This lawsuit has seen a lot of action recently. As previously reported, Innovention Toys LLC (“Innovention”) filed suit against MGA Entertainment Inc., and the retailer defendants (collectively “MGA”), for allegedly infringing U.S. Patent No. 7,264,242, (“the ‘242 patent”) entitled "Light Reflecting Board Game." The district court granted Innovation’s motions for summary judgment of infringement and validity. After a failed Motion for Reconsideration, MGA appealed to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) requesting review of the lower court’s finding of infringement and non-obviousness. The full decision is here and summarized below.

Regarding the issue of infringement, MGA did not argue against the lower court’s interpretation of the claim term “movable,” however, insisted that the court incorrectly compared the term to the allegedly-infringing product – Laser Battle. (As a reminder, “movable” was construed to mean "capable of movement as called for by the rules of the game or game strategy”). Specifically, MGA argued that Laser Battle contained instructions which advised against moving the “Tower pieces” as part of game play or strategy. The Federal Circuit disagreed and determined that the “Tower pieces” of Laser Battle were moveable because “even if the instructions suggest the pieces ‘should’ not so be moved, that capability is nevertheless present.” In this regard, the decision noted that MGA’s argument must implicitly disagree with the construction of “movable” to mean “capable of movement.” The Federal Circuit, therefore, affirmed the lower court’s finding of infringement.

For those drafting or licensing patents, this finding highlights the importance of broadening language in patent claims. For example, reciting a “selectable” item will encompass more items than a “selected” one. For those organizations, such as MGA, that sell commercial products with instructions of intended use, this decision rejects the idea that instructions supplied with a product will negate any properties or capabilities of the product. In short, don’t rely on intended use for determinations of infringement.

MGA faired much better on its appeal regarding non-obviousness. The Federal Circuit disagreed with the district court’s determination that the “Laser Chess” references were irrelevant. The lower court determined the Laser Chess references were non-analogous art since each discloses “an electronic version of the ’242 patent.” The Federal Circuit noted that “even if not in the same field of endeavor, [these references] would nonetheless have been reasonably pertinent to the problem facing an inventor of a new, physical, laser-based strategy game.”

The Federal Circuit also remanded the lower court’s determination that the level of ordinary skill in the art for the relevant patent was a layperson. This is important because a lesser skill “generally favors a determination of nonobviousess.”

On a separate front, the district court (Eastern District of Louisiana) acted on the damages portion of the case. Earlier this year, the district court determined that Innovention could not recover lost profit damages against MGA because its evidence was hearsay, which cannot be relied on for purposes of summary judgment. The rule directed towards summary judgment (Rule 56), however, was recently amended. (click here to see the amended text) Innovention, therefore, filed a Motion for Reconsideration, which the court granted. The district court, however, now must deal with the issues of non-obviousness that were recently sent back down from the Federal Circuit.

Creative Kingdoms, makers of the MagiQuest live-action role-playing game, has filed a complaint at the International Trade Commission (ITC) against Nintendo Co., Ltd. and Nintendo of America, Inc., asking the ITC to prevent Nintendo from importing its Wii gaming system and controller.

According to the complaint, Creative Kingdoms operates a 20,000 square-foot attraction in Myrtle Beach, SC. At this attraction, players pay admission and can buy interactive magic wands to play various games. Marketing literature for MagiQuest bills it as the world’s largest live-action RPG, saying that the wands can trigger 200 effects at the facility, and can remember player progress.

Creative Kingdoms accuses Nintendo’s Wii of infringing U.S. Patent Nos. 7,500,917 (“Magical Wand and Interactive Play Experience”), 6,761,637 (“Method of Game Play Using RFID Tracking Device”), 7,850,527(“Magic-themed Adventure Game”) and 7,896,742(“Apparatus and Methods for Providing Interactive Entertainment”). The complaint accuses the Wii console and remote of infringing various claims in these patents. A sample claim is reproduced below from the ‘742 Patent:

1. A toy wand for use in an interactive play environment, the toy wand
comprising: an elongated body having a substantially tubular shape and distal
and proximal ends, said elongated body substantially enclosing an internal
cavity positioned along an axis extending through said distal and proximal ends;
a first tilt sensor and a second tilt sensor disposed within said internal
cavity of said elongated body, said first and second tilt sensors being arranged
in substantially opposing orientations such that at least one of said first and
second tilt sensors is in an inactive state whenever said elongated body is in a
substantially static position and such that a first particular motion of said
elongated body causes or enables each of said first and second tilt sensors to
be in an active state at least momentarily during a duration of said first
particular motion; a memory configured to store a unique identification
associated with the toy wand; and a wireless transmitter electrically coupled to
said first and second tilt sensors and to said memory and located within said
elongated housing, said wireless transmitter being configured to transmit a
first wireless signal in response to said first motion of said elongated body to
one or more reader devices disposed within an interactive play environment to
activate one or more play effects, said first wireless signal further comprising
data indicative of said unique identification.

