Hey everyone, if you're at GDC 2010, I will be speaking at the following two sessions:

Video Game IP - What You Need to Know NOW
Speaker: Ross Dannenberg (Partner, Banner & Witcoff, Ltd)
Date/Time: Thursday (March 11, 2010) 9:00am — 10:00am
Location (room): Room 130, North Hall
Track: Business and Management
Format: 60-minute Lecture
Experience Level: All

Session Description
Intellectual property can be a powerful asset for any company, young or old. Trademarks protect your brand; copyrights protect your content; and patents can be used to broadly protect your ideas, while company critical information can be safeguarded as a trade secret. However, companies must perform certain actions in order to enforce their IP, because some forms of IP require that certain steps are taken at specific times or a company might inadvertently dedicate its IP assets to the public. Don't let this happen to you! This seminar will discuss what you need to know NOW to protect your intellectual property, and will discuss proactive steps you can take to ensure that you maximize your intellectual property rights in your video game and software.

Intended Audience
Any video game developer interested in IP. However, the seminar will concentrate on proactive steps that smaller companies can take so they can effectively compete with the big boys in the intellectual property arena.

Takeaway
Steps companies (and individuals) can take to ensure that they don't inadvertently give away their intellectual property or dedicate their intellectual property to the public domain.

Speaker Evaluations None available.

IGDA: Intellectual Property Rights SIG
Speaker: Ross Dannenberg (Partner, Banner & Witcoff, Ltd)
Date/Time: Saturday (March 13, 2010) 9:00am — 10:00am
Location (room): Room 228, East Mezzanine
Track: Business and Management
Format: 60-minute Roundtable
Experience Level: All

Session Description
The roundtable will include a discussion of proactive steps that young companies should take to ensure that they don't inadvertently donate their IP to the public domain, and will include plenty of Q&A time to answer questions posed by the audience. The roundtable will include perspectives offered by successful independent game developers, and will include a discussion of resources and topics managed by the IGDA's IP Rights Special Interest Group. Old, new, and non-members welcome!

Speaker Evaluations None available.

Hope to see you there!

So word has hit the Internet that Facebook's U.S. Patent No. 7,669,123, entitled “Dynamically Providing a News Feed About a User of a Social Network,” issued last week, and it’s certainly created quite the buzz in chat rooms and web sites all over. Some folks seem outraged at the patent system, some are outraged at businesses who seek patents, and others seem outraged that those folks are outraged at the patent system.

This happens several times a year, whenever a high profile patent is issued, and I figured it might be helpful to provide some sort of Patent Outrage Guide, to help people understand their rage (or lack thereof). So if you’re outraged and want to know why, or if you simply want to be outraged and want to know how, please read on …

I. What’s it “Cover”?

First of all, you can’t be outraged about a patent if you don’t know what the patent actually “covers.” A patent’s scope is determined by the claims that appear at the end of the document. Think of each claim as a standalone list of things or steps that a product would have to have or do in order to infringe that claim. If your product has every limitation in one claim, then congratulations, you infringe that claim and that patent. If your product is missing at least one of the limitations of a claim, then congratulations, you don’t infringe that claim.

That sounds simple, but we’re lawyers, so it can’t be simple. The claims are not read in a vacuum. Instead, they are read and interpreted in the context of the rest of the description in the patent. So if a patent describes a “nut” as being the kind you screw on a bolt, the patentee probably can’t say that a peanut infringes that limitation.

To further complicate things, the claims are also interpreted in view of the prosecution history. The prosecution history of a patent is the back-and-forth written record between the applicant (inventor) and the patent office that ultimately resulted in the patent getting granted. As many of you know, the patent office is charged with examining patent applications, and only granting the ones that claim new and non-obvious inventions. If the applicant had to make arguments about the scope of his/her claims to get it to issue (e.g., “my claimed ‘nut’ refers only to a peanut, and not a walnut”), then the claim will be interpreted with those arguments in mind – as a member of the public, you have the right to rely on those arguments in determining the proper scope of the patent’s claims.

