Summary:
U.S. Patent No. 6,231,444 (the ‘444 Patent) is the patent that relates Sony’s DualShock controller. The DualShock controller featured two analog sticks and two integrated vibration motors. The ‘444 Patent mainly relates to the two analog sticks and their functionality. Most developers build a game's control scheme around a dual analog controller. Computers use to dominate the first-person shooter genre because the mouse and keyboard provided better controls to the players. Dual analog sticks made consoles a more viable option for first-person shooters because developers could separate the aim and movement inputs. The aim could be on the left stick and player movement on the right stick. It took a while for developers to maximize the potential of the dual analog, but now every console uses a dual analog controller.


Abstract:
An operating device used in a game machine for playing a television game includes a main body portion of the operating device and first and second grip portions protruding from one side on respective end parts of the main body portion. A first operating unit is mounted on one end of the main body portion and a second operating unit is mounted on the opposite end of the main body portion. The first and second operating units are provided with a plurality of thrusting operators protruding from the upper surface of the main body portion and a plurality of signal input elements actuated by the thrusting operators. A third operating unit and a fourth operating unit are arranged facing each other on the proximal ends of the first and second grip portions. Each of the third and fourth operating units has a rotation member and a plurality of signal input devices actuated by the rotation member. When the first and second grip portions are gripped, the third and fourth operating units can be manipulated by a thumb finger of a hand gripping the first or second grip portion. The operating device further includes vibration imparting mechanism for imparting vibrations to the user's hands.

Illustrative Claim:
1. An operating device for a game machine, comprising: a main body having front and rear sides and upper and lower surfaces; first and second grips protruding at spaced positions from end parts; a first operating unit mounted in said main body adjacent one of said spaced positions, said first operating unit having a plurality of first thrusting operators protruding from said upper surface of said main body and a plurality of signal input elements each for generating a signal when a corresponding one of said first thrusting operators is depressed; a second operating unit mounted in said main body adjacent the other one of said spaced positions, said second operating unit having a plurality of second thrusting operators protruding from said upper surface of said main body and a plurality of signal input elements each for generating a signal when a corresponding one of said second thrusting operators is depressed; and third and fourth operating units arranged on said rear side of said main body, said third operating unit being positioned adjacent said first grip and said fourth operating unit being positioned adjacent said second grip so that said third and fourth operating units confront one another, said third and fourth operating units each having a rotation member and at least one signal input element for generating a signal in response to an operation of said rotation member.


Researched By: Andrew F. Thomas

On May 15, 2018, Sony Interactive Entertainment LLC (“Sony”) filed a petition for Inter Partes review (“IPR”) of U.S. Patent No. 7,666,096 (the “’096 Patent”).  The owner of the ’096 Patent is Techno View IP, Inc. (“Techno View”).  The ’096 Patent generally relates to hardware and software for displaying stereoscopic images (e.g., by providing different images that are offset from a user’s left and right eyes to create a three-dimensional effect).  While not explicitly discussed in the petition, the IPR is likely related to Sony’s Playstation VR system.



Claim 1 of the ’096 Patent reads:

1. A method of displaying images in a videogame system that supports two-dimensional and three-dimensional display of the images, said method comprising the computer implemented steps of:
   clearing left and right backbuffers in the videogame system;
storing an image into the left backbuffer;
   determining if the image is in a two-dimensional format or a three-dimensional format, wherein when the image is in a three-dimensional format, calculating the coordinates of a second view position of the image and storing a second view position image into the right backbuffer;
   displaying the image stored in the left backbuffer onto one or more displays when the image is in a two-dimensional format; and
   simultaneously displaying the images stored in the left and right backbuffers onto the one or more displays to create a three dimensional perspective of the image to a user when the image is in a three-dimensional format.

This isn’t the first IPR that Sony has filed regarding stereoscopy.  Back in February, Sony filed an IPR petition against U.S. Patent No. 9,503,742, which relates to stereoscopic image decoding via data compression.

This filing is a great example of a defendants using IPRs to attack patents asserted in litigation.  Per Sony’s IPR petition, the ’096 Patent is involved in a patent infringement lawsuit (No. 8:17-CV-01268) filed by Techno View in the Central District of California against Sony.  The ’096 Patent was also asserted by Techno View against Sony in a U.S. District Court for the District of Delaware suit on May 15, 2017, though that case was dismissed.  Techno View has apparently also asserted the ’096 Patent against Oculus VR, LLC and Facebook, Inc.

