patents – Techdirt
from the patent-trolls-rejoice dept
The U.S. Patent and Trademark Office (USPTO) just made a move that will protect bad patents at the expense of everyone else. In a memo released February 28, the USPTO further restricted access to inter partes review, or IPR—the process Congress created to let the public challenge invalid patents without having to wage million-dollar court battles.
If left unchecked, this decision will shield bad patents from scrutiny, embolden patent trolls, and make it even easier for hedge funds and large corporations to weaponize weak patents against small businesses and developers.
IPR Exists Because the Patent Office Makes Mistakes
The USPTO grants over 300,000 patents a year, but many of them should not have been issued in the first place. Patent examiners spend, on average, around 20 hours per patent, often missing key prior art or granting patents that are overly broad or vague. That’s how bogus patents on basic ideas—like podcasting, online shopping carts, or watching ads online—have ended up in court.
Congress created IPR in 2012 to fix this problem. IPR allows anyone to challenge a patent’s validity based on prior art, and it’s done before specialized judges at the USPTO, where experts can re-evaluate whether a patent was properly granted. It’s faster, cheaper, and often fairer than fighting it out in federal court.
The USPTO is Blocking Patent Challenges—Again
Instead of defending IPR, the USPTO is working to sabotage it. The February 28 memo reinstates a rule that allows for widespread use of “discretionary denials.” That’s when the Patent Trial and Appeal Board (PTAB) refuses to hear an IPR case for procedural reasons—even if the patent is likely invalid.
The February 28 memo reinstates widespread use of the Apple v. Fintiv rule, under which the USPTO often rejected IPR petitions whenever there’s an ongoing district court case about the same patent. This is backwards. If anything, an active lawsuit is proof that a patent’s validity needs to be reviewed—not an excuse to dodge the issue.
In 2022, former USPTO Director Kathi Vidal issued a memo making clear that the PTAB should hear patent challenges when “a petition presents compelling evidence of unpatentability,” even if there is parallel court litigation.
That 2022 guidance essentially saved the IPR system. Once PTAB judges were told to consider all petitions that showed “compelling evidence,” the procedural denials dropped to almost nothing. This February 28 memo signals that the USPTO will once again use discretionary denials to sharply limit access to IPR—effectively making patent challenges harder across the board.
Discretionary Denials Let Patent Trolls Rig the System
The top beneficiary of this decision will be patent trolls, shell companies formed expressly for the purpose of filing patent lawsuits. Often patent trolls seek to extract a quick settlement before a patent can be challenged. With IPR becoming increasingly unavailable, that will be easier than ever.
Patent owners know that discretionary denials will block IPRs if they file a lawsuit first. That’s why trolls flock to specific courts, like the Western District of Texas, where judges move cases quickly and rarely rule against patent owners.
By filing lawsuits in these troll-friendly courts, patent owners can game the system—forcing companies to pay up rather than risk millions in litigation costs.
The recent USPTO memo makes this problem even worse. Instead of stopping the abuse of discretionary denials, the USPTO is doubling down—undermining one of the most effective ways businesses, developers, and consumers can fight back against bad patents.
Congress Created IPR to Protect the Public—Not Just Patent Owners
The USPTO doesn’t get to rewrite the law. Congress passed IPR to ensure that weak patents don’t become weapons for extortionary lawsuits. By reinforcing discretionary denials with minimal restrictions, and, as a result, blocking access to IPRs, the USPTO is directly undermining what Congress intended.
Leaders at the USPTO should immediately revoke the February 28 memo. If they refuse, as we pointed out the last time IPR denials spiraled out of control, it’s time for Congress to step in and fix this. They must ensure that IPR remains a fast, affordable way to challenge bad patents—not just a tool for the largest corporations. Patent quality matters—because when bad patents stand, we all pay the price.
Republished from the EFF’s Deeplinks blog.
