In the business of video games, intellectual property protection is critical to success, and Patents, Copyrights, and Trademarks are the bricks with which your IP portfolio is built. The Patent Arcade is the web's primary resource for video game IP law, news, cases, and commentary.
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, here, here, 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.
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’sTri-Dimensional Chess and The Witcher’sGwent 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 February 13, 2018, by Adam Gropper
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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.
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.”
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.
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.
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