Bradley C. Wright of Banner & Witcoff. The views expressed in this posting are the views of Mr. Wright, and not necessarily the views of Banner & Witcoff:

FEDERAL CIRCUIT MAY CLAMP DOWN ON PROCESS PATENTS

by Bradley C. Wright

Banner & Witcoff, Ltd.

On May 8, 2008, the U.S. Court of Appeals for the Federal Circuit held a rare en banc hearing to determine what constitutes a patentable process under the patent laws. The appeal was from the U.S. Patent and Trademark Office (PTO), which had rejected Bilski’s patent application for a method for managing consumption risk costs of a commodity. The claimed process included three steps involving various transactions between a commodity provider and market participants in a way that balanced risk. The PTO rejected the patent application on the basis that it was not a “process” as that term is defined in the patent statute and earlier court decisions. According to the PTO, in order to be patentable, a process must either be tied to a particular machine, or it must transform a tangible article to a different state. Because Bilski’s claimed invention did neither, it did not meet the definition of a “process.”

Bilski’s attorney argued to the court that a process should be patentable if it produces a “practical result,” regardless whether it is tied to a machine or transforms something tangible. According to Bilski’s attorney, the various transactions recited in the claim were very specific and involved real-world activities. Several of the judges appeared to have difficulty agreeing with Bilski’s proposed “real-world” test for patentability. Bilski also argued that the more specific a patent claim is, the less likely it is to constitute an abstract idea, which the Supreme Court has stated is unpatentable. Several of the judges also appeared to question whether the “useful, concrete and tangible” test seemingly created in its earlier State Street Bank case provided a workable standard to judge patentability, but Bilski’s attorney endorsed the continuation of that standard.

Professor Duffy argued on behalf of the Regulatory Data Corp., one of many amicus parties in the case, that the PTO has taken too narrow a view of what is a patentable process, and urged the Federal Circuit not to draw any bright-line rules. Instead, Duffy proposed that the court look at various factors to determine whether a process was patentable. He argued that the breadth of the claim should be one factor to consider, and seemed to agree that the degree to which the claim was connected to “real-world” activities could be another factor, but the judges seemed to have difficulty eliciting a clear list of factors that should be considered or which might be more important than others. He also criticized the requirement that there must be something tangible and physical in order to constitute a patentable process. Some of the judges appeared to have difficulty accepting the lack of any concrete standard under this “factor-based” test.

The PTO argued that the U.S. Supreme Court decision in Diamond v. Diehr made it clear that in order to be patentable, a process must either be tied to a machine or must transform physical subject matter. The judges explored whether throwing a baseball “transformed” the baseball in a patentable way, which the PTO answered in the negative. One of the judges asked whether a method of performing chiropractic might constitute a patentable “transformation,” but the PTO did not take a position one way or another on that question. Some of the judges expressed concern that adopting a rigid rule might eliminate patents on software, but the PTO responded that most software implemented on computers would still be patentable because they transformed the computer and the software was tied to a machine. Chief Judge Michel pointed out that the Supreme Court had previously ruled that not every process tied to a machine would be patentable if there was insignificant “post-solution activity.”

Bill Lee argued on behalf of the financial services industry (another amicus) that the court should adopt a factor-based test based on three principles: First, abstract ideas and mental processes should not be patentable. Second, a process involving a physical transformation of matter would normally be patentable, but he rejected the idea that throwing a baseball “transforms” the ball in any way. Third, a process that is tied to a physical machine in a non-conventional way might be patentable, but not if it was tied in a conventional way. Several of the judges questioned whether “non-conventional” should be an added requirement for a process, given that every process must already be novel and nonobvious in order to qualify for a patent.

Finally, Bilski’s attorney in rebuttal argued that the information recited in Bilski’s patent application constituted something that was “physical” and he reiterated his point that there was real-world interaction recited in the claim, which was all that was needed to satisfy State Street Bank’s “useful, concrete and tangible” test.

Although it is difficult to predict what the court might say in ruling on Bilski’s patent application, it seems likely that the PTO’s decision will be upheld and Bilski’s claim to a method of managing risk will not be deemed to be patentable. Two of the judges appeared to take a broad view of patentable subject matter, leaving patentability to be determined under the remaining the standards of novelty, nonobviousness, and definiteness. Several judges appeared concerned about eliminating broad categories of invention such as computer software or financial industries. Some of the judges seemed concerned about allowing process patents only where the process was tied to a particular machine or transformed subject matter in some way. But a majority of the judges appeared to have difficulty accepting that Bilski’s claim was something that the patent laws were intended to cover.

In this author’s opinion, the most likely outcome is that the Federal Circuit will create two safe harbors for process patent patentability, and leave open the door to future technological developments that might fall within additional safe harbors. The two safe harbors would be that a process involving steps tied to another category of invention (e.g., a machine or a composition of matter) could be patentable, and a process that transforms something tangible could be patentable. Mere manipulation of numbers, without more, would not be patentable. Bilski’s claim, which seems to recite intangible principles of arranging a financial transaction in a certain way, would fail the test. Similarly, patents involving methods of playing sports or other activities lacking machinery or other tangible things might not survive the court’s decision. But the court is likely to tread carefully so that it does not wipe out patents in whole industry areas, such as banking and computer software. And the court will likely refine its earlier State Street Bank decision to clarify that “useful, concrete and tangible result” is not enough for patentability.