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.

At first blush, this patent infringement case does not seem as though it would fall within the scope of videogame law, but it does. T5 Labs brought suit against Gaikai for infringement of U.S. Patent No. 8,203,568 ("the 568 patent"). This patent involves using a centralized server within a bank of servers that allows remote access by a user. The server runs a plurality of programs which share a graphical processing unit (GPU) which can store frames generated by different programs at different memory locations. For example, using this technology, a player at home could essentially stream the graphical processing of a game from the remote server to their home. The patent is meant to address, among other things, the speed with which GPUs become obsolete for the average consumer as well as allowing the development of programs over different platforms without having to actually create new code for each platform. Specifically, the patent attempts to address the problems of compressing video data signals over a broadband connection while also decreasing the latency in hosted interactive graphics systems.

T5 alleges that Gaikai is directly infringing by, "virtualizing multiple instances of game programs on a server with one or more shared GPUs through [its] cloud-based gaming applications and service." Furthermore, T5 alleges that by offering for sale and selling the use of its GPU cloud, Gaikai is committing contributory infringement as well as inducing the direct infringement of others. Prior to filing its complaint, T5 claims to have provided written notice to Gaikai that the patent in question was being infringed upon. T5 seeks a declaratory judgment stating infringement has occurred and that the patent is valid and enforceable as well damages and a permanent injunction against Gaikai.

Gaikai filed a motion to dismiss for failure to state a claim, but the magistrate court denied the motion stating that T5 had alleged sufficient facts to allow for the inference that infringement exists. After its motion was denied, Gaikai filed an answer to the complaint along with counterclaims that sought declaratory judgment stating that Gaikai has not infringed upon the 568 patent and that the patent is invalid.

This patent dispute is even more relevant with the advent of the next generation of consoles later this year. Both the Xbox One and the PS4 tout cloud-based computing and streaming as one of their main features. Sony's PS4, in particular, is of note because of its acquisition of Gaikai last July. The console-maker has said that it will be utilizing the streaming service in order to provide backwards compatibility with its PS3 game library. Due to the broad nature of the patent, a favorable ruling for T5 could lead to console manufacturers having to rethink cloud computing and its implementation, or will otherwise lead to increased costs to cover the patent license(s).

We will monitor this case and inform you of any new developments.

Case Update:

Some time ago we wrote about Dillinger, L.L.C. ( a company that claims to own the rights of publicity and trademark to the names and nicknames of the late Depression Era bandit, John Dillinger) filing suit against Electronic Arts over its use of the “Dillinger” name in its “Godfather” line of video games. On June 15, 2011, the district court judge ruled that the plaintiffs could not bring state law right of publicity claims. On June 16, the court granted summary judgment to EA on Dillinger’s trademark claims, effectively handing EA a total victory in the case.

John Dillinger, according to the court order, was a notorious Indiana gangster who terrorized the Midwest for several years, until he was gunned down by the F.B.I. in a Chicago firefight, in 1934. Under a relatively recent Indiana statute, which recognized a descendible right of publicity, plaintiffs claimed the right to control Dillinger’s “personality” rights for commercial purposes. The court found however, that Indiana’s Right of Publicity Statute does not apply to persons who died before the enactment of the statute, and that videogames also fall under the “literary works” exception to the statute.

As regards the trademark infringement claims, the court found that EA had an affirmative fair use defense under the First Amendment. Plaintiff tried to argue that use of the Dillinger name had no artistic relevance to the video game, and so could not be eligible for First Amendment trademark protection under Rogers v. Grimaldi, 875 F.2d 994 (2nd. Cir. 1989). The court found, however, that EA’s use of the Dillinger name was protected under Rogers because it did have some artistic relevance to the game, and it did not explicitly mislead the public as to the source or content of the work. Dillinger, LLC plans to appeal the ruling.



Original Post:

Dillinger, L.L.C., a company that claims to own the rights of publicity and trademark to the names and nicknames of the late Depression Era bandit, John Dillinger, has filed suit against Electronic Arts over its use of the “Dillinger” name in its “Godfather” line of video games.

