On July 10, 2018, Infernal Technology and Terminal Reality (Infernal) filed a lawsuit in the Eastern District of Texas alleging that Crytek GmbH (Crytek) infringed upon U.S. Patent Nos. 6,362,822 (the '822 Patent) and 7,061,488 (the '488 Patent). The two patents relate to lighting and shadowing methods in computer graphic simulations.

Image from the '822 Patent, Fig. 2.

Claim 1 of the '822 Patent reads:

A shadow rendering method for use in a computer system, the method comprising the steps of:

providing observer data of a simulated multi-dimensional scene;

providing lighting data associated with a plurality of simulated light sources arranged to illuminate said scene, said lighting data including light image data;

for each of said plurality of light sources, comparing at least a portion of said observer data with at least a portion of said light data to determine if a modeled point within storing at least a portion of said light image data associated with said point and said light source in a light accumulation buffer; and then

combining at least a portion of said light accumulation buffer with said observer data; and

displaying resulting image data to a computer screen. ('822 patent, col 12, lines 4-21).

Infernal claims that Crytek's utilization of video game engine "CryEngine" allegedly infringes the asserted patents. According to the Complaint, Crytek used the allegedly infringing game engine to develop the Crysis series, Warface, Ryse: Son of Rome, The Climb, and Robinson: The Journey.

Typically, the next step for a defendant in this situation is to petition the Patent Trial and Appeal Board (PTAB) for an Inter Partes Review (IPR), but the '822 and '488 Patents have already survived an IPR because of earlier litigation. In 2015, Infernal sued Electronic Arts for patent infringement. EA responded by petitioning the PTAB for an IPR; however, the PTAB found the '822 and '488 Patents to be "Not Unpatentable." EA settled the lawsuit after the PTAB's decision. Crytek can still petition for an IPR of the asserted patents, but will likely have to use different prior art that the art used by EA or provide a good reason why the Board got it wrong the first time around.

If this seems like deja vu that is because Infernal filed complaints similar to the Crytek Complaint against Microsoft in April and against Activision Blizzard in May. To read our blog post on the Microsoft case click here.  We will continue to monitor all three of these cases and provide updates when possible.

On June 4, 2018, Groove Digital filed a lawsuit in the District Court of Delaware alleging King.com infringed upon U.S. Pat. No. 9,454,762 (the '762 Patent), titled "System and Method for Delivery of Content to a Network Device." Groove Digital claims the '762 Patent relates to push notifications for mobile apps. In the Complaint, King's game, Candy Crush Saga, infringes upon the '762 Patent.

Claim 1 of the '762 Patent reads:

A system for delivering information to a networked device of a user, the system comprising:

a microprocessor running a software application for delivering an applet application to the networked device and managing the delivery of the applet application to the networked device, wherein the applet application passively deploys one or more applets at a time of deployment,

wherein the applet application provides for delivery of content to the networked device and a display of the content in a predetermined portion of a user display that is less than an entire display of the networked device, by the one or more applet, wherein the one or more applet is configured to deploy at least one of independent of or in conjunction with an internet browser window, wherein an internet browser is configured to deploy subsequent to deployment of the one or more applets based on at least one action or inaction of the user, wherein at least one of the applets is configured to become idle upon deployment of the internet browser, and wherein the deployment of the one or more applets is such that at the time of deployment of the one or more applets the user can continue to operate the networked device in a state prior to the deployment of the one or more applets;

a first database coupled to the microprocessor and storing a first set of information relating to the user; and

a second database coupled to the microprocessor and including a second set of information for comparison to the first set of information,

wherein the microprocessor compares the first set of information to the second set of information to determine whether the content should be transmitted to the networked device for display by the one or more applets. ('762 patent, col. 14, lines 9-43).

The '762 Patent has an interesting prosecution history. Samuel Gaidemak and Paul Chacko filed the '762 Patent on March 17, 2006, but the USPTO did not issue the patent until September 27, 2016. During those ten years, the PTO issued eleven office actions against the '762 Patent. On average a patent will face three or four office actions. The more office actions a patent faces, the more prosecution history estoppel the patent acquires, which is used to narrow the patent's claims and restrict the owner's use of the doctrine of equivalents. Groove Digital is asserting the doctrine of equivalents in addition to allegations of literal infringement. King has not yet filed an Answer in response to the Complaint.