Labels: Lawsuits, Patents

Today the U.S. District Court for the Eastern District of Virginia granted Tafas' and Smithkline Beecham's Motions for Summary Judgment, effectively holding that the USPTO's proposed 5/25 and 2+1 rules regarding claims and continuation practice are illegal, and therefore null and void.

Read the opinion here:
GSKSummJudgOPINION.pdf

The case is: Tafas v. Dudas, Docket No. 1:07cv846, as combined with Smithkline Beecham Corporation v. Dudas, Docket No. 1:07cv1008, in the Eastern District of Virginia, before judge Cacheris.

Now we wait to see if there is an appeal...

Labels: Lawsuits, Patents, USPTO

The U.S. Patent and Trademark Office agreed to re-examine online-gaming patent 6,264,560 after the Electronic Frontier Foundation challenged it on the grounds that the technology covered by the patent had been used extensively before it was issued.

The patent is entitled “Method and system of playing games on a network” and allegedly claims all Internet gaming systems that use tournament-style play, display advertisements and have real-time updates of rankings in multiplayer games. Seems pretty broad, except for the fact that it potentially has priority back to December, 1996. The patent issued on July 24, 2001.

Abstract from patent: The present invention is a game playing method and apparatus for automating games such as blackjack, poker, craps, roulette, baccarat and pai gow, wherein players may play continuously and asynchronously, and information related to advertised items can be exchanged between players and advertisers. In one embodiment, each instance of a game is likely unique from all other current game instances. The games do not require a manual dealer and in one embodiment, played in a gaming establishment using low cost gaming stations. The present invention may also be used to play such games on the Internet or an interactive cable television network wherein a game controller communicates with players at network nodes in their homes and at their leisure since there is no game tempo requirement. During a game, advertising is selectively provided by comparing player personal information with a desired demographic profile. Player responses to advertising are used for evaluating advertising effectiveness. The invention is useful for test marketing of products, advertisements, and reduces advertising costs.

Relevant claims:
Claim 1: A method for conducting one or more tournaments, comprising:

identifying players requesting to join one of the tournaments, wherein each tournament includes a plurality of instances of a game for playing by each of the players identified, wherein for each of the players, at least one of the following (a) and (b) must be satisfied for the player to complete one of the tournaments:

(a) a predetermined number of instances of the game must be played by the player;

(b) a predetermined amount of time must elapse between the commencement of the tournament and the termination of the tournament;

for each tournament, the following steps are performed:

(A1) selecting the identified players to be included in the tournament;

(A2) grouping the players into groups, wherein for each group, the players therein compete against one another in playing instances of the game;

(A3) determining one or more winning players for each group;

(A4) establishing a modified version of the game by changing a rule of the game while retaining another rule for the game;

(A5) combining the winning players from different groups into one or more new groups for competing against one another in playing instances of the modified version of the game.

Claim 81: A method of playing a game on the Internet, comprising:

first receiving player identification at a game playing Internet accessible node (GPIAN) for first and second players;

transmitting, via the Internet, from the GPIAN, first information related to communications between: (a) the GPIAN, and (b) a first Internet accessible node from which the first player communicates with the GPIAN;

wherein said first information is utilized in subsequent Internet communications between the GPIAN and the first Internet accessible node;

causing said first information to be stored on the first Internet accessible node so that it is available in subsequent different Internet connections by the first player;

second receiving, via the Internet, at the GPIAN, first responsive information indicative of said first information being present on said first Internet accessible node;

first playing with the first player a first game, wherein one or more game play representations are transmitted to the first player via the first Internet accessible node;

second playing with the second player a second game, wherein one or more game play representations are transmitted to the second player and from the GPIAN while the first player is playing the first game;

playing of a third game between said GPIAN and the second player, wherein a third collection of one or more game play representations is transmitted to the second player, and wherein the transmissions of the game play representations for the third collection and the first collection overlap in time;

wherein said step of second receiving at the GPIAN occurs when the first player has reconnected the first Internet accessible node to the Internet after said first information has been stored on the first Internet accessible node and said first Internet accessible node has disconnected from the Internet.

Claim 87. A method of playing a game on a communications network, comprising:

receiving, at a game playing node of the network, a request for selecting a pace of play of an instance of the game by a first user at a first node of the network;

first transmitting game plays between said game playing node and the first user using network communications between the game playing node and the first node, wherein at least a second user has played an instance of the game; and

transmitting to the first node a ranking of said second user, wherein the ranking is indicative of a proficiency of the second user in playing the game.

Claim 92. A method of playing a game on a communications network, comprising:

receiving at a game playing node on the network, a contact by each of a plurality of users, via a corresponding node on the network for the user, for initiating a corresponding instance of the game between the game playing node and the user's corresponding node, and at least some of said instances overlap in time;

transmitting game plays between said game playing node and a first of the users, for the corresponding instance of the game;

transmitting from the game playing node to the corresponding node of the first user, the ranking of a second of the users, wherein said ranking is indicative of a proficiency of the second user in playing the game, and said ranking is updated to present a change in said ranking while the first user is playing the game.

