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Prime Table Games, LLC v. National Table Games Corp.
United States District Court for S.D. Miss.
Case No. 3:09-cv-346HTW-LRA, Filed June 11, 2009




Case Update:



On October 7, 2009, Prime Table filed a notice for dismissal of the case under FRCP 41(a)(1). Rule 41 allows a plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case National Table Games had not responded to Prime Table’s suit with any court filings before Prime Table filed the voluntary dismissal. Based on the amount of time between the lawsuit being filed and dismissed, the parties likely started settlement discussions immediately after the case was filed, and Prime Table Games kept agreeing to delay the deadline for National Table Games to file its Answer to the Complaint in view of ongoing settlement discussions.




Original Post:


Prime Table Games is the creator and marketer of gambling games that are generally intended for use in casinos but can also be played in other formats such as video and remote games. Prime owns U.S. Patent No. 6,503,145, issued January 2003, which describes a method for a poker "casino game with multiple playing modes and wagering options." According to the patent, the game is supposed to be a player-friendly version of showdown poker that operates with little-to-no casino advantage.

The ‘145 patent abstract describes the game as such:


A casino game incorporates a first compulsory playing mode and one or more optional playing modes without a house advantage. Preferably, the first playing mode is a three-, five- or seven-card poker game against a payout scale based on the respective hand poker rank. Optional modes without a house advantage include head-to-head poker games against the dealer and poker games against other players. Side wager options are also available for high hands, thereby increasing player interest by providing a chance for a high payout.
Representative Claim 1 reads:


1. A method of playing a casino game, comprising: (a) receiving a first wager for a first playing mode, the first playing mode being compulsory; (b) receiving at least a second wager for at least a second playing mode, wherein the second playing mode is without a house advantage; (c) dealing hands of playing cards to a dealer and to at least one player, and resolving the first wager according to a poker rank of the player hand against a payout scale; and (d) resolving the second wager without a house advantage according to a poker rank of the player hand against one of (1) a poker rank of the dealer hand, and (2) a poker rank of another player hand.
Prime is suing National Table Games (formerly Gammax, Inc.), alleging that National's casino poker game Flop Poker, released March 2003, infringes the ‘145 patent. Prime alleges National knew about Prime's patent since at least mid-2004. According to National's website, the Flop Poker game is National's most popular and is used in casinos across the country.

We’ll keep you updated as the case progresses. Read the full complaint here.
Walker Digital LLC v. 2K Games Inc. et al
U.S. District Court, District of Delaware
Case No. 1:11-cv-00368-GMS, Filed April 25, 2011

Earlier this year we reported on Walker Digital’s suit against Activision, Blizzard, and Zynga for alleged infringement of U.S. Patent # 6,425,828 (‘828 patent), issued in 2001, entitled “Database Driven Online Distributed Tournament System.” On April 25, 2011, Walker filed suit against a range of companies alleging violation of the ‘828 patent, and U.S. Patent # 6,224,486 (‘486 patent), issued in 2002 under the same title. These patents are related to technology that enables electronic tournament game play for multiple players and stores player information for future use.

Four companies (including 2K Games) originally named in the suit have been voluntarily dismissed by Walker. The remaining defendants are Capcom Entertainment Inc., Electronic Arts Inc., Konami Digital Entertainment Inc., Microsoft Corp., Sega of America Inc., Sony Computer Entertainment America LLC, Square Enix Inc., THQ Inc. and Ubisoft Inc. The complaint specifically accuses several popular games owned by these companies of infringing the ‘828 and ‘486 patents. These include EA’s "Madden NFL 11" and "FIFA Soccer 11," Capcom's "Super Street Fighter IV," Microsoft's "Halo 3" and Ubisoft's "Assassin’s Creed: Brotherhood."

This suit is the latest in a slew of litigious activity by Walker this year. On April 25, 2011, Walker also filed suit against Google, Amazon and Yahoo alleging infringement of a patent for modifying and displaying a merchant's advertisement to users by associating a data pattern with the merchant. The suit claims that the companies’ advertising programs infringe U.S. Patent # 7,933,893 which had been issued the day before, on April 24, 2011. This follows Walker’s aforementioned January suit against Activision et al, and their filing of 15 different suits against 100 different companies on April 11, 2011.

According to the complaint filed on April 25, Walker Digital is headed by Jay Walker, who says his inventions have formed the basis for many companies, generated billions of dollars in revenue and created thousands of new jobs. The best-known of these companies is Priceline, which lists itself as having a market value of more than $22 billion. The suit also asserts that Walker Digital has a patent portfolio of more than 400 issued and pending U.S. and foreign patents, and Jay Walker was the lead inventor on the majority of them.



