WHICH PATENTS HAVE YOU VIOLATED TODAY



WHICH PATENTS HAVE YOU VIOLATED TODAY?

Stephen Rubin, Esquire[1]

Law Office of Stephen Rubin

1496 Teague Drive

McLean, Virginia 22101 USA

Tel | 703-448-6000

Email | sr@



The Prevalence of Patent Litigation

In my years representing developers, the sentiment expressed time and again when the topic of patents comes up is that video game innovation thrives on a free exchange of ideas, an exchange thwarted by the technology land grab fostered by patents. Of late, game developers are learning just how expensive the patent land grab can make their cherished exchange. There has been a recent wave of high profile and high stakes patent lawsuits involving video game developers and publishers, and indications are this is only the initial salvo.

Supreme Court decisions opened the floodgates to patents directed at the video game industry by establishing, first, that computer programs constitute patentable subject matter and, next, that methods of operating and conducting business implemented through technology are also patentable. Today such patents, several hundred explicitly related to video games by recent count, present a minefield for developers.

This paper will examine the reasons patent litigation involving the video game industry is on the rise and what recourse developers have to avoid being swept into such actions, or to escape liability if sued. I will refer to two cases to illustration my comments: Sega of America, Inc. (Crazy Taxi) v. Fox Interactive, Inc., et al. (The Simpsons Road Rage); and American Video Graphics, L.P. v. Electronic Arts, Inc., et al. Both of these cases recently were settled.

Profiles of Patent Plaintiffs

To begin to understand the sources of patent litigation in the game industry it is useful to identify the types of parties bringing these suits and their motivations.

Inventor/Patentees. Let us start with what might be labeled the traditional patent plaintiff. In the video game industry, this is often a large publisher or equipment manufacturer that owns multiple game-related patents. The standard plaintiff invests considerable resources in the creation of technology for use in its own or licensed games. It does so by entering into intellectual property rights agreements with its own employees and with its contract developers. It routinely monitors the technology that is created by these sources for patentability. Its objective is to protect its sizeable investment in what it believes are the unique features of its games or hardware from easy duplication by rivals.

Sega’s suit against developer Radical Games and publisher Electronic Arts for the alleged copying of the patented Crazy Taxi car chase method-of-display is a good example. In this case, Radical Games, developer of the unquestionably similar The Simpsons Road Rage game under license from Fox Interactive, likely was aware of the popular Crazy Taxi game before it embarked on development of its own car chase offering. Sega was equally aware of The Simpsons Road Rage and its purportedly similar car chase method-of -display from the time it announced. Sega maintains it brought the patent suit to protect its Crazy Taxi franchise from Radical Games’ blatant copying. Indeed, there is less question of whether The Simpsons Road Rage infringes at least portions of the Sega patent than there is whether the method of gameplay invention claimed in the patent satisfies the statutory requirements for patentability discussed later in this paper. Radical Games could hardly complain that the Sega patent was unknown or that the resulting lawsuit was completely unexpected. Unfortunately for the purposes of this paper, but common in such cases, the parties have entered into a confidential settlement. The Sega patent remains untested and the damages paid by the defendants, if any, are not disclosed.

Patent Trolls. It is increasingly common for patent infringement actions to be instituted by plaintiffs who, unlike Sega, never practice the patented technology, or even claim involvement in its invention. Instead, they obtain patents secured by others for the exclusive purpose of enforcement and generation of license fees from users. Vilified by some as “patent trolls,” these plaintiffs are said to lie in wait for unsuspecting users to adopt all or parts of the technology monopolized by their patent.[2] That the patent may have been issued many years earlier (since 1995 patents have a life of 20 years from filing) and never have been practiced enables its owner to ensnare defendants who honestly can claim to have independently invented the technology without knowledge of the patent or its contents. Patent trolls are well funded and prepared for the costly exercise of litigation. Indeed, for many their business model is simply to own, enforce and collect fees on a portfolio of patents.