Claim 94. A method of playing a game on a communications network, comprising:

first receiving, from each of a plurality of users via a corresponding node for the user on the network, a contact at a game playing node on the network, so that each of the users initiates a corresponding instance of the game between the game playing node and the user's corresponding node, and at least some of said instances overlap in time;

second receiving, at the game playing network node from a first of the users via the first user's corresponding network node, a request for selecting a pace of play of the corresponding game instance;

playing, by the first user, the corresponding instance of the game with the game playing node at the pace selected by the first user.

Claim 95. An apparatus for playing a game on a network, comprising:

a display area for electronically displaying an instance of the game to a first user;

an input area for allowing the first user to input a game play;

a communications network connection for communicating, on a network, game related information, between: (a) one or more of said display and said input area, and (b) an addressable node on said network accessible by a network address available to said apparatus;

wherein a plurality of users communicate with said addressable node for playing instances of the game; and

wherein between at least a majority of game plays by the first user, there is a game play related network transmission via said communications connection; and

a game speed of play control for allowing the first user to control the pace of the instance of the game.

Claim 102. An apparatus for playing a game on a network, comprising:

a display area for electronically displaying an instance of the game;

an input area for allowing a first user to input a game play for said instance of the game;

a communications network connection for communicating game related information between said apparatus and a game controller, wherein said game controller communicates with said apparatus via a network, said network also connected to additional network nodes for allowing simultaneous play of instances of the game with the game controller by a plurality of users;

a control for allowing the first user to cancel a previously entered wager;

a card reader, wherein when an identification card identifying the first user is provided thereto, data identifying the first user is communicated to the game controller.

Claim 103. An apparatus for playing a card game electronically, comprising:

a card generator for generating one or more electronic card representations for playing the card game;

a game playing engine for playing a first electronic instance of the card game between a first player and a substantially electronic dealer module, wherein the first player is dealt a first sequence of the card representations, and wherein a second player plays a second instance of the card game with the dealer module so that said first and second card game instances overlap in time, and wherein the second player receives a second sequence of the card representations; and
wherein, for an initial series of one or more plays by said first player using said first sequence, when said second player also initially plays said initial series of one or more identical plays using said second sequence, then for corresponding identical plays by said first and second players, their corresponding hands of card representations are identical.

Claim 104. An apparatus for playing a card game electronically, comprising:

a card generator for generating card representations for playing said card game electronically;

a game playing engine for playing said card game with a plurality of players simultaneously, wherein said game playing engine transmits, for each player, a corresponding collection of one or more of said card representations through a communications network to the player;

a timer in operative communication with said game playing engine for changing a time limit for accepting an input from a first of said players when said first player transmits a communications network request to change a speed of play of said game.

Labels: Patents, USPTO

After receiving a letter accusing them of patent infringement, Activision filed a declaratory judgment action March 12, 2008, against Gibson Guitars, asking the court for finding of invalidity and noninfringement. Gibson is asserting that it has a patent on a musical performance simulation, which Gibson alleges Activision infringes via its popular Guitar Hero games.

The lawsuit was filed in the Central District of California. The patent is U.S. Pat. No. 5,990,405, entitled "System and Method for Generating and Controlling a Simulated Musical Concert Experience," issued Nov. 23, 1999. At a glance, the broadest claim appears to be:

13. A system for simulating participation of a user playing a musical instrument in a pre-recorded musical performance having audio and video portions, the musical instrument producing instrument audio signals at an instrument audio output when the instrument is played, comprising:

a. a source playback device for playback of the audio and video portions of the pre-recorded musical performance through corresponding source audio and source video outputs;

b. a source audio control device for controlling one or more characteristics of the audio portion of the pre-recorded musical performance during playback, the source audio control means operably connected to the source audio output and to the instrument audio output and having a controlled audio output; and

c. the source audio control device is responsive to the instrument audio signals whereby at least one characteristic of the audio portion of the pre-recorded musical performance is controlled by playing of the musical instrument by the user.

We'll keep tracking this case and let you know of any major developments.

Labels: Lawsuits, Patents

Ever wonder what the basic principles are for protecting your video game based on intellectual property law? Steve and I wrote this article, recently published on Gamasutra, that provides a brief introduction to what you need to know to help protect your game and your brand.

Download PDF version.

Labels: Articles, Copyrights, Patents, Resources

Word on the street is that MicroUnity and Sony Computer Entertainment America have settled their ongoing patent dispute regarding Sony's PlayStation products. The two companies have asked for a 30-day stay of all deadlines in the pending litigation in the Eastern District of Texas so they can put the finishing touches on their settlement agreement. MicroUnity first filed the lawsuit against Sony in November 2005, accusing the Japanese company of infringing 10 patents with its Sony Playstation 2, Playstation 3 and Playstation Portable game consoles. The patents cover various semiconductor integrated circuits and system processes that MicroUnity claimed were used to make the various Sony products.

Read more here.