In the suit, Dillinger takes issue with EA’s use of the name “Dillinger” for several weapon upgrades that were offered in the Godfather and Godfather II video games. The complaint names two examples: the “Dillinger Level Three Tommy Gun” from the first Godfather game, and the “Modern Dillinger Level Four Tommy Gun” from the Godfather II game. The complaint refers to the former as a “swift and gruesome killing machine,” and having played those games, this author can confirm that the guns were indeed swift and gruesome.

Dillinger filed suit in Indiana, and the complaint charges EA with various counts, including alleged violations of Indiana’s Publicity Statute; federal, state and common law trademark law; state unfair competition law; and even includes claims for “Criminal Mischief,” “Conversion” and “Deception” under the Indiana Crime Victims Act. Dillinger seeks monetary damages and injunctive relief, and here’s hoping they resolve this before Valentine’s Day.

The case is Dillinger, L.L.C. v. Electronic Arts, Inc., No. 1:09-cv-1236 (S.D. Ind., filed Oct. 1, 2009), and we’ll keep you posted as we learn more.

Hochstein et al. v. Microsoft et al.
United States District Court for E.D. Mich.
Case No. 04-cv-73071, Filed August 11, 2004

Case Update:

After 6 long years of litigation, Hochstein’s case against Microsoft alleging patent infringement by the Xbox game was dismissed on July 20, 2010. To recap, Hochstein alleged that Microsoft’s Xbox infringed on his patent (link to U.S. Patent No. 5,292,125) for a device that allows two or more people play video games together without being in the same location (such as over a telephone line.) Hochstein argued that this patent should be construed to cover all systems that can have multiple players, like the Xbox, and sought royalties on Xbox sales, plus an order barring further use of his invention.

When last we checked in (June 2009) the court had dealt Microsoft a blow by accepting the Special Master’s construction of “video game communication circuit” to mean “a circuit operatively associated with a local video game and at least one remote video game without limitation as to the circuit's physical location or attachment to the local video game.” Microsoft objected to the master’s recommendations as too broad, but the court granted plaintiffs’ motion to adopt the recommendation anyway.

Ultimately the judge ruled that Hochstein’s patent only covered "game systems that are electrically connected" and that such a connection doesn’t include the type of link among players used by the Xbox. The issue of whether Microsoft infringed Hochstein’s patent turned on the definition of “electrically connected” and whether Hochstein’s use of this term in his patent application included the phenomenon of electromagnetic induction—the technology used in the Xbox.

In the Special Master’s report of June 2009 he recommended that “electromagnetic induction” be excluded from the scope of “electrically connected” but reversed in his December 2009 report to conclude that the term “electrically connected,” as used in the ‘125 patent did include the phenomenon of “electromagnetic induction” after all.

The court rejected these conclusions in a detailed analysis, ruling:

1) that the Special Master erred in considering extrinsic evidence in making this decision;
2) because in this case the ordinary meaning of term could be deduced using the intrinsic evidence contained in the patent application itself absolving the need to look elsewhere, and;
3) that the term “electrically connected” as contemplated by the 125 patent did not include the phenomenon of electromagnetic induction, rather it is only used to describe connections by means of electrically conductive wires.

The court also considered whether Microsoft’s litigation conduct—namely the fact that they hadn’t raised the non-infringement defense several years earlier—was properly determined by the Special Master to be an admission by Microsoft that they too believed that “electrically connected” encompassed electromagnetic induction. The court determined that patent cases are unlike contracts cases where “silence is acceptance.” Rather silence in this regard could not be considered as evidence and Microsoft’s failure to present the non-infringement defense earlier could not count as proper extrinsic evidence against its case.

Original Post:

On June 22, 2009, the day before trial began, the judge in this patent infringement case made a key decision by opting to use the special master’s construction of a disputed claim.

In 1991, Peter Hochstein and Jeffrey Tenenbaum came up with the idea of communicating live while playing the same video game in separate locations. They patented the technology for doing so in 1994. In 2002, Microsoft released Xbox Live, a gaming service that also allows users to communicate while playing the same game. Sony also released similar capabilities for PlayStation 2. In 2004, Hochstein, Tenenbaum and Harold Milton, Jr. (an assignee of the patent) brought a patent infringement suit against Microsoft and Sony alleging that the voice and data communications technology used in the gaming systems infringed on the patent claims. For relief they sought a permanent injunction and treble damages. Sony settled its suit in April 2009, leaving Microsoft as the only remaining defendant.