Groove Digital is also suing United Bank for infringing the '762 Patent. Normally, we do not report on non-video game related case, but this is the only other lawsuit in which the '762 Patent is asserted. Groove Digital filed the lawsuit against United Bank on December 1, 2017, in the Eastern District of Virginia. The Complaint in that lawsuit alleges that United Bank's mobile banking app infringes the '762 Patent by using push notifications, and the Complaint filed against United Bank is very similar to the Complaint filed against King. United Bank has only filed a motion to dismiss for lack of jurisdiction. These lawsuits against United Bank and King could be the start of Groove Digital suing every mobile app developer that uses push notifications, so it will be interesting to see if Apple takes notice (in view of the integrated push notification technology built into iOS).

We will continue to follow Groove Digital's lawsuit against King and provide updates when available.

The '218 Patent is related to U.S. Patent 7,666,096 (the '096 Patent), also owned by Techno View and also subject to an IPR petitioned by Sony. Both the '218 and '096 Patents are at the center of a lawsuit Techno View filed against Sony in the Central District of California, in which Techno View alleges that Sony's PlayStation VR infringes Techno View's patents. Sony is using the IPRs to challenge the validity of the allegedly infringed patents. Techno View is also suing Oculus VR claiming their VR system infringes the '218 and '096 Patents. Oculus was not part of the IPR petitions filed by Sony.

This is the third IPR petition Sony has filed this year relating to stereoscopic images. For background on the previous two IPR petitions click here and here.

FIG. 5 shows avatars (gamvatars) having a game item function according to an embodiment of the present invention, and it exemplifies gamvatars 530 and 540 generated by combining an avatar 510 which wears clothes purchased at the avatar shop 430 and a game item 520 purchased at the item shop 440. The gamvatar 530 shows the avatar 510 but is arranged in the background layer. As described above, it is possible for the avatar 510 to wear the item 520 or not wear the item 520 depending on the user's setting. ('743 patent, col. 6, lines 33-44).

On May 15, 2018, the Patent Trial and Appeal Board (the “PTAB”) instituted two Inter Partes Review (“IPR”) proceedings against U.S. 5,822,523 (the “’523 Patent”).  The ’523 Patent generally relates to group messaging in interactive applications.  The petitioner is Riot Games, Inc. (“Riot Games”), maker of popular titles like League of Legends The patent owner is Paltalk Holdings, Inc. (“Paltalk”).  From 2006-2009, the ’523 Patent was asserted by Paltalk in patent infringement cases against Microsoft, Sony, Activision Blizzard, NCsoft, Jagex, and Turbine Inc., among others.



Claim 1 of the ’523 Patent reads:

1. A method for providing group messages to a plurality of host computers connected over a unicast wide area communication network, comprising the steps of:

   providing a group messaging server coupled to said network, said server communicating with said plurality of host computers using said unicast network and maintaining a list of message groups, each message group containing at least one host computer;

   sending, by a plurality of host computers belonging to a first message group, messages to said server via said unicast network, said messages containing a payload portion and a portion for identifying said first message group;

   aggregating, by said server in a time interval determined in accordance with a predefined criterion, said payload portions of said messages to create an aggregated payload;

   forming an aggregated message using said aggregated payload; and

   transmitting, by said server via said unicast network, said aggregated message to a recipient host computer belonging to said first message group.

Both Riot Games and Paltalk agree that the ’523 Patent expired.  While it might seem strange for Riot Games to attack the validity of an expired patent, a patent owner may sue for damages that were incurred when their now-expired patent was valid, though they cannot recover damages that were incurred more than six years prior to the filing of the lawsuit.  As it appears that the ’523 Patent expired in 2016, Paltalk could potentially file patent infringement lawsuits up until around 2022, but only for damages that they incurred prior to 2016, and only so long as their damages were in the six years before they filed the lawsuits.  For example, if Paltalk sued a game company for patent infringement on Jan. 1, 2021, they could recover damages from Jan. 1, 2015, up until the date the ’523 Patent expired in 2016.

On April 11, 2018, Infernal Technology, LLC and Terminal Reality, Inc. (“Infernal”) filed a complaint for patent infringement against Microsoft Corporation (“Microsoft”).  The asserted patents, U.S. 6,362,822 and U.S. 7,061,488, relate to lighting and shadowing methods for graphics simulation. According to Infernal, both patents have already survived an Inter Partes Review challenge filed by Electronic Arts in 2016.



According to the complaint, Terminal Reality was the developer of games such as Nocturne, Bloodrayne, Ghostbusters: The Video Game, Kinect Star Wars, The Walking Dead: Survival Instinct.  As part of their game development work, Terminal Reality developed a graphics engine (“Infernal Engine”).  Infernal Technology has an exclusive license to patents related to the Infernal Engine, including those asserted against Microsoft.