Labels: Lawsuits, Patents

Ok, I've spent the better part of two evenings finishing the campaign mode in Halo 3, so it's about time to come out of my self-induced Halo 3 fog. A colleague of mine and I were discussing about a month or so ago the fact that Linden Lab's terms of service for Second Life are very prohibitive of patents and patent rights being enforced by SL residents. Well there is a fairly comprehensive post on Virtually Blind regarding the topic that I feel compelled to link to. It's an interesting read. Enjoy.

Labels: MMOG, Patents

Method of Playing a BINGO Game with Progressive Jackpot

Issued on January 9, 1996 to Gary Weingardt and assigned to Gary Weingardt Trust.

Summary:

In case you were bored with the original game, or thought that BINGO was a game for your grandparents… This patent attempts to create a more challenging BINGO game than the traditional by adding two columns and two rows to the BINGO card and adding an additional 72 numbered balls. The new and improved game would be called BINGOES. The new and improved BINGO card could be used to play the traditional BINGO game or BINGOES. The card could be marked with different colors in order to play the traditional BINGO game. i.e. the five rows by five columns may have a white background, where the remaining two columns and two rows would have a red background to play BINGOES. In BINGOES, a winning combination could be a straight line of seven numbers in a row either vertically, horizontally or diagonally. Additional payouts could be made for the four corners, the eight spots around the center free space, the outside rectangle, or an intermediate rectangle. The operator can designate payouts based on the degree of difficulty of obtaining the winning combination. In addition, a user could play the traditional game of BINGO while simultaneously playing BINGOES, increasing the odds of winning. Claims appear limited to a variation that includes a progressive jackpot in addition to usual game jackpot.

Exemplary Claim:

The method of playing a game of bingo comprising:

a) providing a player with a bingo card consistent essentially of:

a. a plurality of numbered spaces formed as a matrix having seven rows and seven columns;

b. a first indicium designating a portion of the matrix comprising five contiguous rows and five contiguous columns whereby a five-by-five bingo game can be played thereon; and

c. a second indicium designating a portion of the matrix comprising two contiguous rows and two contiguous columns whereby, when combined with the first indicium, a seven-by-seven bingo game can be played thereon;

b) providing a plurality of bingo balls each having individual numbers corresponding to the numbered spaces on the bingo card;

c) a player making a first wager to be eligible for the five-by-five bingo game and a second wager to be eligible for the seven-by-seven bingo game;

d) randomly selecting consecutive bingo balls;

e) awarding a first preselected amount when the player achieves a predetermined winning combination on the five-by-five matrix of the bingo card;

f) awarding a second preselected amount when the player achieves a predetermined winning combination on the seven-by-seven matrix of the bingo card;

g) a player making a third wager to be eligible for a progressive jackpot pool;

h) designating a portion of the third wager to a separate progressive jackpot pool;

i) establishing a predetermined combination as a winning combination for the progressive jackpot pool; and

j) awarding the progressive jackpot pool to the player when he achieves the predetermined winning combination on the bingo card.

Labels: Patents

System and Method for Providing User Input to Character Animation

Issued on January 31, 2006, to Electronic Arts Inc.

Summary:

This patent issued to EA, discloses a system and method for providing real-time control over character animation. Basically this patent allows the user to change a character’s animation by real-time input into a joystick. For example in a golf game, the user can control the back swing, forward swing, the power or speed of the swing, whether the ball is hooked, sliced or straight, or whether or not the character takes a practice swing. The input from the joystick is monitored real time by a processor which converts motions in the joystick, such as pulling the joystick handle backwards into a back swing. Since the input is detected real-time, the user is able to change the animation continuously, i.e. the user can change the golf swing in the middle of the back swing, which might not improve your score.

Exemplary Claim:

A system for providing user input for animated character display on an animation display system comprising:

an analog input module configured to receive user analog input related to animated character display and to normalize the user analog input, thereby creating normalized user analog input;

a control state machine module configured to receive normalized user analog input from the analog input module and create a time-based state based on the received normalized analog input, the time-based state modeling an intent of the user with respect to the animated character, and

an animation state machine module configured to receive the time-based state from the control state machine module and to create a list of animations and at least one blending percentage for combining the list of animations based on the time0based state, and providing the list of animations and at least one blending percentage to the animation display system.

Labels: Patents

Bingo Game Method

Issued on December 8, 1995 to Inventor Gary Weingardt

Summary:

This invention attempts to reinvigorate the classic game of Bingo and lure the gamblers away from video poker, slot machines and table games by providing larger bingo jackpots. The invention includes a bingo card with different colored squares, or a board readout that displays the numbers and their associated colors. The colors may be Blue, Red, Green, and Yellow, etc., and specific jackpots or progressive payouts are associated with each color. For example, a player could obtain the largest Bingo by getting a Bingo of all Blue numbers. The next highest payout might be a Green Bingo, followed by a Red Bingo and then a Yellow Bingo. The smallest payout would then go to a multi-colored Bingo. In this example, there would be the smallest amount of numbers designated as Blue, the next smallest as Green, a larger amount of Red, and the remainder of numbers would be Yellow. There may even be a payout for a “Case Bingo” meaning a Bingo which the player has missed by one number.

