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Why We're Here Adventures in video game litigation: Patent cases past and present Ross Dannenberg, Esq. Banner & Witcoff, Ltd. 1100 13th St., NW, Suite 1200 Washington, DC 20005 (202) 824-3153 [email protected] www.BannerWitcoff.com www.PatentArcade.com Xbox Live: Aviator March 27, 2009 inSL: Aviator Kidd Why we’re here •Learn about intellectual property •Discuss the cross section of video games and intellectual property law •Analyze 10 different video game lawsuits •Understand why patents are important to video game developers •Play games in the exhibit hall until we pass out from exhaustion © 2009 Banner & Witcoff Ltd. © 2005 Gamasutra.com 1 The fine print •Patents are a reality, even if you don’t like them or believe in their merit. • This is not a debate about whether or not video games should be patentable—They are. •The views expressed herein should not be attributed to my firm or to any of my clients (and they might not even be my own views, either). •If you hire me, I will be happy to believe whatever you pay me to believe. © 2009 Banner & Witcoff Ltd. What is intellectual property? • Trademarks –Source identifier • Copyrights –Creative Expression •Trade Secrets –Secrets w/ commercial value •Patents –Functional IDEAS! Duke Nukem Forever will be released on … ? © 2009 Banner & Witcoff Ltd. 2 Video game patent examples • 6,733,383 –EA caution periods in auto‐race simulations •RE 28,507 –PONG! • 6,695,694 –Konami Dance Dance Revolution arcade •U.S. 7,077,749 – Weather game simulation in MS Flight Simulator • 6,764,402 – Pokemon • 6,641,481 –MS quitters • 6,935,954 –Sanity level in a play together patent video game • 6,132,314 –Namco’s rowing • 6,729,954 –Dynasty arcade game Warriors • 6,261,179 – StarFox allows • 6,923,717 –Adrenaline rush user to select level in sports games • 6,604,008 –Kudos in PGR © 2009 Banner & Witcoff Ltd. Design patents •Design Patents – Hardware Designs –Software Designs ‐ Any image displayed on a display screen, e.g., •Icons •Fonts •Graphical User Interfaces •Characters ‐ D404,390 © 2009 Banner & Witcoff Ltd. 3 1. The first lawsuit “I believe that the novelty and patentability “Now turning to the question of reside entirely in this feature of the player- infringement, I believe that the controlled hitting symbol, which coincides defendants' games do infringe with a hit symbol and causes a distinct the claims of the '507 patent to change of direction in the motion of the hit the extent that they contain or symbol, whether that change in motion be use a player-controlled movable from a moving position or from a stopped hitting symbol which, when it position of the hit symbol.” coincides with a hit symbol, And now, the causes a change in direction of “The '480 patent, I think, is the 10 cases… that hit symbol.” pioneer patent in this art, and I refer to the art of playing “My own view as to what art is involved games on a small scale, with here is that we are dealing with the art the players participating in the of playing games on cathode ray tubes game in an environment such by means of electronic circuitry. The as a home or someplace state of that art immediately prior to the where a large computer would '480 invention, I think, was rather clearly not be available.” primitive.” © 2009 Banner & Witcoff Ltd. Video Game Patents 1. The first lawsuit are Enforceable! • The Magnavox Co. v. Chicago Dynamic Industries, 201 USPQ 25 (N.D. Ill 1977) •The Odyssey Patent: RE28,507 •Ralph Baer invented the Magnavox Odyssey •Nolan Bushnell: Pong •Check out www.RalphBaer.com for more history of the early video game lawsuits (Photo courtesy of David Winter, Pong Story) © 2009 Banner & Witcoff Ltd. 4 Don’t rely on copyrights alone. A 2. The backup plan mix of IP is best. • Atari Games Corp. v. Nintendo of Am., Inc. –Prelim. Inj: 975 F.2d 832 (Fed. Cir. 1992). –Final disposition: 30 USPQ2d 1401 (N.D. Cal. 1993) •Nintendo has lock & key software (“10NES”) for NES console to prevent unauthorized games from being played on the console •Atari didn’t want to pay license fee to Nintendo for a “key” to the 10NES “lock” •Nintendo loses functional part of copyright infringement claim, but… •Nintendo has patent 4,799,635 © 2009 Banner & Witcoff Ltd. 2. The backup plan 1. A system for determining whether a videographics software program is authorized for use in an information processing apparatus, comprising: –a main data processor unit for executing a videographics software program; –an external memory for storing the videographics software program and for removable connection to said main processor unit, said external memory and main processor unit together constituting the information processing apparatus for executing the videographics software program; –a first authenticating processor device associated with said external memory for executing a first predetermined authenticating program to determine the authenticity of said external memory; –a second