While U.S. Patent No. RE36,574 is also asserted, the primary patent at issue is U.S. Patent No. 5,292,125, which is for an “apparatus and method for electrically connecting remotely located video games.” See representative claim 1:

1. A video game communication assembly (100) for communicating command signals between a local video game (28) having at least two player ports (A, B), at least one set of player controls (20), and at least two operating modes, and at least one remote video game (30) through a medium (110) capable of transmitting a plurality of data signals and voice signals, said assembly (100) comprising:

control means (106) for controlling command signals received from a set of player controls (20) of the local video game (28) and for creating communication signals;

modem means (114) for bilaterally transmitting said communication signals between said control means (106) and at least one remote video game (30);

first port means (112) for bilaterally transmitting said communication signals between said control means (106) and said modem means (114), said assembly (100) characterized by

said control means (106) including transit time means (126) for determining the amount of time required for said communication signals to travel between said first port means (112) and the remote video game (30).

After years of discovery, last fall Microsoft alerted the court that some claims still needed to be construed before trial began. Microsoft submitted its motion for construction of claim 39 in February 2009. See claim 39:

39. A video game communications circuit for communicating command signals between a local video game having at least two player ports (A, B), at least one set of player controls (20), and at least one remote video game (30) in a medium capable of transmitting plurality of data signals and voice signals, said circuit comprising:

a first microprocessor (140) electrically connected to one set of player controls (20), two player ports (A, B) and an oscillating circuit (Y1, C2, C3, R2);

two player port logic circuits (108, 124) electrically connected between said first microprocessor (140) and the two player ports (A, B);

a switch (150) connected to said first microprocessor (140) having at least two positions;

a modem circuit (114) electrically connected to said first microprocessor (140) for bilaterally transmitting communication signals to and from said first microprocessor (140);

a voice over data circuit (134) for filtering voice signals from communication signals and for transmitting both to said modem circuit (114); and

communication couplers (L1, L2) for connecting said voice over data circuit (134) to the medium of communication.

Microsoft wanted the claim to be construed to mean that the “video game communications circuit” and its associated components were separate and distinct from the video game computer to which the circuit is attached.

Microsoft argued that a distinction between the claimed apparatus and its video game computer was expressly reflected in claim 39, which asserts that the video game communications circuit is not the local video game, but instead, a separate circuit that connects to the local video game. ‘Plaintiffs want to collapse this distinction and ignore the claim's clear direction as to where particular components must be located — i.e., in a separate apparatus, and not in the video game computer itself,’ Microsoft argued in its motion.

In May, the special master to whom the matter was referred issued his report and recommendations, denying Microsoft's proposed limiting construction. Instead, he construed “video game communication circuit” to mean “a circuit operatively associated with a local video game and at least one remote video game without limitation as to such circuit's physical location or attachment to the local video game.” Microsoft objected to the master’s recommendations, but the court granted plaintiffs’ motion to adopt the recommendation anyway, dealing Microsoft a blow right before trial.

Read the court's claim construction order here.

A couple side notes:

This is the same case where Microsoft got in trouble for wasting the court’s time by filing an objection to discovery because of a typo Hochstein made in the discovery request. In February 2009, Hochstein deposed a Microsoft employee, Ms. Mason, about Xbox marketing and then filed a formal request for all marketing documents related to Xbox “including but not limited to all such documents identified by Ms. Mason at her February 12, 2008 [sic] deposition.” Microsoft responded five weeks later with general objections, including “Microsoft objects to this request as vague in that Ms. Mason’s deposition took place in 2009, not in 2008.” Over the next week, Microsoft proceeded to provide over 140,000 documents to Hochstein without any index.

The court, upset by Microsoft playing dumb in its written response, said the frivolous objection to an obvious, harmless typo was a waste of time for all the parties involved. The court issued a separate order directing Microsoft to explain why its counsel shouldn’t be sanctioned “for unreasonably and vexatiously multiplying the proceedings.”

Microsoft’s five week delay and “document dump” less than two months before trial also annoyed the court. The court ordered Microsoft to provide an index of the marketing documents within one week and barred Microsoft from introducing the marketing documents against Hochstein or contesting the admissibility of the marketing documents at trial.