Exemplary Claim:

The method of playing a game of bingo comprising:

a) providing a player with a bingo card having a plurality of numbered spaces;

b) providing a plurality of bingo balls each having individual numbers corresponding to the numbered spaces on the bingo card;

c) providing an electronic number reader bingo board having a plurality of numbered spaces corresponding to the number of bingo balls used in the bingo game;

d) a player making a wager to be eligible for the bingo game;

e) randomly designating a portion of the numbered spaces on the bingo board with a first designated marking;

f) designating the remaining numbered spaces on the bingo board as a second designated marking;

g) randomly selecting consecutive bingo balls;

h) if the player achieves a predetermined winning combination on the bingo card of selected numbers having only the first designated marking, awarding the player a first preselected amount.

[Editor's Note: based on the breadth of that claim, at first blush it appears that the claim would read on a Bingo game in which there is a "four corners" bingo in addition to the usual bingo methods. That having been said, I have not read the entire specification or reviewed the prosecution history.]

Labels: Patents

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

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

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

Read more here, and here.

Labels: Lawsuits, News, Patents

Battle Method with Attack Power Based on Character Group Density

Issued May 4, 2004, assigned to Koei Co., Ltd.

Summary:

Although the Sam Fishers, John Matrixs, Solid Snakes, and John Rambos of the world would gladly demonstrate how false this premise is, this patent contends a soldier’s attack and defense strength synergizes with the number of surrounding support soldiers. For example, a bow soldier’s attack strength is increased according to the number of surrounding bow soldiers transverse to the enemy’s army. Therefore, five archers in a line parallel to the enemy’s army would have an attack strength greater than five archers in a line perpendicular to the enemy army. This causes individual soldiers within a formation to have a variable attack/defense strength (displayed to a user by the soldier’s color). The differences in the attack/defense strength are due to changes in the soldier’s support area. The support area is defined by their relative position in the overall formation, the predefined size and shape of the support area, and the type of soldiers in the current soldier’s support area (e.g., archer, foot soldier, etc.). Additionally, different types of soldiers have support areas of different shapes. Interestingly, the patent manages to offend a plethora of game characters by capping a soldier’s attack/defense strength at a maximum value to prevent it from exceeding the strength of “an actual person.”

Exemplary Claim:

A character group battle method in which a plurality of characters that are displayed in a three-dimensional virtual space form groups of friends and enemies that battle against one another, comprising the steps of:

calculating the position of each of the characters in the three-dimensional virtual space;

calculating the character number of the other one or more friend characters existing in a predetermined region about the character; and

calculating at least one of an attack or a defense value respectively expressing at least one of an attack power or a defense strength of the character on the basis of the character number.

Labels: Patents

We previously reported that Konami Corporation sued Roxor Games, Inc. in the Federal District Court for the Eastern District of Texas, alleging patent infringement, trademark infringement, unfair competition, trademark dilution, and trade dress infringement, under both Federal and Texas law, regarding Konami's game Dance Dance Revolution. It appears that we won't see trial or a decision on this case, as they settled out of court as of last autumn (ok, I'm a little late posting on this... sorry). The settlement gives Konami full control of In the Groove's intellectual property rights.

More details here.

Labels: Copyrights, Lawsuits, Patents

Today the Free Software Foundation released version 3 of the GNU General Public License. The new version of the license contains a lengthy patent license provision, copied below, that users should be aware of. Given that GNU GPLv3 might apply to some code used in your game, you should read it and make sure you understand all its ramifications. Give us a call if you need legal representation regarding open source contract issues, and we can discuss your situation.

---cut here---

11. Patents.

A “contributor” is a copyright holder who authorizes use under this License of the Program or a work on which the Program is based. The work thus licensed is called the contributor's “contributor version”.

A contributor's “essential patent claims” are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version. For purposes of this definition, “control” includes the right to grant patent sublicenses in a manner consistent with the requirements of this License.

Each contributor grants you a non-exclusive, worldwide, royalty-free patent license under the contributor's essential patent claims, to make, use, sell, offer for sale, import and otherwise run, modify and propagate the contents of its contributor version.

In the following three paragraphs, a “patent license” is any express agreement or commitment, however denominated, not to enforce a patent (such as an express permission to practice a patent or covenant not to sue for patent infringement). To “grant” such a patent license to a party means to make such an agreement or commitment not to enforce a patent against the party.

If you convey a covered work, knowingly relying on a patent license, and the Corresponding Source of the work is not available for anyone to copy, free of charge and under the terms of this License, through a publicly available network server or other readily accessible means, then you must either (1) cause the Corresponding Source to be so available, or (2) arrange to deprive yourself of the benefit of the patent license for this particular work, or (3) arrange, in a manner consistent with the requirements of this License, to extend the patent license to downstream recipients. “Knowingly relying” means you have actual knowledge that, but for the patent license, your conveying the covered work in a country, or your recipient's use of the covered work in a country, would infringe one or more identifiable patents in that country that you have reason to believe are valid.