For further coverage see Law360


LottoTron, Inc. v. Morris Mohawk Gaming Group
United States District Court for D. N.J.
Case No. 2:09-cv-03811-FSH-MAS, Filed July 31, 2009


Case Update:

Pursuant to a request by the plaintiff, this case was dismissed with prejudice on December 9, 2009, under FRCP 41(a)(1). Rule 41(a)(1) allows for the plaintiff to dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. In this case Morris Mohawk had not responded to LottoTron’s suit with any court filings before LottoTron filed the voluntary dismissal. Based on the amount of time between the lawsuit being filed and dismissed, the parties likely started settlement discussions immediately after the case was filed, and LottoTron kept agreeing to delay the deadline for Morris to file its Answer to the Complaint in view of ongoing settlement discussions.


Original Post:

LottoTron is a New Jersey corporation and owner of U.S. Patent No. 5,921,865. Approved in 1999, the ‘865 patent is for a “computerized lottery wagering system.” The patent claims a method of remotely enrolling a subscriber and taking wagers for different lottery games via phone or Internet. Here is a representative claim:







1. A wagering system for automatically accepting wagers comprising: a) communications means for receiving communications from subscribers, said communications means including computer means and a wireless link; b) message means connected to said communications means for receiving the incoming
communications routed from said communication means and for providing a series of messages requesting subscriber information particular to one of the plurality of wagering formats; and c) computer means having storage means connected to said message means for receiving and storing said subscriber wagering information, and assigning a reference number to a wager.
In 2007, MMGG signed an exclusive licensing agreement with Bodog, making it the sole operator of the Bodog online gaming brand in North America. Bodog “is one of the world's most successful and well-established digital entertainment and online gaming giants.”

In the complaint, LottoTron alleges that MMGG’s operation of the website bodog.com, which allows users to place online wagers, amounts to patent infringement. LottoTron also alleges that MMGG has “induced and contributed to the infringement of the claims of the ‘865 patent by others.” For relief, LottoTron is seeking monetary damages and an injunction to prevent future infringement of its patent.

LottoTron has initiated similar lawsuits over the past few years. In 2005, LottoTron alleged GTech Corp. infringed the same ‘865 patent with its eCheck system which allowed consumers who bought a lottery ticket at a retail location to check online whether they had won. LottoTron, Inc. v. GTech Corp., Case No. 3:05-cv-0462-FLW-JJH (D. N.J. 2008). The court in that case granted summary judgment of non-infringement to GTech because the lottery results were predetermined at the time of the ticket purchase and the consumers had to return to the retail location to collect any winnings. In October of 2007, LottoTron filed a complaint against Microsoft but then voluntarily dismissed the suit in November 2007. LottoTron, Inc. v. Microsoft Corp., Case No. 3:07-cv-05085-FLW-JJH (D. N.J. 2007). In that suit, LottoTron alleged that Microsoft infringed on its “Computerized lottery wagering system” patents with its MSN website that offered multiple-game, online-gaming online poker and casino games. LottoTron similarly sued PokerStars in September of 2008 for infringing the ‘865 patent through its operation of its “on-line, interactive gaming website.” LottoTron v. Rational Poker School Ltd. d/b/a PokerStars, Case No. 2:08-cv-04874-WJM-MF (D. N.J. 2008).
Double Fine Obtains Publishing Rights to “Psychonauts”


As of June 14, 2011, the rights to the hit 2005 adventure game, Psychonauts, have reverted to its original publisher Double Fine. Previously, Double Fine could produce new games in the Psychonauts series (which they haven’t because of a lack of funds) but could not re-publish or financially benefit from the original. The rights to the original Psychonauts had been signed over to Majestic Publishing, but that contract has now expired. While there are some contractual obligations that need to be worked out before Double Fine gets the full financial benefit of ownership and sales in Psychonauts, fans are hoping this will lead to the long awaited development of Psychonauts 2. Double Fine has no plans to develop a sequel for now, but they assure fans they have “some [other] fun stuff to announce” in the near future.



For full coverage see Gamasutra


Ads on Xbox

As advertising continues to evolve for game platforms, the New York Times reports that Microsoft is set to launch a new suite of advertising tools called NUads (short for natural user interface ads) on the Xbox Kinect gaming consoles.