authenticating processor device which is installed in said main data processor unit for executing a second predetermined authenticating program to determine the authenticity of said external memory; and – control means for resetting said main data processor unit unless the execution of said first authenticating program by said first processor device exhibits a predetermined relationship to the execution of said second authenticating program by said second processor device. © 2009 Banner & Witcoff Ltd. 5 Statements made during patent 3. But I didn’t mean it… prosecution can come back to haunt you. • Alpex Computer Corp. v. Nintendo Co. –102 F.3d 1214 (Fed. Cir. 1996) • U.S. Pat. 4,026,555: Alpex invented rotating paddles, but did so using bit‐mapping •Nintendo used 8 shift registers • Trial Court: Infringement = $253,641,445 • Appellate Court: –In prosecution history, Alpex argued differences between bit‐mapping and the use of shift registers –No infringement, based on prosecution history estoppel © 2009 Banner & Witcoff Ltd. A solid patent is worth 4. The pen is mightier… millions. • Immersion v. Sony, District Court for the Northern District of California, Case No. 02‐cv‐0710 • Tactile feedback in man‐machine interface device, i.e., game controllers • U.S. Pat. 6,275,213 and 6,424,333 • Microsoft settles for $26M + percentage of award received from Sony, if any •Sony loses, later settles for $150M (of which ~$20M goes to Microsoft) © 2009 Banner & Witcoff Ltd. 6 Copyrights are not enough for protecting 5. If I only had a… video games. • Sega v. Accolade, 977 F.2d 1510 (9th Cir. 1992) –Accolade’s reverse engineering of Sega’s code is not copyright infringement, despite Accolade’s intermediate copying to do so – Reverse engineering to gain access to unprotectable functional elements of copyrighted work is ok –“In order to enjoy a lawful monopoly over the idea or functional principle underlying a work, the creator of the work must satisfy the more stringent standards imposed by the patent laws.” • COPYRIGHTS DO NOT PROTECT FUNCTION! © 2009 Banner & Witcoff Ltd. Only patents protect 5. If I only had a… “useful” ideas. • Incredible Tech. v. Virtual Tech. –400 F.3d 1007 (7th Cir. 2005) –IT makes Golden Tee Golf –VT made PGA Tour Golf –VT copied user interface of Golden Tee Golf – Copyright protection not strong enough •“The exclusion of functional features from copyright protection grows out of the tension between copyright and patent laws. Functional features are generally within the domain of the patent laws.” © 2009 Banner & Witcoff Ltd. 7 Don’t let emotion make your business 6. Proving a point decisions. • Sega of America, Inc. v. Fox Interactive, et al. –Sega publishes Crazy Taxi, covered by USP 6,200,138 (priority to 10/30/ 1997) –Fox published Simpson’s Road Rage, which uses many similar game play features –Broad claims in the ‘138 patent. –Case settled, likely because of expected cost of litigation versus chance of recovery © 2009 Banner & Witcoff Ltd. 6. But is the point worth proving? •‘138 patent had variety of very broad claims –1. A game display method for displaying a game in which a movable object is moved in a virtual space, comprising the steps of: • setting a dangerous area around the movable object; and •when a character enters the dangerous area, moving the character in a direction in which the character is moved away from the movable object. –7. A game display method for moving to a destination in a virtual space a movable object which is moved in the virtual space, comprising the step of: • displaying at a prescribed position in the virtual space a virtual object which indicates a direction from the prescribed position to the destination. –21. A display method for displaying a game in which a movable object which is movable in a virtual space is moved to a destination in the virtual space, •at least when a current position of the movable object is within a prescribed distance from the destination, the destination is emphatically displayed. –25. An electronic device for displaying a game in which a movable object which is movable in a virtual space gets a specific object at a prescribed position in the virtual space and is moved to a destination in the virtual space, comprising: •display means for emphatically displaying a position of the specific object. You mean like putting the object on a pedestal?... © 2009 Banner & Witcoff Ltd. 8 Claim construction often (effectively) 7. Markman, you did it again… decides the case. • Activision v. Gibson, CV‐08‐1653, C.D. Cal. (Pending) –Gibson’s U.S. Pat. 5,990,405 – Claim construction (aka, the Markman order): –A “musical instrument” must be capable of making musical sounds independent of the mechanism that outputs the instrument audio signal –Last Actions: •Gibson: request to reconsider claim construction (1/14/09) • Activision: motion for summary judgment (12/10/08) © 2009 Banner & Witcoff Ltd.
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