If, pursuant to or in connection with a single transaction or arrangement, you convey, or propagate by procuring conveyance of, a covered work, and grant a patent license to some of the parties receiving the covered work authorizing them to use, propagate, modify or convey a specific copy of the covered work, then the patent license you grant is automatically extended to all recipients of the covered work and works based on it.

A patent license is “discriminatory” if it does not include within the scope of its coverage, prohibits the exercise of, or is conditioned on the non-exercise of one or more of the rights that are specifically granted under this License. You may not convey a covered work if you are a party to an arrangement with a third party that is in the business of distributing software, under which you make payment to the third party based on the extent of your activity of conveying the work, and under which the third party grants, to any of the parties who would receive the covered work from you, a discriminatory patent license (a) in connection with copies of the covered work conveyed by you (or copies made from those copies), or (b) primarily for and in connection with specific products or compilations that contain the covered work, unless you entered into that arrangement, or that patent license was granted, prior to 28 March 2007.

Nothing in this License shall be construed as excluding or limiting any implied license or other defenses to infringement that may otherwise be available to you under applicable patent law.

---end of provision---

Labels: Copyrights, News, Patents

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

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

Not exactly bedside reading.

The case is Beneficial Innovations, Inc. v. Blackdot, Inc. et al., Case No. 2-07CV-263, in the District Court for the Eastern District of Texas, filed June 20, 2007. We'll add this case to our watch list and let you know what happens...

Labels: Lawsuits, Patents

If you're looking for copies of patents, here are a few resources to help you out:
1) The USPTO web site. Great for getting text searchable copies
2) Google's patent site. Great for searching patents and reviewing text searachable results
3) www.PatentMonkey.com. Free searching and PDF copies of patents, or you can use the form below.

Labels: Features, Patents

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

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

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

Labels: Lawsuits, Patents

(Fortune Magazine) -- May 14, 2007: Free software is great, and corporate America loves it. It's often high-quality stuff that can be downloaded free off the Internet and then copied at will. It's versatile - it can be customized to perform almost any large-scale computing task - and it's blessedly crash-resistant.

There's a shadow hanging over Linux and other free software, and it's being cast by Microsoft (Charts, Fortune 500). The Redmond behemoth asserts that one reason free software is of such high quality is that it violates more than 200 of Microsoft's patents. And as a mature company facing unfavorable market trends and fearsome competitors like Google (Charts, Fortune 500), Microsoft is pulling no punches: It wants royalties. If the company gets its way, free software won't be free anymore.

Read full story here.

Needless to say, this applies to free and open source software (FOSS) games as well.

Labels: News, Patents

While technically not a video game case, this landmark Supreme Court case just (expectedly) rocked the patent world. The technology: drive by wire for automobiles. The issue: when is an invention nonobvious? The answer: don't know for sure, but we DID learn a little more about when an invention IS obvious--whenever the invention is merely the combination of known elements with predictable results.

This case will have a ripple effect in the patent world, regardless of technology area. No longer is the Federal Circuit's "Teaching, Suggestion, Motivation" test the BMOC. While the TSM test is one way to determine obviousness, it is by no means the ONLY way to do so. The KSR case is a welcome relief for all those who have been advocating that it's too easy to get a patent under the Federal Circuit's TSM regime, but at the same time the post-KSR era will experience higher prosecution costs and less certainty regarding patentability of any invention (at least in the short term, until some clarity is provided through subsequent caselaw).

How does this apply to video game patents? Folks have been criticizing patents for years by saying that the USPTO is granting patents to combinations of known ideas and concepts, including game play patents where the claimed "invention" is a combination of known elements found in previous video games. Such patents were being granted because there was no prior art that explicitly or implicitly suggested the combination, even when each of the combined elements was being used in its normal manner, i.e., providing predictable results. No longer will that be the case. Instead, the price of poker, i.e., the "inventiveness" required to get a patent, just went up, and more will be required of game developers before a patent will be granted for a game play concept.

There will be many who relish in the nuances of the KSR opinion's text, and provide lengthy analysis regarding its mantras, so I won't go into all that here. But I will provide some notable quotes:

• "If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability."
• "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
• "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."
  
• "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
  

The entire opinion may be found here. Happy reading!

Labels: Lawsuits, Patents

People often ask the same introductory questions when they first start seeking patent advice and counsel, and are often concerned about getting billed for the attorney's time just to learn the answers to a few basic questions. I typically don't bill for such initial consultations and introductory questions (I say "typically" because, as attorneys, we usually don't make absolute statements... ;)

The proof is in the pudding, right? So we have started a new feature here at the Patent Arcade: Patent FAQs. The Patent FAQs should answer your initial questions to help you decide whether to consult a patent attorney or not. If you have a questions that's not on the list, then send us an email and we'll endeavor to add it.

Labels: Patents

Have a question that is not covered here? Send us an email, and we’ll endeavor to keep this FAQ updated. Keep in mind that this is not legal advice, as each scenario factually differs. Always discuss your specific situation with your own patent attorney. You may reach me (Ross Dannenberg) at (202) 824-3153 or rdannenberg (at) bannerwitcoff (dot) com with further questions.

I think I invented something and I’d like to patent it. What do I do now?