Read the court’s discovery order here.

Also, in January 2009, Hochstein filed an almost identical suit as the one discussed here (dubbed Hochstein I), again brought against Microsoft and Sony. According to the complaint, during a Hochstein I pretrial conference in January 2008, the parties discussed whether the defendants’ new game consoles (Xbox 360 and PlayStation 3) should be litigated in Hochstein I or a separate lawsuit. Hochstein filed this complaint to adjudicate the possible infringement of the new products separately.

Read the Hochman II complaint here.

I. Background



Connectix Corporation created and sold a software program called “Virtual Game Station” (VGS), an emulator of the Sony PlayStation, which allowed users to play PlayStation games on their computers. Sony brought this lawsuit alleging trademark infringement and copyright infringement of BIOS, its software program which operates the PlayStation. Connectix’s VGS didn’t contain any of Sony’s copyrighted material, but Connectix did use that material during VGS production, when it reverse-engineered the PlayStation to discover how it worked.



Connectix reverse-engineered Sony BIOS by observing how the BIOS chip functioned and copying that functionality. The BIOS was downloaded into the RAM of the developers’ computers as they observed how it worked. Connectix did not use any of the copyrighted material from BIOS in the final version of the VGS. The court relied on prior case law and concluded that functional elements of a product aren’t copyrightable. Sega v. Accolade; 17 U.S.C. § 102 (b).



The district court granted an injunction keeping Connectix: “(1) from copying or using the Sony BIOS code in the development of the Virtual Game Station for Windows; and (2) from selling the Virtual Game Station for Macintosh or the Virtual Game Station for Windows... The district court also impounded all Connectix’s copies of the Sony BIOS and all copies of works based upon or incorporating Sony BIOS.”



Connectix appealed to the Ninth Circuit, admitting it copied Sony’s copyrighted BIOS software in developing the VGS but arguing that doing so was protected as a fair use. Connectix also contended that its VGS didn't tarnish Sony's PlayStation trademark.


A. Fair Use Analysis


According to 17 U.S.C. § 107, the factors for determining fair use are:



1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;



2. The nature of the copyrighted work;



3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and



4. The effect of the use upon the potential market for or value of the copyrighted work.



The court relied on Sega v. Accolade, which held that “where disassembly is the only way to gain access to the ideas and functional elements embodied in a copyrighted computer program and where there is a legitimate reason for seeking such access, disassembly is a fair use of the copyrighted work, as a matter of law.” Since object code, which contains some uncopyrightable functional elements, is not readable by humans, reverse-engineering may be necessary to disassemble the code to find the source code and discover those elements. So even though intermediate copying may constitute copyright infringement, that copying may be protected by a fair use defense, based on the outcome of an analysis of the factors listed above.



1. Nature of the copyrighted work


The court granted BIOS a lower level of protection because it contained unprotectable aspects that could only be examined through copying. The court felt that its methods of observing and disassembly, including intermediate copying, were required to get to the unprotected functional aspects of the software. The court noted that Sega expressly allows disassembly and then refused to distinguish Connectix’s methods of reverse-engineering.


The court rejected Sony’s argument that Connectix could have just copied BIOS once and disassembled it from that copy, rather than copying it over and over again. The court said that Sega never specified that copying could only occur a certain number of times, but rather covered what could or couldn’t be copied. The court refused to “supervise the engineering solutions of software companies in minute detail” and added that what Sony proposed would be a less efficient path of reverse-engineering anyway. Copyright rules are created to prevent authors from wasting effort. The court noted that if Sony wanted to erect a barrier keeping others from the intermediate copying of BIOS and finding the functional aspects in BIOS, it should have applied for a patent, which it failed to do.


2. Amount and substantiality of the portion used


Although Connectix copied BIOS many times and disassembled parts of it, this factor weighs little when it is only intermediate copying and the copied parts aren’t used in the final product. Since the VGS didn’t contain any infringing material, this factor didn’t weigh against Connectix.