Next up will be the ITC’s decision on whether to formally institute an investigation. For those unfamiliar with the ITC, take a look here for a summary.

We’ll keep you posted, and thanks for reading.

Hey everyone, we've been a little behind lately, but good things are in store. The Patent Arcade's own, Ross Dannenberg, will be speaking at Penny Arcade Expo (PAX) East this Friday in Boston, at 1:30 PM. Come on by and listen, ask questions, and generally help stir things up!

Also, we have a new research intern starting this summer, and we plan on posting a major update to our video game patent database by the end of the summer. So stay tuned, good things are coming soon!

It used to be that headlines like this referred to people pirating music, software, or video games. Kind of funny that this headline once again refers to REAL pirates. Not the kind with swords, but the kind with boats, and guns, and that hijack other boats on the open seas:

Pirates Take Up to $12 Billion Worth of Booty.

Just an observation...

Walker Digital, LLC, a self-professed “invention” company who claims to hold over 500 patents, has filed suit against Activision, Inc., Activision Blizzard, Inc. and Zynga, Inc. In the complaint, Walker Digital alleges that the defendants’ games infringe upon U.S. Patent No. 6,425,828, entitled “Database Driven Online Distributed Tournament System.” The patent claims priority to 1998, and its first claim reads as follows:

1. A method of conducting a distributed electronic tournament for a plurality of players, comprising:

exchanging information between a central controller and a player located remotely from the central controller, the information (i) being exchanged while the player plays a game in the tournament and (ii) influencing game play; and

storing in a database player information associated with the player, the stored player information being available for use in a subsequent tournament to influence game play of the subsequent tournament while the player is playing a subsequent game in the subsequent tournament.

The complaint alleges infringement by a litany of games, including (among others) Activision Blizzard’s Call of Duty: Black Ops, Call of Duty: Modern Warfare (1 and 2), Call of Duty: World at War, Blur, DJ Hero 2, Cabela’s North American Adventures, and World of Warcraft (and its expansions packs), and Zynga’s Mafia Wars, Vampire Wars, Fashion Wars and Street Racing.

We’ll keep you posted on this one. The case caption is Walker Digital, LLC v. Activision et al., No. 1:11-cv-00004 (D. Del. filed Jan. 3, 2011).

A panel of the 9th Circuit on Tuesday upheld a lower court’s 2009 injunction barring the distribution of the Glider computer program that automatically plays the lower levels of World of Warcraft. Read more about it here.

If you're looking for some good visualization data of the USPTO backlog, pendency times, and other interesting statistics, check out the USPTO Patent Dashboard, it provides some very useful and interesting metrics.

As we last reported here, Motiva LLC has previously accused Nintendo Co., Ltd of infringing U.S. Patent No. 7,292,151 (‘151 Patent). The ‘151 Patent, entitled “Human Movement Measurement System,” is generally directed to a system for measuring human body movements for exercise and physical rehabilitation, and Motiva alleged that Nintendo’s Wii Fit product was an infringement.

Its previous efforts at enforcement stalled when the patent underwent reexamination at the PTO, but Motiva has just added a new chapter to the story. Last week, Motiva filed a complaint with the International Trade Commission (ITC), accusing Nintendo of infringing both the ‘151 Patent and a continuation application (U.S. Patent No. 7,492,268). The essential claims remain the same. Motiva claims that its patents cover the human movement tracking employed by the Wii Fit.

The alternative venue is not an uncommon one for asserting patents, and does not rule out or obviate parallel district court proceedings (although one can be stayed for the other).

In an ITC action such as this, a complainant alleges that some other person (a respondent) is importing goods that is otherwise harming an existing U.S. (domestic) industry. If the ITC concludes that such harm is being done, the ITC can issue an Exclusion Order, instructing U.S. Customs to block the future importation of goods that do the harm. To a company whose manufacturing facilities are located outside the U.S. (true for many consumer products companies these days), such an Exclusion Order can be every bit as painful as a district court injunction.