Talk to a patent attorney. Before you make any public uses or disclosures of your invention, before you offer it for sale to anyone, and before you publish anything describing your invention, talk to a patent attorney, as each of these actions can have a negative impact on the patentability of your invention. If you’ve already done one of these things, it is even more imperative that you talk to a patent attorney to determine whether you still have rights to your invention, because there is only a 1 year grace period in the United States to file your patent application after you’ve done one of those things.

What will a patent attorney do for me?

A patent attorney will discuss the legal requirements that must be met before the United States Patent & Trademark Office (USPTO) will grant you a patent, and will also discuss your invention with you to learn about the invention so that he or she can draft a patent application and file the patent application on your behalf in the USPTO. A patent attorney may also assist with a "prior art" search, where previous patents and other documents are search to see if anyone has already created the same or a similar invention as you.

My invention is complicated. Will an attorney be able to understand it?

In order to practice patent law, patent attorneys must pass a special Patent Bar exam administered by the USPTO. In order to be eligible to take the Patent Bar, an attorney must have a scientific, engineering, or computer science degree.

Should I do anything to prepare to meet with the patent attorney? What level of detail and information will a patent attorney need?

A patent must describe an invention with enough detail so that someone of “ordinary skill in the art,” after reading the patent, can make and use the invention. You will therefore need to provide enough detail as if you were describing your invention to a competent person in your own field of work. A patent must also describe the “best mode” contemplated by the inventor of making and using the invention, so make note of any special tricks or modifications that need to be performed or made in order to get the invention to work best. The more of these types of details you can gather ahead of time, the more efficient the patent drafting process will go.

I’ve seen a patent before, and it had a bunch of drawings. Where do those come from?

Ideally, from you. While your patent attorney may refine the drawings and add additional drawings to help describe and illustrate your invention, you (the inventor) are in the best position to create rough (napkin) sketches or drafts of diagrams, flow charts, data flow, schematics, etc.

There are a bunch of numbered sentences at the end of a patent. What are those?

The numbered sentences at the end of the patent are the claims. Claims are required to be only one sentence, regardless of length, so they can be a little confusing. However, the claims are the “legalese” that define the boundaries of your invention, and specify what it is that others are not allowed to do. So if anyone performs every element of at least one claim in your patent, then that person infringes your patent.

Who writes the claims?

Given their importance in determining infringement of the patent, the claims should be drafted by a patent attorney. Minor variations to claim language can seriously affect the enforceability and scope of the claims, so anyone other than a patent attorney is discouraged from writing their own claims so that they don’t inadvertently give up some patent rights. Inventors are encouraged to discuss what they consider necessary and inventive aspects of their invention with their patent attorney, and then the patent attorney will craft and tailor the claims to maximize your scope of protection.

This sounds expensive. How much will preparation of the patent application cost?

Keep in mind that a patent is property and, like any other property, is an investment. Most attorneys bill by the hour, or some fraction thereof. The amount of time it takes to prepare a patent application naturally depends on the complexity of the invention, the level of detail provided, preparation by the inventor, and the number of claims required to adequately protect the invention, among other factors. Patent applications can cost $5,000 to $20,000 or more in attorneys’ fees to prepare and file, depending on a variety of these factors. Additional fees may be charged if a professional draftsman has to prepare drawings from the inventor’s or attorney’s sketches, typically under $1,000. There are also filing fees when you file the application in the USPTO.

How much does filing cost?

The USPTO charges various filing fees based on whether the applicant is considered a small or large business entity, and also based on the number of claims in the application. For a large business entity, filing fees about $1000 + extra claims fees if your application concludes with more than an allotted number of claims. For a small business entity, filing fees are about $500 + extra claims fees. A full schedule of fees is maintained by the USPTO.

How does the USPTO determine if my invention is patentable?

An invention is patentable if it is new, useful, and nonobvious. A patent examiner will be assigned to your case, and that person will search for “prior art” such as previous patents, publications, white papers, journals, magazines, known products, etc., to determine if your invention is patentable. The patent examiner will analyze the prior art to determine whether anyone else has already invented the same thing (i.e., your invention is not new), or if your invention is a specifically suggested combination of things that have been done before (i.e., your invention is obvious). The USPTO will provide a written report, referred to as an Office Action, that details its reasoning for why or why not you should receive a patent for your invention.

How long will it take to receive an Office Action? What happens next?

Application pendency varies, but the USPTO is notoriously backlogged. Expect to wait at least 2-3 years for the USPTO to send a first Office Action. When you (or your patent attorney) does receive an Office Action, your patent attorney will analyze the arguments made by the USPTO, discuss them with you, and then craft written arguments and or claim amendments in response to the Office Action. This is the other major cost associated with obtaining a patent, and can cost $2,000 - $4,000 or more to respond to complex Office Actions.

The USPTO has determined my invention is patentable… now what?

When you receive a Notice of Allowance from the USPTO, you have three months to pay the Publication and Issue Fees ($1,700 as of this writing). It will then take the USPTO 2-4 months to assign a patent number to you and publish the patent.

The USPTO has determined my invention is not patentable. Do I have any other options?