Infernal alleges that games developed by Microsoft on the Unreal Engine 4, CryEngine 3, CryEngine 4, Alan Wake Engine, Renderware Engine, Forge Engine Forzatech Engine, Northlight Engine, Unity Engine, Foundation Engine, Halo 4 Engine, Halo 5: Guardians Engine, and Halo: Reach Engine infringe the asserted patents.  These allegations seem to include the lions’ share of games on Microsoft’s consoles, including but not limited to Alan Wake, Crackdown, Crackdown 2, Crackdown 3, Dead Rising 3, Fable Legends, Forza Motorsport 6, Forza Motorsport 7, Gears of War 4, Halo 4, Halo 5: Guardians, Halo: Reach, Kalimba, Ori and the Blind Forest, PlayerUnknown’s Battlegrounds, Quantum Break, ReCore, Rise of the Tomb Raider, Ryse: Son of Rome, Sea of Thieves, State of Decay, and Super Lucky’s Tale.

Interestingly, Infernal’s case was filed in the Eastern District of Texas.  While that venue was once a hotbed of patent litigation, in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the Supreme Court limited venue in patent infringement actions to where (1) the defendant resides, or (2) the defendant has committed acts of infringement and has a regular and established place of business.  This ruling has generally been seen as a significant limitation on bringing cases in the Eastern District of Texas.  Nonetheless, Infernal alleges that Microsoft is a resident of the State of Texas, has a designated agent for service of process in the State of Texas, and has committed acts of infringement in the State of Texas.  Whether the facts underlying these assertions are sufficient for venue in the Eastern District of Texas after TC Heartland remains to be seen.

We will monitor this case and keep our readers informed of any updates.

On April 9, 2018, the Federal Circuit ruled in favor of defendants Microsoft Corporation, Ubisoft, Inc., Nintendo of America, Inc., Electronic Arts Inc., Harmonix Music Systems, Inc., and Majesco Entertainment in a patent infringement suit brought by Australian individual Richard J. Baker.   The suit relates to Baker’s U.S. Patent No. 5,486,001, which relates to an instructional aid for movements.  The accused products included video games that incorporated an image capturing device (like a camera) connected to a gaming console or personal computer.


The ’001 Patent reads, in claim 1 and as amended during prosecution:

capturing and storing initial visual image signals representative of a particular movement at a first location,

storing preferred image signals representative of a selected preferred movement at a second location remote from said first location in a data base of a computer,

transmitting said captured and stored visual image signals from said first location to said computer at said second location,

. . .

transmitting said regenerated signals from said computer at said remote second location to said first location and stored in image presentation means which permits viewing thereof with dialogue relating to said regenerated visual secondary image signals.

The Federal Circuit affirmed the district court’s finding that “remote,” as used above, requires “more than physical separation at the same location.”  The Federal Circuit found that this amendment prevented infringement by any of the defendants, both literally and under the doctrine of equivalents.

Cases like these emphasize the importance of careful patent prosecution.  Per the Federal Circuit, the “first location” and “second limitation” language used above was added to traverse a reference (U.S. Patent No. 5,184,295 to Mann).  Little changes like these, which invoke the doctrine of prosecution history estoppel, can have significant ramifications during litigation, as demonstrated here.  It’s game over for Mr. Baker in this case.

On March 27, 2018, Hybrid Audio, LLC (“Hybrid Audio”) sued Nintendo of America Inc. and Nintendo Co., Ltd. (“Nintendo”) for alleged infringement of RE 40,281, a reissue of U.S. 6,252,909.  The allegedly infringing products include the Nintendo Wii and the Nintendo DS.  RE 40,281 generally relates to signal processing and is part of technology used for MP3 technology, and Hybrid Audio’s argument is that Nintendo infringes via practicing various parts of the MP3 technical standard (ISO/IEC 11172-3:1993).


As part of Hybrid Audio’s complaint, it notes that Nintendo may enter a Reasonable and Non-Discriminatory (“RAND”) agreement to license RE 40,281 as part of the MP3 Standards. Hybrid Audio also indicates that products supplied by Microsoft Corporation are not part of the allegedly infringing products, suggesting that Microsoft has possibly already entered into such an agreement.

RAND agreements, sometimes called FRAND agreements (for “Fair, Reasonable, and Non-Discriminatory”), are commonly used in patent pools. In industries where standards (e.g., audio standards like MP3 and cellular communications standards like 3G or LTE) are important, patent owners often collectively pool “standards-essential” patents and mutually agree to license those patents on FRAND/RAND terms. For patent owners, this can be a good deal: once their patents become standards-essential, users of the standard must license their patent, albeit on RAND/FRAND terms. For licensees, this can also be a good deal: because all patent owners must license their standards-essential patents on RAND/FRAND terms, they can usually acquire licenses to the standard fairly easily and with reasonable terms.