Developments at the USPTO earlier this month indicated that Microsoft had plans for a new, interactive advertising platform utilizing the Xbox 360 Kinect camera controller. On June 6, 2011, Microsoft filed a trademark application for the term “NUADS” for “advertising services, namely, promoting and marketing the goods and services of others through online interactive video games by enabling consumers to interact with third-party advertising content through voice or body gestures via computer game console and sensor devices.” See full trademark application here.

Both Gamasutra and Techie Buzz speculated that this could be the natural user interface that Microsoft had been talking about for quite a while, which would allow them to offer a similar service to iAds, the Apple advertising platform for app developers to create apps/ads that offer an interactive and aesthetically pleasing experience for the user. According to the Times, NUAds will allow Xbox users to use voice and motion commands to interact with advertisements while they are playing games or watching videos.

The NUAds will be located on the console dashboard, embedded in games and other video content. They are intended to help advertisers keep the attention of Xbox users in a way traditional television advertising does not by creating a way for users to interact and engage with their televisions. Using voice commands, gamers will also be able to send messages about ads to networking sites like Twitter, to text messages about ads, or to vote as part of promotions.

These new advertising options will be presented today (June 21, 2011) to advertisers at the Cannes Lions International Festival of Creativity, an annual conference for advertisers and marketers.

Digital Reg of Texas, LLC v. Adobe Systems Incorporated et al
U.S. District Court, Eastern District of Texas
Case No. 6:11-cv-00305, Filed June 14, 2011


This recently filed case coming out of the Eastern District of Texas shows that video game companies are not immune from lawsuits regarding conventional technologies. Digital Reg of Texas, a subsidiary of DRM Technologies LLC, describes itself as a "leading pioneer and innovator in the areas of securing digital content, secure delivery of digital content, and tracking and authorizing use of digital content." It is suing a number of businesses, including gaming companies Electronic Arts Inc., UbiSoft Entertainment Inc., and Zynga Inc. for the alleged infringement of seven patents delivering electronic content in relation to payment methods, storing downloaded games onto computers, and delivering digital content across devices.

The patents-in-suit are U.S. Patent Numbers 6,389,541, issued in 2002 and titled "Regulating Access to Digital Content;" 6,751,670, issued in 2004 and titled "Tracking Electronic Component;” 7,127,515, issued in 2006 and titled "Delivering Electronic Content;" 7,272,655, issued in 2007 and titled "Delivering Electronic Content;" 7,421,741, issued in 2008 and titled "Securing Digital Content System and Method;" 7,562,150, issued in 2009 and titled "Delivering Electronic Content;" and 7,673,059, issued in 2010 and titled "Tracking Electronic Content." These are the exact patents at issue in a similar suit filed by Digital Reg on April 21, 2011, against many of the same companies (see Digital Reg of Texas v. Adobe Systems et al, case no. 11-cv-00200). The April 21 suit alleges that the defendants sell products that include digital rights management features that restrict the use of the product in ways that infringe Digital Reg's patents. UbiSoft’s Game Launcher, and EA’s Download Manager (a secure tool that lets users download video games purchased online directly onto a computer) were specifically cited in the April 21 complaint.

One of the same patents at issue in the current suit (the ’541 patent) was also at issue in a previous suit Digital Reg filed against a slew of technology giants in 2007. In that case, Microsoft, Apple, Sony, Playboy, Blockbuster and Macrovision all reached settlements with Digital Reg and the case was terminated in 2009.


Lodsys LLC. V. Combay Inc. et al.
United States District Court, Eastern District of Texas
Case No. 11-cv-00272, Filed May 31, 2011

Seven developers of iPhone applications, including the developers of games like Labyrinth and Mega Poker Online Texas Holdem, were sued on May 31, 2011, by Lodsys, a Texas company that had licensed its patents to Apple. Lodsys claims that its agreement with Apple did not give third-party developers free rein to use the patented technology. Less than two weeks later, on June 9, 2011, Apple filed a motion to intervene in the suit in an effort to protect its third-party software developers …and the substantial stream of revenue they generate for the company.

The main patent in question is U.S. Patent No. 7222078, "Methods and systems for gathering information from units of a commodity across a network" (the ‘078 patent). Lodsys had previously sent letters to the developers informing them that their apps violated its exclusive right in the ‘078 patent, and asking them for a small but not insignificant licensing fee. Lodsys threatened suit for non-compliance. Apple itself responded with a stern letter asserting that it had already licensed these patents and this license extended to its customers and business partners.