3. Purpose and character of the use


With this factor, the court looked at whether the alleged infringing product was transformative and provided something new or “merely supersede[d] the objects of the original creation.” The Ninth Circuit held that the district court was wrong to immediately hold a “presumption of unfairness” just because Connectix had a commercial purpose in copying BIOS. Because the commercial use of the copyrighted material was intermediate, and therefore indirect or derivative, and because the reverse-engineering still led to producing a product that was compatible with PlayStation games, the court found that the commercial purpose didn’t weigh against Connectix.


The court found that the VGS was transformative because it created a new platform for playing PlayStation games and because VGS was a completely separate product from the PlayStation, with new object code, “despite the similarities in function and screen output.” The VGS did more than just supplant the PlayStation; it allowed for playing on a computer and the software was expressed differently through unique object code. Because the court deemed the copying to be for a transformative, intermediate commercial use, this factor weighed in favor of Connectix.


4. Effect of the use on the potential market


Here the court considered “not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market for the original.” Transformative works don’t have as negative an impact on the potential market as a product that completely copies and supplants the original. While Sony likely lost some console sales because of the VGS, the court found the VGS to be a “legitimate competitor” and that Sony did not hold a monopoly for platforms that can play Sony games. The desire to promote creative expression and competition in the marketplace trumped Sony’s claim of unfair copying.


Based on its findings for these four factors, the court determined that Connectix’s copying of Sony’s BIOS during its reverse-engineering was an allowable fair use and so Connectix wasn’t liable for copyright infringement.


B. Tarnishment Analysis


Sony also claimed that Connectix’s sale of the VGS tarnished Sony’s PlayStation trademark under 15 U.S.C. Section 1125(c)(1). For that claim to succeed, Sony needed to show that: (1) the PlayStation mark was famous; (2) Connectix was making a commercial use of the mark; (3) Connectix’s use began after the mark became famous; and (4) Connectix’s use of the mark diluted the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services. The court focused on the fourth factor.


The district court found that negative associations occurred because the VGS didn’t play PlayStation games as well as the PlayStation console and consumers got confused about the distinction between VGS and PlayStation. While this court recognized the difference in quality between the two game platforms, there was no reliable proof that consumers misattributed the lower quality VGS to Sony. The court also rejected Sony’s argument that Sony’s trademark was tarnished simply by being linked to the VGS. There was not enough evidence to show that the VGS was much lower quality or that consumers thought negatively of Sony because its games were being played on the VGS.


Click here to read the opinion online.

On Friday, March 5, 2010, the U.S. District Court for the Northern District of California granted Sony’s motion for summary judgment in Bissoon-Dath v. Sony Computer Entertainment of America, Inc., Case No. 08-cv-012350MHP.

Bissoon-Dath and a fellow plaintiff are screenwriters who previously accused Sony of copying elements of several of the plaintiff’s stories in developing Sony’s God of War video game.

In considering this motion for summary judgment, the court evaluated the plaintiffs’ claims for copyright infringement to determine whether “no reasonable juror could find substantial similarity of ideas and expression” between the plaintiffs’ stories and God of War. In particular, the court explained that the legal standard for copyright infringement required a plaintiff to show ownership of the copyright and copying of protected elements.

This case turned on the issue of copying, and the court evaluated whether the plaintiffs’ stories and God of War were “substantially similar,” which the plaintiffs had to establish to prove copying. In doing this, the court compared the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works.

In addition, the court noted that general plot ideas and other scenes that flow naturally from “unprotectable basic plot premises” are not protected by copyright law and thus not considered when the works are compared. As the court put it:

“In such a case, it is particularly important for the court to use its own ‘Blade of Chaos’ to slice or filter out the unprotectable elements. Greek gods, dialogues among them about mortal affairs, rivalries among the gods, and mythical beasts such as the Hydra or the Nemean Lion are unprotectable elements; it is uncontroversial that they have been used widely in both ancient and modern artistic works, in the naming of astronomical bodies and spacecraft, and in other fields.” Slip Op. at 19-20.

Ultimately, after comparing all of the elements listed above (i.e., the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works), the court concluded that no reasonable juror could find substantial similarity between the plaintiff’s stories and God of War, and the court therefore ruled in favor of Sony.

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.

Harmonix Music Systems, Inc., along with a host of game retailers, is asking a court in Tennessee to resume proceedings in a patent suit brought by Gibson Guitar Corporation over the "Guitar Hero" line of video games.