II. That’s Too Broad!

Ok, so now you’ve got a handle on the patent’s scope, and you think it’s too broad (e.g., you think it describes something that’s been around forever). Should you be outraged? Maybe, but let’s put things in perspective. First of all, you might be reading the claims incorrectly. A claim is interpreted as a hypothetical “person of ordinary skill in the art” would, in view of the specification and file history mentioned above, so it’s quite possible that there are one or two key words lurking in the claims that are interpreted more narrowly than you think, rendering the patent narrower than you think.

However, it’s certainly possible that the PTO has issued a claim that is too broad. But before you get outraged at this, some perspective may be helpful. The PTO handles a MASSIVE number of patent applications. Over 17,000 were issued last month, and another 26,000 were published (new applications are typically published 18 months after filing). Each application probably has, on average, about 20 different claims (since that’s what you get “for free” when you file the application), and each claim can have a dozen or more limitations. To reject these claims for not being novel, the PTO has to search for evidence that every feature in these claims can be found in the prior art, and in the arrangement claimed. It’s certainly possible that, in the relatively limited amount of time an examiner can spend searching a particular case, the examiner might be unable to find evidence for one of those words. If that happens, the applicant deserves the patent.

Don’t know if that’s outrage-worthy, though. We aren’t outraged at the postal service for occasionally losing a letter – we understand it’s a necessary cost of having the service at all. Doesn’t the PTO deserve the same understanding?

III. The Companies are Evil!

Some critics argue that the companies seeking broad patents are somehow unethical for doing so. I’m no expert on defining what is or is not ethical for a business, but it seems to me that a business’s main goal is to stay in business. Part of that involves not doing things (e.g., kicking puppies, pulling wings off of flies, etc.) that would cause it to lose customers and go out of business, but the main goal has to be to stay in business. Indeed, a public company’s directors can be SUED by their shareholders if they don’t do a good job keeping the company afloat.

Patenting its own innovations helps companies stay in business in several ways. First of all, they can assert them to keep competitors out of the same market space. Second of all, simply having a collection of patents is useful when doing business with those competitors. Nobody wants to have to sue, so if two competitors each have formidable patent portfolios, they will be more likely to find a business solution to their differences.

So I’m afraid that on the whole “evil” front, I can’t fault the companies for seeking to protect their inventions. Of course, I’m a patent attorney, so I may be biased there.

IV. Patenting Software, Are you MAD?

Some of the posters clearly feel that software should not be eligible for patent protection. I can understand where they’re coming from. Good software programming practice involves writing code and modules that can be re-used, saving time the next time around. Sharing and building on each others’ work is just an integral part of good programming practice.

The tough part for those posters, though, comes from the fact that not everyone feels the same way. The developer who spent 6 months coming up with a novel and useful software routine doesn’t always want to just share that with everyone, especially if they don’t get anything comparable in return. Sure, it could be a nice thing to do, but is it worth going out of business, or getting sued by shareholders?

If you must get outraged at the patentability of software, then the target of your outrage shouldn’t be the PTO, or the companies, it should be Congress. They’re the ones responsible for writing the laws, and they alone have the power to rewrite them.

V. Conclusion – Be Happy

So as you’ve figured out by now, this biased patent attorney happens to think that most of the patent outrage is misplaced and/or undeserved. We all live and work under the laws and rules that are in place, and everyone’s just trying to get by. Thanks for reading!

The Patent Arcade is pleased to announce that a new book co-edited by our own Ross Dannenberg (i.e., me), and partly authored by our own Steve Chang, is now available for purchase from the ABA website:

BUY YOUR COPY TODAY!!! (the authors do not receive any royalties for this book--all proceeds benefit the American Bar Association's IP Section)

We're getting close... Stay tuned for more information about our new book. I am one of the editors, along with others from my committee at the American Bar Association:

Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law

By Ross A. Dannenberg, Steve Mortinger, Roxanne Christ, Chrissie Scelsi, and Farnaz Alemi - Editors.

Will provide publication/purchase info when available.

Every gamer has anxiously awaited this message to appear - you may have just beaten the final boss level after several unsuccessful attempts or you may have finally beaten a friend’s high score. As we all know, bragging rights are useless until you can prove it. Thus, we anxiously await this very message or something similar. While this message is often the saving grace, there are times when this message provides false security. For example, the memory may be corrupt. While displeasing enough, losing earlier progress on that particular game only adds insult to injury.