The headline-grabbing suit by patent-holder NTP, Inc., against Research In Motion, Ltd. (RIM), maker of the BlackBerry, in the view of many is patent trolling personified. In the field of video games, American Video Graphics, L.P. (AVG), filed suit in 2004 against the major game publishers based on a patent issued in 1988 entitled “Method and Apparatus for Spherical Panning.” The patent is broadly written to cover the foundation technology of the 3D gameplay experience, snaring virtually all current games. AVG had acquired the patent from its former owner and proceeded to send letters offering to license the technology to publishers accused of infringement. The publishers initially refused to pay AVG for usage rights and initiated a world-wide search, tacitly endorsed by the IGDA,[3] to prove the technology was known and practiced prior to its claimed invention in the AVG patent.

As occurred in the Crazy Taxi case, AVG recently settled with all defendants without disclosure of the settlement terms. However, a partial light has been shined by one of the defendants, Atari. It just reported in financial statements that it paid AVG $300,000 to settle its case in exchange for a release and grant of usage rights.[4] Extrapolating from this one settlement, AVG’s combined payments may exceed $10 million.

Employee/Inventors. There is a reason lawyers hammer away at developer clients to obtain the assignment of patent rights from employees at the outset of employment. The Federal Circuit Court of Appeals, with exclusive appellate jurisdiction of patent cases, ruled in 2000 that an employee of Unisys Corporation had not surrendered his patent rights to inventions he developed for the company on company time because the company had acquiesced in his initial refusal to sign a contract providing for the assignment of such rights and had obtained a later assignment on false promises of additional compensation.[5] The employee-inventor was now empowered to claim Unisys had violated his patent rights. Admittedly, this case is unusual. Most employees routinely sign patent assignment agreements. Those that do not are deemed to have granted their employers implied “shop rights” license to practice the invention without charge provided they were hired with the expectation that their duties would include invention and the ensuing invention is within the scope of their employment. Nonetheless, the potential of employee-originated patent claims is growing as the value of patents increases, commencement of suits becomes more common, and employees are becoming increasing sophisticated about their intellectual property rights.

Patent Damages

Patent plaintiffs are spurred on by the promise of significant damage awards. The prospect of outsized damage awards has caused even large corporations to settle claims rather than gamble on a successful court outcome. The Patent Act authorizes an award of “damages adequate to compensate for infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer. . . .”[6] The method of damage computation is left to the discretion of the trial court. The rule is that damages compensate for the monetary loss of the patent owner, without regard to the infringer’s profit. In the Crazy Taxi patent suit, Sega could argue that its damages are the sales it lost when players purchased The Simpsons Road Rage game instead of Crazy Taxi, and that release of The Simpsons Road Rage stifled the market for Crazy Taxi sequels and other derivative products and works. If the actual pecuniary loss cannot be determined, a “reasonable royalty,” typically established by expert testimony, may substitute.

The trial court may increase the damages awarded by up to three times the actual amount and add interest and court costs, in its discretion. Such increased damages are a punitive sanction, customarily available only upon a judicial finding that the infringer’s conduct was willful or deliberate. As we shall see, the element of deliberateness is an important factor in the adoption of defensive measures. In “exceptional cases,” the court may also award reasonable attorney fees to the prevailing party.[7] Legal fees and costs to the parties of patent litigation can easily enter seven figures. In a case of the magnitude and duration of the BlackBerry suit, patent costs can reach into the tens of millions. Add to that the uncertainty of damage computation and the possibility of judicial trebling of any award, and there is real reason on the part of developers and others to fear patent litigation.

The issue of damages is significant to developers even if they are not sued for patent infringement. Thus far, game-related patent suits have targeted publisher and console manufacturer defendants. However, it is commonplace for game developers to sign publishing agreements in which they agree to indemnify and hold harmless their publisher for any damages resulting from a third-party action against the publisher based upon allegations of patent infringement by the developer. Most contracts are written to require that the developer pay the legal expenses of the defendant publisher, even if the publisher ultimately prevails on the merits. In the AVG patent case, the plaintiff elected to sue only publishers. The complaint allegations, however, clearly covered the actions of many independent developers. I represented several developers asked to produce documents in the AVG suit. To my knowledge, no developer was asked to indemnify its publisher. But this was certainly a possibility and may have occurred in some instances if the litigation had not been settled.