Despite Apple’s response Lodsys proceeded to file suit against the developers, saying that “Unfortunately for developers, Apple’s claim of infallibility has no discernible basis in law or fact.” Given that these are small independent app developers, and that patent suits are expensive to fight, Apple’s motion to intervene is welcomed by the defendants. Apple argues in its motion that it has the right to intervene because it has a vested interest in the property at issue, because the suit has “fundamentally disrupted Apple’s relationships with … developers, and places in jeopardy the revenue that Apple derives from those relationships,” and because independent developers “lack the resources to fully and fairly litigate the issue of whether Lodsys’s claims are exhausted” under the doctrines of first sale and exhaustion.

Further complicating the issue is the fact that Lodsys itself is being sued in the Northern District of Illinois. ForeSee results, an online survey company, is asking the court for declaratory judgment that four Lodsys patents, including the ‘078 patent in question in the Apple suit, are invalid. In what could be argued as a forum shopping technique, Lodsys is incorporated in Eastern Texas, apparently for the benefit of filing patent infringement suits there, but its allegedly sole employee actually operates out of Illinois. If a declaratory judgment against Lodsys were entered in Illinois before a trial ended in Texas, Apple and the developers could move to dismiss the lawsuit.

For further coverage see Ars Technica
Stephen Slesinger Inc. v. Disney Enterprises Inc.
USPTO, Trademark Trial and Appeal Board
No. 91179064, June 8, 2011


A panel of judges at the TTAB has ruled that a former licensee of rights to “Winnie the Pooh” is collaterally estopped from pursuing trademark opposition and cancellation proceedings against Disney. In 1930, A.A. Milne, the creator of Winnie the Pooh, transferred his exclusive merchandizing and other rights to Stephen Slesinger who then granted these rights exclusively to Walt Disney Productions in 1961. Some dispute over the rights ensued but these were resolved contractually in 1983 with Disney securing exclusive ownership rights in all Pooh works, including any trademark rights attached to them.

Disney is currently seeking to register several Pooh-related marks at the TTAB in conjunction with various goods, including computer games, and other internet-related uses. According to Slesinger’s complaint, Disney has been exploiting the Pooh characters in mediums to which it did not receive rights under the 1983 Agreement. These mediums include: “Internet use, wireless use, advertising uses, credit cards, ringtones on mobile phones, greeting cards, computer graphics, Internet computer games, computer screen savers, computer wallpapers, character meals, convention services, magazines, multi-media kits, and other products and services.”

Disney argued that the 1983 agreement transferred all rights in the Pooh works to Disney, including rights to use the trademarks in technological mediums that could not have been contemplated at the time. Disney also asserted that this issue had already been decided in Disney’s favor in prior district court proceedings where Disney was awarded summary judgment against similar challenges from Slesinger (Milne v. Slesinger, Document 545, Case No. 02-08508 (C.D. Cal., Sept. 25, 2009.) Slesinger argued that the issues now before the TTAB were not addressed in that district court ruling.

Ultimately, the TTAB disagreed with Slesinger. It reviewed the district court’s order of summary judgment and found that the district court had considered all issues of ownership in finding that there was no genuine dispute as to Disney’s exclusive rights to the Pooh marks coming out of the 1983 agreement, namely, that Disney owns all rights whatsoever to the Pooh marks.

The TTAB found that the issues Slesinger raised in the case before it were identical to the issues involved in the prior civil action. Thus, under the doctrine of collateral estoppel, Slesinger was barred from re-litigating these matters. The doctrine of collateral estoppel, or “issue preclusion,” mandates that once an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is normally conclusive in a subsequent suit involving the parties to the prior litigation. See Int'l Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984.) The underlying rationale is that a party who has litigated an issue and lost should be bound by that decision and cannot demand that the issue be decided again.
Hillcrest Laboratories Inc. v. Nintendo Co., Ltd. et al
United States District Court, District of Maryland
Case No. 8:08-cv-02188-RWT, Filed August 20, 2008

Case Update:

On September 24, 2009, the parties submitted a joint request to stay the case pending resolution of a concurrent case in the United States International Trade Commission. In late September, 2009, pursuant to a confidential settlement by the parties, the case before the ITC was terminated, and the District Court case was dismissed with prejudice shortly thereafter on October 16, 2009.


Original Post:

Nintendo faces another lawsuit over various aspects of its Nintendo Wii video game console. This time from Hillcrest Laboratories, Inc., a Maryland-based startup, that designs, develops and sells an interactive media system called HoME, which uses a combination of graphical, zooming and interface software for TV and motion control technology called Freespace.