Strangely, Hybrid Audio's complaint specifically identifies the Nintendo Wii and Nintendo DS as infringing products.  The Nintendo Wii was launched in 2006, whereas the Nintendo DS was launched in 2004.  35 U.S.C. § 286 limits damages to six years prior to the filing of a complaint, meaning that Hybrid Audio's recovery will be limited to the period from 2012 to 2018.  During that period, Nintendo was marketing different a next generation of game consoles (the Wii U and the 3DS), which are not referenced in Hybrid Audio's complaint.  Potential damages related to sales of the Wii and DS are likely to be extremely small.

On Feb. 7, 2018, Nintendo Co., Ltd. and Nintendo of America, Inc. (“Nintendo”) filed two petitions for Inter Partes Review of U.S. 6,219,730 to Nguyen, a patent owned by Genuine Enabling Technology LLC (“Genuine”). 

The challenged ’730 Patent relates to user input:

1. A user input apparatus operatively coupled to a computer via a communication means additionally receiving at least one input signal, comprising:
   user input means for producing a user input stream;
   input means for producing the at least one input signal;
   converting means for receiving the at least one input signal and producing therefrom an input stream; and
   encoding means for synchronizing the user input stream with the input stream and
   encoding the same into a combined data stream transferable by the communication means.

According to Nintendo, the ’730 Patent is anticipated at least in part by the practice of “bit-robbing” which, in short, involves combining an existing signal (e.g., an audio signal) with other signals (e.g., input signals) such that a single data stream could be used to transmit multiple types of data from multiple input.  For instance, Fig. 1B of the ’730 Patent depicts plugging a microphone and speaker into the mouse, in effect combining audio and input data streams:



The use of means-plus-function language may make these claims narrower in scope than they look at first glance.  Before granting Nintendo’s IPR petition, the USPTO Patent Trials and Appeals Board (“PTAB”) will have to figure out what structure is required by the claimed means, and whether Nintendo’s prior art shows that structure.

Nintendo’s Petition for Inter Partes review comes on the heel of the case Genuine Enabling Technology LLC v. Nintendo Co., 1:17-CV-00134-MSG, filed in the District of Delaware on Feb. 8, 2017.  In that case, Genuine asserts that Nintendo’s Wii Remote infringes the ’730 Patent. Per Nintendo, Genuine has also sued Sony for infringement of the same patent.

On January 30, 2018, Barbaro Technologies, LLC (“Barbaro”) sued Niantic, Inc. (“Niantic”) for the alleged infringement of U.S. Patent Nos. 7,373,377 and 8,228,325. Barbaro’s asserted patents are generally directed to integrating real-world information (e.g., a real-world geographic location) with an augmented reality environment. Barbaro specifically asserts that both Niantic’s Pokémon GO and Ingress infringe the asserted patents.


Claim 1 of the ’377 Patent reads:

1. A method of integrating real-time information into a virtual thematic environment using a computer system including a client and a server, comprising:
   providing a graphics user interface (GUI) module for use in the client system;
   providing a quantum imaging environment (QIE) module in one of the client or the server system;
   providing a digital logic library in one of the client or the server system;
   providing a primary application in the client system;
   providing a first user interface that is associated with the primary application;
   sending a request for first real-time information via the QIE module to the world wide web;
   obtaining the first real-time information via the world wide web;
   downloading the first real-time information from the world wide web into the primary application;
providing access to the first real-time information within the virtual thematic environment via the first user interface;
   providing at least one secondary application within the primary application at the client system;
   sending a request for second real-time information via the QIE module;
   obtaining the second real-time information via the world wide web;
   downloading the second real-time information into the secondary application;
   enabling a user to access the at least one secondary application through the first user interface; and
   enabling the user to control the at least one secondary application through a second user interface.

Niantic, which was spun off from Google, Inc. (“Google”), may have been aware of the Barbaro patents as early as 2006. Per Barbaro, around October 26, 2006, Barbaro sent Google’s Deputy General Counsel a copy of patent publications that led to the issuance of Barbaro’s asserted patents. Google, Inc. allegedly acknowledged the letter but “refused to discuss the matter before the patent issued.” No further detail regarding exchanges between Barbaro and Google are provided in the complaint.

This is case 2:18-CV-00773 in the District Court for Central District of California.  We will track it and keep you apprised of significant updates.