Understanding a Patent

In my experience, a surprising number of game programs are able to navigate the numbing legalese of a patent, particularly software patents. For those not so inclined, and as a refresher for others, it will be useful briefly to review the elements of a patent before tackling the issue of how developers can best avoid becoming patent defendants.

A patent is a right granted by the federal government authorizing the owner to exclude others from making, using or selling the invention “claimed” in the patent for a set period, currently 20 years from the filing date.[8] Once the patent expires, the invention disclosed in the patent enters the public domain and can be practiced freely by all. There are four requirements for what is known as a utility patent. The invention must be:

(1) either a process, machine, article of manufacture, composition of matter or a new use of the preceding four statutory classes;

(2) useful;

(3) novel; and

(4) nonobvious to a person of ordinary skill in the art to which the invention pertains.[9]

Much ink has been spilled to fill out the meaning of these requirements. I will return to them again as each presents defenses to patent validity.

The patent document has a number of parts appearing in a prescribed order. Most important for our purposes are the title, abstract, specification (drawings, background of the invention, summary of the invention, brief description of the drawings, and detailed description of the preferred version of the invention), and the claims.

Nintendo of America Inc. received a patent in August 2005 that is typical of the gameplay patents that are now being issued by the Patent and Trademark Office. The United States patent registration number is 6,935,954. The convention in referring to patents by number is to use the last three digits. This is the ‘954 patent. The title is “Sanity System for Video Game.” The first line of the abstract informs us that this invention involves: “A video game and game system incorporating a game character’s sanity level that is affected by occurrences in the game such as encountering a game creature or gruesome situation.” The specification makes clear that “sanity level” has the wider meaning of the player or game character’s “mental state.” The patent specification acknowledges that the claimed invention adds to the existing means of customizing gameplay to a game character’s “physical” state. We are told:

Video games, such as RPGs and the like, typically include a game character that proceeds through the game while one or more physical conditions of the character, such as injury, strength and/or stamina, are monitored by the game. . . . While these and other similar features have been successful in video games, game developers continue to seek new, interesting, exciting and/or challenging features for video games. The present invention was developed in order to meet this need for new gameplay features. [Col. 1, lines 19-22, 32-37.]

The specification further explains:

In accordance with the instant invention, the sanity features can be programmed into any suitable video game using known programming techniques for the purpose of enhancing gameplay. As explained below, the sanity of the player’s character will be affected by decisions made, enemies faced, as well as any other suitable occurrence that may relate to sanity. As the character looses sanity, the environment will change in a way that hinders the character’s and the player’s progress though the game. The instant invention provides an added challenge and enables multiple possible scenarios, so that playing of the game may be different each time the game is played. It is noted that the invention is particularly suited for implementation in action/adventure/RPG games, but that it may be used in any suitable video game or the like. [Col. 8, lines 35-47.]

The question arises whether what is admittedly an incremental addition to gameplay features satisfies the novelty and--especially in view of prior “physical condition” game responses--the nonobvious requirement for patent protection. This issue is beyond the scope of this paper and no inference should be drawn from this discussion. Moreover, any such assessment must consider all of the disclosures in the patent to determine if what might seem an obvious outcome may be achieved by entirely new or at least nonobvious methods.

The drawings of the ‘954 patent help in this evaluation. Reproduced below is drawing Figure 1, described in the specification as “a flow chart showing a method of the present invention.” Arguably, Figure 1 is nothing more than the depiction that the “mental state” of a game character is constantly monitored and determined based upon a particular gameplay event. As such, Figure 1, at least, appears to disclose little more than what occurs in previous games which made the same continuous calibration of game character’s physical state based on ongoing gameplay occurrences.