In a strategic move, Hillcrest filed suit both in the U.S. District Court of Maryland, as well as with the International Trade Commission. The patents at issue are 7,139,983; 7,158,118; 7,262,760; and 7,414,611. According to Law360, the patents relate to the following technology:

"The company's U.S. Patent Numbers 7,158,118; 7,262,760; and 7,414,611 cover a technology that is often used on television sets and allows users to access several forms of digital content, such as digital photographs, Internet Web sites and games, according to Hillcrest. The software typically uses a main menu that prompts users to choose which program they wish to use.


U.S. Patent Number 7,139,983, meanwhile, protects technology for a hand-held, three-dimensional pointing device that, unlike a two-dimensional device such as a computer mouse, allows the user to translate or rotate the pointing tool in space, instead of detecting movement relative to a flat surface."

The district court's docket number is 8:08-cv-02188. We'll add this case to our tracking list and keep you posted of new developments.
ADC Technology Inc. v. Microsoft Corporation et al
United States District Court for the Western District of Washington
Case No. 2:08-cv-01579-RSM, Filed October 27, 2008


Case Update:

On July 9, 2009, ADC filed a motion for stay of proceedings pending the outcome of reexamination proceedings ADC initiated in the USPTO with respect to each of the five patents-in-suit. On July 21, 2009, the court entered the stipulated motion to stay the proceedings pending the outcome of requests for reexamination. Plaintiff was ordered to file a status report every six months advising the court of the progress of the reexamination requests. The third and latest status report was filed on January 20, 2011. Plaintiffs are still awaiting reexamination at the PTO.


Case Update 3/25/09:

In a previous post, we reported on the filing of this patent lawsuit regarding pay-for-download software over a computer network, e.g., including games. Well it appears that Sony is out of the lawsuit, and Microsoft & Nintendo remain. The dismissal was voluntary by ADC, as Sony never made an appearance in the lawsuit. The dismissal is also without prejudice, which means that ADC could refile a lawsuit against Sony regarding these same patents in the future. In interesting twist, to be sure. If we find out more, we'll let you know.


Original Post:

ADC Technology on October 27, 2008, filed a new patent infringement lawsuit against Microsoft, Nintendo, and Sony, alleging that each of the Xbox360, Wii, and PlayStation3, respectively, infringe on one or more of 5 different patents owned by ADC. The case was filed in the Western District of Washington, and is captioned ADC Technology, Inc. v. Microsoft Corp. et al., and is case number 2:08-cv-01579. Here is a copy of the complaint: ADC.pdf

The patents in suit are:




  • 5,775,995: Interactive Communication System for Communicating Video;


  • 6,193,520: Interactive Communication System for Communicating Video Game & Karaoke Software;


  • 6,488,508: Interactive Communication System for Communicating Video Game & Karaoke Software;


  • 6,702,585: Interactive Communication System for Communicating Video Game & Karaoke Software; and


  • 6,875,021: Interactive Communication System for Communicating Video Game & Karaoke Software.
The patents appear to relate to remote distribution of software to terminal devices. For example, claim 1 of the '021 patent reads:

1. A software distributing system for



transmitting at least one of the program, the data, and a combination of the program and data stored in a database provided in a distribution center to a requested communication terminal device via communication lines;




storing the transmitted program, the data, and the combination of the program and data in a memory provided in the communication terminal device; and




enabling execution of the program or data processing according to the program, the data, and the combination of the program and data in the memory,




said distribution center comprising:


a transmitter device for transmitting the program, the data, or the combination of the program and data at the request of said communication terminal devices to said communication terminal device; and


a charging device for charging a fee for at least one use of the transmitted program, the data, or the combination of the program and data in said communication terminal device.
On its face the claim appears to cover software downloads where the user pays for the download. There is nothing in the claims limiting this to game console use, and ostensibly could apply to any pay-for-software dowloads, e.g., PC downloads over the Internet, which have been going on for years. The '021 patent has a priority date at least dating back to 1998, and possibly back to 1994, which could explain the apparent broadness of the claims. Thus, while ADC appears to have broad claims, that makes it easier for the defendants to try to invalidate the patents. However, the early priority dates of the patents will make it more difficult for the defenedants to find prior art to be able to do so. Nonetheless, with software and media downloads now playing a principal role as the console makers each try to make their console the primary "living room device," this lawsuit is sure to heat things up.

I have not studied the patent specifications in depth, and this is just my initial cursory thoughts. The opinions in this article are not legal opinions of validity, invalidity, infringement, or noninfringement, but are rather intended as a general introduction to the issues. We will add this case to our tracker list and keep you posted.
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