You can always appeal a rejection by the USPTO. The first step is to appeal the examiner’s decision within the USPTO to the Board of Patent Appeals & Interferences (BPAI). If the BPAI agrees with the examiner, then you can appeal further to the federal courts of the United States.

Labels: Features, Patents, Resources

As everyone knows by now, Sony settled with Immersion for about $150M. So while the primary issues have been decided, there is still a little cleaning up to do. Namely, there was a third party involved in the litigation, Internet Services, LLC (ISLLC), which claimed it had some rights in the Immersion patents via a license from Immersion, and thererfore ISLLC should be entitled to some of that $150M. The district court initially dismissed all of ISLLC's claims, and ISLLC appealed. Today the Federal Circuit affirmed the district court's decision to dismiss ISLLC's claims, confirming that ISLLC lacks standing to sue Sony based on its limited license to the Immersion patents.

The full decision can be found here.

Labels: Lawsuits, Patents

Alas, Sony has agreed to fork over $150M to Immersion to settle their ongoing patent dispute. The deal ends a five year battle including allegations of fraud and misconduct after a jury initially awarded Immersion $82M in damages. With the very real threat of an injunction hanging over its head, Sony settled. Most likely because the PS3 is still not selling as well as Sony has hoped, and Sony can't afford to have its still-selling-like-hotcakes PS2 yanked from store shelves.

Read more from Reuters here.

Labels: Lawsuits, Patents

Still trying to wrap your head around intellectual property? The Patent Arcade provides the following video game IP resources for your use. Please keep in mind that all articles and publications are for informational purposes only, and are not intended as legal advice for any given scenario. Always consult an attorney with fact-specific questions if you have a specific scenario you need assistance with. I can be reached at (202) 824-3153, or rdannenberg@bannerwitcoff.com, if you would like to discuss a specific issue or need legal advice. -Ross Dannenberg

The Publications:

• Hey, That's MY Game! IP Protection for Video Games, by Ross Dannenberg & Steve Chang
  
• Film Sanitization, by Ross Dannenberg
  
• Top Ten [types of] Video Game Patents, by Ross Dannenberg & Steve Chang
• Copyright Preregistration of Video Games, by Marc Cooperman & Michael Krashin
• Patent Mythconceptions, by Ross Dannenberg & Steve Chang
• Preserving Patent Rights, by Ross Dannenberg
• IP Primer, by Ross Dannenberg & Jordan Bodner

Labels: Articles, Copyrights, Features, Patents, Resources

TOP TEN VIDEO GAME PATENTS
by Ross Dannenberg & Steve Chang

When the editors at Gamasutra asked us to prepare a list of the top ten video game patents, we initially thought "Hey, no problem, that will be easy." As we’ve dug into this in a little more detail, we realized that what we signed up for was no easy task, because there are quite a few issues that make it difficult to simply whip up a list of the top 10 video game patents.

First, what makes a patent a video game patent? Is it a video game patent if it describes video game play methods? What about hardware? Audio/video processing techniques? There are endless patents that may be utilized in some form or another when playing a video game.

Second, what determines whether a patent is a good patent or a bad patent? Its coolness factor? Financial worth? Something else entirely?

Third, how do you compare patents that cover completely disparate technologies from completely different times? How do you compare the original Pong patent with a patent for giving "kudos" based on driving style? The coup de grace then is this: how do you rank patents that each derive merit from a different one of these metrics?

The fact of the matter is you can’t, because there are many ways in which patents can be valuable. Some patents are widely licensed and bring lots of licensing revenue to its owners; other patents introduce a key technological advance that becomes an industry standard; and other patents possess a certain je ne sais quoi, the “IT” factor of a really neat idea.

Needless to say, given these complexities, this list is fairly subjective, and we would be blown away if no one disagreed with us...

Read the entire article at Gamasutra.com.

Labels: Articles, Patents

The Federal Circuit heard oral arguments yesterday in the Immersion v. Sony appeal. As previously reported, the sole issue on appeal is Sony's allegation of misconduct by Immersion.

Sony's arguments at the hearing attempt to highlight its position that the errors of fact regarding a preexisting licensing agreement and prior art document "could have" changed the outcome of the trial had the errors been corrected, and Sony should thus be entitled to a new trial. Sony argued that it was never afforded a chance to determine whether the error was significant or not, because it never knew about a piece of "hidden" prior art. The court questioned the impact of any error on the ability of Sony to litigate the case fairly, and appears hesitant to second-guess the district court judge who witnessed the entire trial and made a judgment call based on information gathered over the course of time during the litigation.

Immersion countered that any error was immaterial and insignificant, implying that such error should not warrant a new trial. Immersion's counsel also pointed out how little significance the "hidden" prior art document played during trial (e.g., zero references to it by Sony's primary invalidity expert, zero references to it by Sony in closing arguments, etc.). The court questioned the basis for such a conclusion, because how could the hidden piece of prior art play a prominent role at trial when Sony didn't know about it?

While I personally found Sony's arguments to verge on a last ditch effort of a 5 year old whining to a parent "it's not fair," and Immersion's counsel came across a little overconfident (perhaps better prepared?), you never know how the court will rule.

It will likely be months before the court hands down its decision.

Labels: Lawsuits, Patents