[pic]

Other drawings and the description in the specification fill in the means to effectuate the steps. Based upon the player’s reaction through the game character to various predetermined occurrences within the game, such as the game character “encountering a game creature or a gruesome situation” (shown in Figure 1), or failure to rest after such an encounter, or, conversely, “if the game character encounters a mind aid during game play” (a power-up?), the game program will decrease or increase the game character’s sanity level accordingly. The specification explains: “Preferably, levels of insanity will be sliding scale. The more severe the insanity (i.e., the lower the character’s sanity level), the more the player’s control animation and targeting system will be affected.” The specifications state that one feature of the sanity level adjustment is that the game character may be made to experience hallucinations or “audio effects” programmed to the game player’s particular mental state at any point in the game.

To be sure, the ‘954 patent specifications and claims cover more than just the cause-and-effect of game occurrences on game character mental condition and consequent player control. The ‘954 patent contains 21 claims, which are the means by which the inventor delineates the metes and bounds of what the invention covers. Claims are either independent, meaning they are self-contained and free-standing, or dependent, meaning they are a qualification or subset of a preceding broader independent claim. The first independent claim of the ‘954 patent reads as follows:

1. A method of operating a video game including a game character controlled by a player, the method comprising:

(a) setting a sanity level of the game character;

(b) modifying the sanity level of the game[] character during game play according to occurrences in the game, wherein a modifying amount of [sanity] is determined based on a character reaction and an amount of character preparation; and

(c) controlling game play according to the sanity level of the game character, game play being controlled at least by varying game effects according to the game character sanity level.

Because this claim covers a method exclusive of any particular means to achieve the result (as quoted before “the sanity features can be programmed into any suitable video game using known programming techniques”), the method is not restricted and includes any means that obtains the claimed results. Because the specification defines “sanity level” broadly to include any aspect of the player or game character’s mental state, the claim again reaches quite far in monopolizing a method of gameplay calibration based upon the mental state associated with character reactions to occurrences in the game.

The sweep of Claim 1 is extended further by what is known in patent law as the doctrine of equivalents. Under this judge-created rule, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is equivalence between the elements of the accused product or process and the claimed elements of the patented invention. The doctrine of equivalents is intended to prevent a party from making free use of the core of the invention disclosed in a patent by contending that the particular use does not copy every literal detail of the patent claims.

Again, this discussion is not meant as a statement on my part that Nintendo’s ‘954 patent is or is not valid, or even improper under the free-exchange-of-ideas norm revered by many in the game industry. It is intended as an example of the nature of the patents currently being issued by the United States Patent and Trademark Office at a rather prodigious rate. Also, it is intended to illustrate the need for developers to examine patents such as this to determine if the gameplay feature they are employing already has been claimed in a patent.

To Search Or Not To Search

There are a number of defenses available against the assertion of patent infringement, which will be touched on next. But the threshold question presented to developers is whether it is the better strategy (1) to wait for a patent complaint that may, in fact, never come, or (2) to determine if a patent suit is possible before suit by examining existing patents. In the former instance, the available responses after suit is filed are limited and none are likely to be cheap. In the latter situation, it may be possible to avoid the patented technology or to assess if the patent indeed would be infringed and would be enforceable.

The justification for not conducting preemptory searches of existing patents prior to embarking on the development may be based on greater trust in market observation. If everyone is using this technology in their games, the logic goes, it must be in the public domain. Conversely, if no one has ever used the technology in a game, the developer must be the true inventor. The assumptions underlying each premise are flawed.

The everyone-is-doing-it argument is undermined by cases such as AVG’s suit against all of the major publishers alleging infringement of a 1988 patent for a “Method and Apparatus for Spherical Panning.” True, virtually all 3D games today practice, perhaps necessarily so, some variant of the patented method of spherical panning broadly described in the patent owned by AVG, but that was no consolation in the ensuing lawsuit. While there is some basis to believe that the inventors who filed the spherical panning patent application were not the first to have conceived of the method, that did not stop AVG from extracting a substantial tariff

from the defendants in settlement of its lawsuits.