An ITC action is similar to a district court action in many ways. There is a complaint, there will be discovery (the Federal Rules of Civil Procedure are adopted at the ITC for many aspects of case management), there are motions, and there will be a hearing that is conducted much like a trial.

There are differences as well. Most notably, an ITC action is much faster than a typical district court action. In the ITC, a typical proceeding is scheduled for completion in just over a year (can be a bit longer for "complex" cases). The compressed schedule puts pressure on everyone, but the pressure usually affects the accused infringer more, since they do not control the timing of when the complaint is filed.

Another difference is the presence of a third party in the case. Unlike a district court action, an ITC investigation will also have an Investigative Staff Attorney, who is there to represent the interests of the citizens of the U.S. The Investigative Staff can participate in the case much like a party, reviewing discovery, asking questions, and filing responses to motions and objections.

Another difference is at the outcome of the case. The ITC cannot award monetary damages, and cannot redress past infringement. Instead, the remedy is the Exclusion Order, which will only affect attempted importations after the Order takes effect. Additionally, when an Exclusion Order is issued, the President of the United States has a period of time in which to review the case and reject it. Such a rejection is not common, but it can be made, for example, if the President deems that excluding the importation would unduly harm international relations.

We'll keep you posted as to further developments, and in the meantime, please drop us a line if you have any questions about the case or the ITC.

Well, it looks like Facebook’s attempt to have its lawsuit with Daniel Miller dismissed has failed again. The diligent reader will remember from our previous post that Miller brought a claim against Facebook alleging that the social website was in violation of copyright infringement by allowing the game ChainRX to be posted on its site. ChainRX is facially similar to Miller’s game Boomshine. Facebook has tried to have the lawsuit thrown out, claiming that Miller had not alleged a sufficient claim. The judge did not agree, saying that the threshold to have the case move forward was low and that Miller satisfied that low threshold.

In the present decision, on Sep. 22, 2010, the judge denied Facebook’s claims that Miller had failed to prosecute the case because Miller did not serve the co-defendant Yao Wei Yeo. In a previous court order, Miller was told that he had until July 30 to serve Yeo with a complaint. Miller took subsequent steps to locate Yeo: he subpoenaed the website that hosts Yeo’s website, but was only able to obtain a UPS Store address for Yeo. Miller subsequently sent a complaint to the UPS address. Even though Yeo has yet to appear in the actual lawsuit, the federal judge has ruled that Miller has met the due process requirement for service of process.

The federal judge, in his ruling, states that “[i]ndeed, it appears that defendant Yeo did in fact receive notice of this action.” After receiving the complaint in his mailbox, Yeo even contacted Facebook’s in-house counsel and discussed the case with him.

It appears that the lawsuit will continue to go forward against Facebook. We will, as always, stay on top of the action and keep you as updated as we can.

*Thanks to Josh Mosley for his continued help with this post and with the blog

In the beginning of June, Patent Arcade reported that Harmonix Music Systems, Inc. and Viacom Inc. were close to settlement in the Harmonix v. Konami case (one of two Harmonix/Konami cases). At that time, it was unclear whether the progress toward settlement in the Harmonix v. Konami case would affect sister case Konami v. Harmonix. It appears now that the two sides have reached an agreement in Konami v. Harmonix and filed a Motion to Dismiss in the Eastern District of Texas on September 15, 2010. The following day Harmonix filed a motion to dismiss a similar and concurrent case in Massachusetts.

The Motion to Dismiss indicates that:

Pursuant to the terms of a separate agreement, Plaintiffs Konami Digital Entertainment Co., Ltd. and Konami Digital Entertainment, Inc. (“Plaintiffs”) and Defendants Harmonix Music Systems Inc., MTV Networks Co., Viacom International Inc. and Viacom Inc. (“Defendants”), have agreed to settle, release, adjust and compromise all claims and counterclaims in the above-captioned action. The parties, therefore, move this Court under Rule 41(a) of the Federal Rules of Civil Procedure to dismiss the above-entitled cause and all claims by Plaintiffs against Defendants and all claims by Defendants against Plaintiffs made therein with prejudice.

Terms of the settlement have not been disclosed.