On January 17, 2018, U.S. District Judge John Michael Vazquez of the District of New Jersey dismissed all patent infringement claims asserted by Joseph Scibetta (a/k/a “Bankers & Brokers”) (“Scibetta”), against Slingo, Inc. and RealNetworks, Inc. (collectively, “Slingo”).  The reason: none of Scibetta’s patents survived scrutiny 35 U.S.C. § 101.

Scibetta is the owner of various intellectual property rights relating to a card and casino game called “BANKERS & BROKERS.”   U.S. Patent No. 6,220,597, one of the patents asserted in the case, describes the game in detail:

1. A method for playing a wagering card game comprising the steps of:
   Providing a shuffled stack of playing cards where the cards are touched only by the dealer during the game comprising at least one deck thereof;
   providing a planar game playing surface comprising a plurality of separately delineated areas adapted for the placement of bets;
   establishing odds for payout of winning bets placed in any of the aforesaid plurality of separated and delineated areas;
   establishing an initial order of play where players are designated as first player, and so on to a last player;
   initiating a round of play by a first player establishing a bet by placing a wager in a designated space on the table near a pot designated and marked onto a surface for displaying a face-up side of a card dealt to each said player;
   dealing a stack of six face-down cards as a player's pot concealing the faces of each dealt card from each player and a dealer, to the first player and any other player in the game;
   dealing a stack of six face-down cards, concealing the faces of each dealt card from each player and the dealer, to the dealer as a dealer's pot;
   then, only the dealer turning the dealer's pot over and turning over the pots over for each player one at a time;
   then the dealer immediately determining a player's winning status or loss status by comparing a face-up card dealt to each player and a now face-up card dealt to the dealer in the dealer's pot;
   after comparing a dealer's face-up card to a player's face-up card, paying any winning bets placed by each player in the game;
   collecting the played or turned up cards from each pot after bets are paid and placing these cards in a discarded cards designated area on the table;
   determining whether the turned-up dealer's card matches the corresponding turned-up player's card, whereby at any time during the game or before the dealer may imposed step of disqualifying and discarding any got touched by a player.

The other asserted patents (U.S. Patent Nos. 6,626,433, 7,331,580, 7,618,044, and 7,857,314) are similar.

Slingo is alleged to have distributed an unlawful copy of BANKERS & BROKERS on their website slingo.com, which was later acquired by RealNetworks, Inc. The alleged copy of BANKERS & BROKERS is reproduced below (as retrieved from archive.org).



On December 12, 2016, Slingo moved to dismiss Scibetta’s case.  Among other assertions, Slingo claimed that all of Scibetta’s patents were invalid under 35 U.S.C. § 101.

The Court agreed. With regard to Alice step one, the Court noted that Scibetta’s asserted patent claims were substantially similar to the “method of conducting a wagering game” patent found invalid in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), cert. denied sub nom., Trading Techs. Int’l, Inc. v. Lee, 137 S.Ct. 453 (2016).  Indeed, the Court noted that “there is no meaningful distinction between, on the one hand, the unpatentable abstract idea found in In re Smith and, on the other hand, the method and system claims here.”  Per the Court, the fact that some claims recited, among other things, a “‘means’ for identifying player/dealer positions” did not “change the fact that [BANKERS & BROKERS] stems from a patent ineligible abstract idea.”

With regard to Alice step two, the Court found that BANKERS & BROKERS “reflects well-understood, routine, and conventional wagering activity” such that “Plaintiffs made no technical improvement on the original abstract idea of a card wagering game using a standard deck of cards.”  The mere implementation of such a game on a computer did not change the Court’s analysis: “the claims do nothing more than simply describe the application of the game-related abstract ideas to a generic computer system.”

Scibetta’s case is not doomed.  Scibetta still has a viable claim for misappropriation against Slingo.  Moreover, while Scibetta’s trademark and unjust enrichment claims were also dismissed by the Court, the claims were dismissed without prejudice and largely based on pleading deficiencies.  As such, Scibetta will be afforded an opportunity to amend and supplement his complaint.

This case illustrates the difficulties of enforcing patents that, despite their presumption of validity, were granted prior to the Alice decision when the USPTO was using a different standard of examination.  A trend is appearing where the presumption of validity applied to those patents by courts appears to be inherently lower than that given to more recently granted patents.  Scibetta asserted five patents, and not one survived a motion to dismiss.  Those looking to acquire patent portfolios, for example, should be particularly wary of purchasing patents which may look great but may face significant hurdles during enforcement.  Sometimes, a single strong patent is worth more than a hundred unenforceable ones.