Equally dubious is the nobody-is-doing-it argument. In the United States, unlike the rest of the industrial world, the first to invent is the owner of the technology. In all other countries, the rule is the first to file for patent protection is the owner of the patented technology. One consequence of the American system is that inventors are not provided an incentive to apply for a patent. The only statutory constraint is to so-called “on-sale” prohibition of Section 102(b) of the Patent Act. It bars issuance of a patent if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. . . .” The American rule, which is currently under attack in Congress, provides no assurance to developers that if they do not know about someone else’s technology it does not exist. The inventor simply may not have come forward to apply for a patent or to put the technology on sale, but retains the right to secure and then enforce a patent.

Moreover, it is not enough to be able to say the invention has not been used before in video game development. Technology flows effortless across uses. For example, a method for minimizing latency in data flows in the telecommunications industry can just as readily have application for networked multiplayer games. AVG’s patent claimed a filing date in 1984, before 3D graphics were adopted for video games.

The benefits of conducting a search of existing patents prior to embarking on technology invention are several. First, if the search uncovers one or more patents that address the same technology or solve the same problem, then a determination can be made, preferably with the guidance of experienced counsel, whether the patents will be infringed by the planned work. If so, ways may be devised to work around the patents. If not, the decision must be made whether the patents are likely to be enforced and if it is better to seek an accommodation with the patent holder at a time when a huge investment in time and money is not locked in to the technology. There is also the fact that a purpose of the patent system is to require inventors to fully disclose and therefore educate others as to their invention. A considerable amount can be learned from reading patents. In instances in which the patent has expired, the invention is placed in the public domain for all to practice. Where the patent has not expired, the teaching of the patent may nonetheless be useful in building new technologies on top of what is already known. After all, Nintendo was successful in patenting a claimed improvement in the existing art of gameplay calibrated by game player response to game occurrences in the ‘954 patent considered earlier.

The primary disadvantages cited in conducting patent searches are, first, that to do a search well requires an attorney and a great deal of cost. Second, if the searcher learns of a patent and continues with the use of the technology it opens the searcher to a heightened damage award and the possibility of attorney fees based on a finding of deliberate infringement.

As to the first point, I return to my observation that may programmers already consult patents and are not intimidated by the legal formalities. The Internet has opened up access to patents and facilitated patent searches to a point never before available. Nolo Press has produced an excellent source book entitled Patent Searching Made Easy: How to Do Patent Searches on the Internet & in the Library that is available at bookstores and through the Internet at . In the event patents are uncovered that appear to overlap the intended technology it is appropriate to enlist patent counsel to make a determination of potential infringement and patent validity. Obtaining a written opinion from counsel that there is not chance of infringement or that the patent is invalid will insulate the developer from a later charge of willful infringement should an infringement action be filed. It also will provide ammunition to challenge such a suit. The cost of retaining patent counsel before the fact of a threatened infringement action is far less and presents the developer with far more options than retaining counsel after a threatened or actual lawsuit.

Responding to an Infringement Letter

Let me take just a moment to cover a point somewhat related to the search question: what a developer should do if it receives a letter notifying it of patent infringement and offering to discuss compensation. Such letters typically arrive after the game alleged containing the patented technology has been released as is beyond recall. Once on notice, the developer’s continued sale of the games sets up the facts of willful infringement should the patent holder prevail on the infringement claim. In all likelihood, the publisher has received a similar letter and is now reminding the developer of the indemnification clauses of the publishing contract. Of course, patent counsel now must be retained and the patent claims carefully evaluated. But the choices now are two: fight (risking a bet-the-business lawsuit with huge legal costs and potential damages) or flight (settling on adverse terms because the alternative of modifying the game is no longer practical).

Patent Defenses

Let us start with that great non-defense: ignorance. As has been mentioned before, ignorance that a particular technology has been patented is not a defense. The fact that a developer can show that the technology was independently invented from scratch is not a defense. The fact that the technology was licensed from a third party without knowledge of any possible infringement is not a defense. Use by the developer in its game is a separate act of infringement. That is why lawyers invented indemnity clauses.

What is a defense is that the developer can prove it invented the technology first. The United States rule, recall, is the first to invent. In this case, it is vital that the developer have a record of the development process and completion of the invention. Most employment agreements today require employees to maintain written records of their work for this purpose. There are several ways to record the completion of an invention, including the submission of a provisional patent application to the Patent and Trademark Office or, in appropriate cases where the expense warrants, submission of a regular application. The procedures for patent submissions are beyond the scope of this paper.