The suit was filed by Gibson in 2008, and alleged that the Guitar Hero games infringed U.S. Patent No. 5,990,405, entitled “System and Method for Generating and Controlling a Simulated Musical Concert Experience.” The claims in the patent were generally directed to simulating participation in a musical performance, and included the following language (claim 1) specifying a “musical instrument”:

a. a musical instrument, the musical instrument generating an instrument audio signal at an instrument audio output, the instrument audio signal varying in response to operation of the instrument by the user of the system;

Shortly after the suit was filed, it was stayed (e.g., placed on hold) because the U.S. Patent and Trademark Office (PTO) had decided to open a reexamination proceeding to reconsider the validity of the patent. It is common for courts to stay cases pending reexamination, since the outcome of the reexamination can alter the patent’s scope (or render it invalid altogether).

During the PTO reexamination, the patentee altered the scope of the claim 1 “musical instrument” as follows:

a. a musical instrument adapted for (i) making musical sounds and (ii) generating an instrument audio signal representative of the musical sounds at an instrument audio output, the instrument audio signal comprising an electrical signal output by the musical instrument that varies in response to operation of the instrument by the user of the system;

This change was made after the PTO rejected the original claim as being the same as another U.S. patent (Zimmerman, U.S. Patent No. 5,488,196, entitled “Electronic Musical Re-Performance and Editing System”). The patentee argued that the Zimmerman patent did not show a musical instrument adapted for “making musical sounds” and “generating an instrument audio signal …” as recited in the new claim 1. The PTO agreed, and indicated that it will be issuing the reexamined patent with the new claim language.

Harmonix feels that the Guitar Hero game does not have the kind of “musical instrument” that will be required by the new claim 1. In its motion asking the court to lift the stay, Harmonix indicates that once the stay is lifted, it will file a motion for summary judgment that the Guitar Hero game does not infringe on this basis.

Harmonix also indicated that it will offer a second basis for summary judgment of non-infringement. That second basis comes from a California court’s ruling in another case involving Gibson and Activision, makers of the “Rock Band” game. In that case, the California court concluded that the Gibson patent simply did not cover interactive video games, and Harmonix will ask the Tennessee court to make a similar ruling.

So now we wait and see if/when the parties take the stage again. The motion to lift the stay seems likely to be granted, since the PTO reexamination proceedings are ending. Once the stay is lifted, we will likely see Harmonix’s summary judgment motion, and that may well signal the conclusion of this case. As a caveat, though, the patentee also added a number of new claims to the patent in the reexamination process, and some of those new claims don't have the "musical instrument" language quoted in claim 1. It remains to be seen whether those new claims become the new center of attention going forward.

The case is Gibson Guitar Corp. v. Wal-Mart Stores Inc., et al., No. 3:08-0279 (M.D. Tenn.), and we’ll keep you posted as we learn more.

Wi-Fi network company Bandspeed, Inc. has filed a patent infringement suit against Sony Electronics Inc., Nintendo of America, Inc. and Apple, Inc.

In the suit, Bandspeed alleges that the Sony PS3, Nintendo Wii and Apple iPhone 3G all infringe upon two of Bandspeed’s patents. The patents are U.S. Patent No. 7,027,418 (entitled “Approach for Selecting Communications Channels Based on Performance”) and 7,570,614 (entitled “Approach for Managing Communications Channels Based on Performance”), and they appear to be generally related to managing wireless communication channels using frequency hopping, so the suit is likely to target the wireless network functionality of the accused products - here’s a sample claim from the ‘418 patent:

1. A method for selecting communications channels for a communications system,
the method comprising the computer-implemented steps of:

selecting, based upon performance of a plurality of communications channels at a first time and channel selection criteria, a first set of two or more communications channels from the plurality of communications channels;

selecting, based upon performance of the plurality of communications channels at a second time that is later than the first time and the channel selection criteria, a second set of two or more communications channels from the plurality of communications channels;

wherein the communications system is a frequency hopping communications system and the plurality of communications channels correspond to a set of frequencies to be used based on a hopping sequence according to a frequency hopping protocol; and

wherein at each hop in the hopping sequence, only one communications channel is used for communications between a pair of participants.

We’ll keep you posted as we learn more. The suit is Bandspeed, Inc. v. Sony Electronics Inc. et al., No. 09-593 (W.D.Tx filed Aug. 7, 2009).