According to the Patent Office records, Nintendo may have protection on certain methods and systems that ensure that a failure to save recent data will not also result in the loss of earlier game data. On February 2, 2010, the U.S. Patent and Trademark Office issued U.S. Pat. No. 7,654,904, entitled “Game machine, backup control program of game data and backup control method.” The patent notes that “preventing [the] loss of game data obtained by progressing through a game for long hours is critical for the player.” Independent claim 9 appears to be targeted towards a method that ensures that the previous saved data from the game is not overwritten if the most recent attempt to save updated game data is not successful. The claim recites:

9. In a game machine having a nonvolatile memory, said memory including a plurality of electrically rewritable game data backup storage areas, a method of backing up game data, comprising:

generating latest game data corresponding to latest conditions in a game being played;

designating one of said game data backup storage areas that contains an oldest written game data relative to game data written in other backup storage areas as a write-objective target for storing said latest game data and, when a write attempt to a first write-objective target is unsuccessful after a predetermined number of attempts, designating another write-objective target of next oldest written data; and precluding a writing of said latest game data into said another write-objective target and prohibiting further attempts to write to said backup storage areas when an attempt in writing to said first write-objective target backup storage area is unsuccessful after a predetermined number of repeated unsuccessful attempts and said another write-objective target contains the only remaining instance of saved older game data; and

causing said game machine to display an error message indicative of an unsuccessful saving of said latest game data and/or a broken backup storage memory condition, wherein a failure of a memory element in said electrically rewritable non-volatile memory does not result in an attempt to store game data in a last remaining backup area containing older game data.

In an interesting development in the ongoing dispute between Harmonix and Konami over the hammer-on technology in the Rock Band/Guitar Hero games, they have filed a JOINT motion to stay proceedings:

Date	#	Docket Text
1/27/2010	57	Joint MOTION to Stay Proceedings by Harmonix Music Systems, Inc..(McConchie, Scott) (Entered: 01/27/2010)

Could a settlement be in the works?

This is only one of two cases between the parties, and the other case is proceeding full steam ahead, with pleading just having been finished with respect to a Summary Judgment motion:

Date	#	Docket Text
1/26/2010	239	ORDER Setting Hearing on Motion 213 MOTION to Strike Defendants' Supplemental Invalidity Contentions and Preclude the Assertion of Invalidity Defenses Not Properly Disclosed Therein. Motion Hearing set for 2/17/2010 10:00 AM before Magistrate Judge John D. Love. Dispositive Motions due by 2/26/2010 with Responses due March 15, 2010. Signed by Magistrate Judge John D. Love on 1/26/2010. (gsg) (Entered: 01/26/2010)
1/25/2010	238	SUR-REPLY to Reply to Response to Motion re 218 MOTION for Partial Summary Judgment for Indefiniteness filed by Konami Digital Entertainment Co, Ltd., Konami Digital Entertainment, Inc.. (Edelman, Michael) (Entered: 01/25/2010)

So it's difficult to say what the reason is for the Stay Proceedings motion, but it is interesting nonetheless. That's it for now. Stay tuned...

I usually don't report press release type stuff, but the LES is an important part of game development. Namely, licensing content is a HUGE part of game creation, design, and development. I should also mention that, while I am not actually a member of this group, others in my firm are. So without further ado...


Alexandria, VA, January 19, 2010—The Licensing Executives Society (USA & Canada) Inc., is celebrating 45 years of leadership in the business of intellectual property (IP) and licensing with the kick-off of a multi-faceted membership awareness campaign designed to recruit new members and encourage membership renewal through exciting programs and incentives.

In honor of its 45th Anniversary, LES is offering members who join before March 31, 2010 a $45 discount on their first year’s dues, a $25 gift card and complimentary attendance at a local LES chapter event. Join now by downloading the membership application at www.lesusacanada.org/45anniversary and emailing to membership@les.org or faxing to 703.836.3107. (Enter promo code LESPR45).

LES is the leading association for professionals involved in the transfer, use, development, manufacture and marketing of IP. It’s unique among professional group because it draws IP leaders from an array of business backgrounds and from across industry sectors. This diversity provides members with highly valuable business connections and world-class professional development opportunities.