Congress has responded to what are seen as the particular abuse of litigation involving business method patents by lowering the defendant’s burden to establish invention priority. The American Inventors Protection Act of 1999 renders a business method patent unenforceable against a defendant that can show it has actually reduced the claimed subject matter of the invention to practice more than one year before the effective filing date of the patent, and has commercially used the claimed subject matter before the effective filing date of the patent.[10]

Other defenses revolve around the statutory requirements for a patent listed previously: subject matter, novelty, utility, and nonobviousness. Now that the Supreme Court has permitted software and method patents, subject matter is not often in issue. Nor is utility often in issue due to the low threshold that must be established. The invention must simply accomplish one of its intended purposes. Novelty raises the issues of whether the subject matter of the invention was known or used by someone other than the inventor in the United States before the inventor’s date of invention (the date the inventor conceives the invention and then reduces it to practice). The on-sale doctrine gives the inventor a one-year grace period in which to file a patent application after disclosure by the inventor. The most prevalent means to refute novelty is to identify the disclosure of the invention in “prior art.” Prior art is most often found in the disclosures of earlier patents, but it can include any publication or public disclosure in the United States or abroad. The defendants in the AVG patent case spread a wide net searching for prior art references to prove the 3D spherical panning technology claimed was in fact invented by others in the United States and abroad prior to the asserted date of invention.

The nonobvious criterion forms an outer analytical band around novelty. Even if the inventor can show that no other person knew or used the precise technology prior to the date of the invention, it remains possible that “a person with ordinary skill in the art of the claimed invention” would have found it obvious to produce the invention based on the state of prior art pertaining to the invention at the time of its invention. Such matters as the scope and content of the prior art, how closely the approximate or anticipate the claimed invention, and the level of ordinary skill in the art are taken into account. Certain objective evidence such as the commercial success of the invention, unexpected results, the failure of others to achieve the invention, and the existence of a long felt but unsolved need for the invention may also be considered. The task of evaluating the statutory defenses to patent validity is hardly free from doubt best left to experienced patent counsel.

Fruits of the BlackBerry

Two themes combine to make it increasingly likely that a developer will violate one or more patents in the course of doing business.

The first theme involved the number and broad coverage of the patents being issued by the Patent and Trademark Office. A quick search conducted through the Patent and Trademark Office website (search) uncovered over 700 active technology patents that expressly reference video games. Add to this some 250 pending applications that have been published,[11] and the numbers begin to reveal the potential threat. Many of these patents and applications relate to particular features of hardware technology, but a growing number--as many as half--of recent patents and applications pertain to some feature of gameplay methodology on the order of the Nintendo ‘954 patent discussed before. Hence, the patent minefield is being seeded every day.

As important, and certainly influencing the first theme, is the fact that the game industry seems predisposed to pay tribute to patent holders rather than subject the patent at issue to the scrutiny of a full defense. This is the second theme. Both the Sega Crazy Taxi case and AVG’s suit based on its spherical panning patent settled without a determination of the validity of the respective patents. In fact, there was not even the customary Markman hearing to construe the meaning of the patent claims. At least in the AVG suit, preliminary statements by the defendants indicated there was a strong possibility that the claimed invention was fully disclosed in prior art, rendering the patent invalid for lack of novelty or because the invention was obvious at the time to a person with requisite skill. Indeed, a massive search for just such prior art was mounted and had wide support within the game industry. Why, then, the defendants all chose to settle with AVG, and for a collective amount that we may assume on the basis of the Atari disclosure to be in the many millions of dollars, is unknown. In fact, even the settlement agreement itself is secret.

It can be asserted, as I do now, that a general posture of patent capitulation within the game industry, particularly among its largest participants, encourages a cycle of more lawsuits and the filing for more patents. Adam Smith’s “invisible hand” of self-interest driving a capitalist economy makes this outcome logical. At one level, it is even defensible. The issuance of patents is a federal activity written into the United States Constitution. If the Patent and Trademark Office, with the complicity of Congress, elects to lower the barriers and extend the scope to obtaining patents, then public policy supports the enforcement of the patent rights conferred. Yet the result is also a business climate in which developers must wonder which patents they might be violating at any given moment.

RIM, maker of the BlackBerry, has followed a different path in the infringement suit brought by NTP. Instead of settlement, even after the pressure of a jury verdict in NTP’s favor, RIM has pursued a thus far successful but slow-developing challenge to the validity of the NTP patents through re-examination before the Patent and Trademark Office. And based on its re-examination, the Patent and Trademark Office is ruling patent by patent that the constellation of NTP patents was erroneously granted in the first place. This has lead to RIM’s much-publicized high-wire act in which it presses forward with the laborious process of Patent and Trademark Office re-examination while NTP pursues damages and a permanent injunction in federal court. Yet one result of the RIM/NTP trench warfare is already clear: the validity of NTP’s patents will be tested and any ultimate success of NTP will be evaluated by other potential patent plaintiffs in the context of the difficulties in supporting and prevailing in patent litigation against a capable and determined foe.

Understandably, few defendants desire to take on the all-or-nothing defender role of RIM. Even if they were, the costs of patent litigation overwhelm all but the largest organizations. This is where Congress needs to step in to help. In fact, legislation is being considered by Congress which would limit the issuance of method patents and to clarify the standards for invention novelty and nonobviousness in general. One idea that is starting to gain recognition is to invite the public in to the patent application process. In the field of federal trademark registration, Congress has enacted a procedure to notify the public of a pending trademark application prior to its final approval by the Patent and Trademark Office. Members of the public who believe they would be damaged by registration of the mark may then oppose registration. Procedures have been developed by the Patent and Trademark Office to resolve such oppositions that are generally less costly then is the defense of a trademark infringement suit brought after registration. A similar process applied to patents would enable members of the public to learn of patent applications before registration through a formal procedure and permit a decision whether to challenge issuance without the pressures and expense customary in patent infringement litigation. Further, the game industry may create an organization to monitor the publication of applications, determine which applications are worthy of challenge, and pool resources to undertake the contest in the Patent and Trademark Office.

If nothing is done to disrupt the present cycle of liberal patent issuance, heightened enforcement, and defense capitulation, developers will start each day wondering with cause which patents they are violating today.

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[1] The information presented and views expressed are intended for a general audience interested in the broad issues engendered by the enforcement of patents in the video game industry, are not specific to any jurisdiction or set of facts, and are subject to change and qualification. Consequently, the information and views do not constitute and should not be relied upon by the reader as legal advice or as creating an attorney/client relationship. Readers with legal questions are advised to consult with an attorney.

[2] Of course, the contrasting view is that this is a match between David-sized inventors against rapacious Goliath corporations.

[3] The IGDA’s IP Rights Committee solicited information from members regarding prior art that might invalidate the AVG patent.

[4] At the same time, Atari announced it had settled the suit brought by iEntertainment for infringement of the latency minimizing technology in multiplayer network games covered by U.S. patent 6,042,477. Atari settled for $25,000 and the other defendants, Epic, Valve, Sierra and several Sony companies, together paid an additional $150,000.

[5] Banks v. Unisys Corp., 228 F.3d 1357 (Fed. Cir. 2000).

[6] 35 U.S.C. § 284.

[7] 35 U.S.C. § 285.

[8] Prior to June 8, 1995, it is 17 years from the patent issue date.

[9] There are additional defenses that arise in particular situations, as the patent applicant’s failure to make adequate disclosure (35 U.S.C. § 112), engagement in inequitable or fraudulent conduct, or unreasonable and unexcused delay in commencement of an infringement action resulting in material prejudice or injury to the infringer.

[10] 35 U.S.C. § 273.

[11] By law, and with specified exceptions, patent applications remain confidential for a period of 18 months after filing with the Patent and Trademark Office. Patent Act, 35 U.S.C. § 122(b).

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