“LES is a welcoming community that empowers, connects and celebrates IP professionals,” said Paul Roberts, Vice President for LES Membership. “Whether you’re a veteran or brand new to the field, LES has the reach, global perspective and resources to provide the tools IP professionals need to survive and thrive in today’s competitive marketplace.”

In addition to the advantages provided by its diverse membership in terms of deal making, information sharing and problem solving, LES offers its members unparalleled professional education programs, including the LES Professional Development Series (PDS), and the Certified Licensing Professional Program (CLP).

Through LES, members not only develop lifelong professional and personal relationships, but also build valuable professional networks through LES meetings and Industry Sector Groups, local chapter events, online social media networks and global membership directory. They also receive first-class publications and resources, such as les Nouvelles, the leading international technology transfer and licensing journal of LES International, eNews bulletins, Viewpoints bi-monthly newsletter and original benchmark industry data on deal terms, royalty rates and other aspects of IP business.

In 2010, LES members will enjoy an expanded lineup of new programs designed to further enhance their LES experience.

• Linking Entrepreneurship and Technology Commercialization: IP for Entrepreneurs & Universities: In keeping with its 2010 theme of “Deals, Deals & More Deals,” the LES (USA & Canada) Spring Meeting will focus on deals in the entrepreneurial and university spaces, known to be hotbeds for innovation and technology advancement. The meeting will be held in Boston, MA, May 18-21.
• Around the World with LES: A global series of networking and educational events to be held On April 26th spanning five continents, in conjunction with WIPO’s World IP Day.
• LES Monthly Webinar Series: In addition to the eNews and expanded use of social networking vehicles to keep members informed, LES will also host monthly webinars for members who want to learn more about IP issues and mechanics in the convenience of their offices. Internal negotiations are often as difficult as negotiating with parties across the table. This will be the focus of February’s webinar, Internal Negotiations: “We have met the enemy and they are us!”

For more information on these and other LES events, please visit www.lesusacanada.org and JOIN NOW by downloading the membership application at www.lesusacanada.org/45anniversary and emailing to membership@les.org or faxing to 703.836.3107. (Enter promo code LESPR45.)


Contact: Lydia Steck, TheCommunicator@comcast.net

As previously reported, Beneficial Innovations, Inc. (“Beneficial”) filed suit in the Eastern District of Texas accusing several entities of willfully infringing claims of U.S. Pat. No. 6,712,702 entitled “Method and system for playing games on a network.” Beneficial, a patent-holding company based out of Nevada, subsequently amended its complaint to include U.S. Pat. No. 6,183,366 entitled “Network Gaming System.”

On November 30th, Beneficial and three defendants - Digg Inc., CBS Interactive Inc, and Jabez Networks Inc. indicated that a settlement had been reached and filed motions requesting dismissal. The motions, which were granted by Judge Ward, dismissed all claims, affirmative defenses, and counterclaims between the three defendants and Beneficial with prejudice. While the terms of the settlements are confidential, the court’s order indicated that each party would bear their own legal fees and costs.

The ongoing litigation is Beneficial Innovations, Inc. v. Blockdot, Inc. et al., Case No. 2:2007cv00263 (E.D. Tex. 2007). We will continue to follow the litigation.

Activision has responded in federal court to a lawsuit originally filed in California state court by No Doubt over Activision’s use of the band’s likeness in “Band Hero.” According to Activision, the case implicates federal copyright law, and thus federal court (rather than state court) is the proper place for the litigation.

Previously, No Doubt sued Activision alleging, among other things, that Activision improperly used digital representations of the band members in unauthorized ways in making “Band Hero,” such as the way that the band members sing and dance in-game.

Now, in responding, Activision is denying all accusations of wrongdoing and arguing that all uses of No Doubt’s likeness are within the licensing contracts obtained from the band before the game’s release. Interestingly, there are also allegations that No Doubt’s contract with Activision does not include certain limits on the scope of the license that the licensing contracts of other artists include.

We will continue to follow this case.

With the growing popularity of video game systems such as Nintendo's Wii, Sony's Playstation 3 and Microsoft's Xbox 360, it seems that all sorts of patent holders are coming out of the woodwork to share in a piece of the profit pie. In what is undoubtedly another case of unwanted attention, Nintendo, Sony and Microsoft have been sued by Eleven Engineering, Inc. ("Eleven Engineering") in the District of Delaware for allegedly infringing three patents: U.S. Patent Nos. 6,238,289 ('289 Patent), 6,346,047 ('047 Patent) and 6,684,062 ('062 Patent). Each of the patents pertains to wireless game control devices. Eleven Engineering's complaint specifically identifies Sony's DualShock and Sixaxis wireless game controllers, Nintendo's Wii Remote and Balance Board and Microsoft's Xbox 360 Wireless Controller and Wireless Racing Wheel as allegedly infringing products.

'289 Patent - "RADIO FREQUENCY GAME CONTROLLER"

The '289 Patent is directed to adjusting a frequency of a wireless controller when weakness in signal strength is detected. One or more of the keys on the controller may further be used to manually change the frequency. Additionally, the game controller may include an indicator light that conveys signal strength by amount of time it is on (e.g., a constant "on" light would indicate strong signal strength whereas an intermittent light would indicate a weaker signal strength). Claim 1 is reproduced below as an illustrative example of the ‘289 Patent’s scope:

1. A game controller for communication between a user and an electronic game device transmitting signals to a receiver, comprising:

a portable housing; game controller keys attached to said housing for permitting the user to generate signals;

a radio frequency sender engaged with said game controller keys for transmitting the signals to the receiver; and

a controller attached to said sender for determining a selected parameter regarding the signals and for communicating said parameter to the user.

A point of contention between the parties may involve whether any of the accused controllers communicates a signal parameter to the user. Note that the claim does not require the controller to specifically include an indicator light.

'047 Patent - "RADIO FREQUENCY GAME CONTROLLER"

The '047 is similarly directed to radio frequency communication between a game controller and a game console device. In contrast to the '289 Patent, the claims of the '047 Patent are directed to the transmission of radio frequency signals from a game controller using time domain multiplexed transmissions. Thus, whether Sony, Nintendo and Microsoft infringe the ‘047 Patent may include a determination of whether their wireless controllers use time domain multiplexing transmission protocols. Claim 1 is reproduced below for reference.

1. A game controller system communicating between a user and an electronic game device, comprising:

a portable housing;

a sensor attached to said housing and responsive to operation by the user to generate signals;

a radio frequency sender engaged with said sensor, wherein said sender transmits said signals with time domain multiplexed transmission; and

a radio frequency receiver engaged with the electronic game device for receiving the signals from said radio frequency sender.

‘062 Patent – “WIRELESS GAME CONTROL SYSTEM”

The ‘062 Patent is generally directed to a wireless system for video game control that allows one or more wireless controller to concurrently communicate with a base transceiver. The benefits touted by the ‘062 patent include advantages in the areas of latency, reliability, power consumption and cross platform compatibility. The ‘062 Patent includes 2 independent claims. Independent claim 1 is directed to a combination of features including automatic channel/frequency adjustment and signal transmission using synchronous time domain multiplexing. Independent claim 13, on the other hand, is directed to controller-base transceiver compatibility and suggests a system that offers compatibility amongst multiple types of controllers and base transceivers. The issues surrounding the ‘062 Patent are likely to be more complex and infringement harder to demonstrate than for the other two asserted patents.

It is no secret that Microsoft, Nintendo and Sony have seen their fair share of gaming technology lawsuits in the past several years. For example, both Microsoft and Sony were sued by, and ultimately settled with, Immersion Corp. for use of force feedback technology in their controllers, while Nintendo entered into an out-of-court settlement with Hillcrest Laboratories for its motion sensing controllers earlier this year. Given Microsoft, Nintendo and Sony’s history of IP troubles involving its controllers and video game systems in general, it will be interesting to see whether the parties settle or decide to go the distance.

The case is Eleven Engineering, Inc. et al. v. Nintendo Co., Ltd. et al., Case No. 1:09-cv-00903-UNA (D. Del. filed Nov. 25, 2009). This is more of a hardware case, so we are not actively tracking it further.