Filed Under: bad patents, inter partes review, ipr, patent trolls, patents, prior art, uspto
from the rolling-over dept
We’re still waiting for the lawsuit in Japan between Nintendo, The Pokémon Co., and Pocketpair to get rolling, but that doesn’t keep the dispute out of the news. The patent lawsuit, itself a surprise as everyone thought it would be a copyright gambit that Nintendo would try, centers around several patents that all relate to familiar video game gameplay mechanics. That mostly consists of the transition process between riding around or dismounting characters in an open world (absurd that this is a patent) and throwing an object to catch a creature (also absurd that this is a patent). As I detailed in our last post on the subject, I would argue, and would want Pocketpair to argue, that there are all kinds of prior art for these mechanics. And while I’m no expert in Japanese patent law, non-inventive things like this generally don’t deserve patents.
While Nintendo and The Pokémon Co. are obviously large entities with impressive legal war chests to boot, I had hoped that the success of Palworld would be such that Pocketpair had the resources to fight this out in Japanese courts. And while there’s still a chance that might happen, it’s a bit worrying to learn that the company updated the game recently, with that update removing the Pal Sphere mechanic that Nintendo is suing over.
Palworld version 0.3.11 featured changes to Pal Spheres, the palm-sized, spherical devices players use to capture and summon their Pals. The changes were first spotted by Niche Gamer, but do appear to be reflected in Palworld’s patch notes via Steam: “Changed the behaviour of summoning player-owned Pals so that they are always summoned near the player.”
In practice, what that means is that when a player summons a Pal, they no longer do so by throwing the Pal Sphere wherever they want them to appear. Instead, the Pal will simply pop up directly next to the player, and can then be commanded to attack other Pals, gather resources, et cetera. While it doesn’t fundamentally change the way the game works, it does have a palpable effect on one of its core mechanics, a change that has some players concerned.
As to why this change to a core mechanic was made, nobody at the publisher has offered any reasoning, leaving everyone instead to speculate. But come on. I can’t think of a single reason, even a hair-brained one, to make this change that doesn’t redound back to Pocketpair is looking to roll over and show its belly on the lawsuit, but I sure don’t think it helps its case if it plan to fight this out in court.
And fight it out it should, I believe. The idea that we are going to set a precedent for Nintendo and The Pokémon Co. to wield these patents for, again, fairly banal game mechanics is not good for the larger industry in Japan.
Look, we all knew that something like this was bound to happen eventually. Palworld was always playing with fire, and Nintendo is notoriously litigious. But regardless of where you land on the accusations levied against Palworld, it’s easy to see how software patent infringement claims could be taken too far. Most infamously, Namco once held a patent on loading screen mini-games that prevented almost any kind of interactivity during these periods of downtime. That patent expired in 2015, but even now, loading screen mini-games still haven’t made the resurgence they deserve.
Something similar could happen as a result of this lawsuit. Beginning combat by aiming and firing with a targeting reticle is all too common a mechanic. To see that disappear entirely would be a huge blow to open-world games with optional combat. There may be more specifics to Nintendo’s patent, and there may be an entirely different reason for the update, but at this point, it’s impossible to say exactly what’s going on behind the scenes. Still, if the rumors are true, this lawsuit could be harmful not only to Palworld specifically, but to the video game industry in general.
So, back to the waiting game, I suppose. We’ll have to see if this is in fact an indication that Pocketpair doesn’t want to fight this in court, or if this portends something else.
Filed Under: japan, palworld, patents, pokemon
Companies: nintendo, pocketpair, pokemon company
from the uh-oh dept
We’re waiting for the lawsuit in Japan between Nintendo, The Pokémon Co., and Pocketpair, the developers of the hit game Palworld to really get going. In the meantime, the public commentary is filling the information void, including commentary from IP experts. The suit revolves around a series of patents the plaintiffs hold that cover a variety of gameplay elements. I very much question whether those gameplay elements should ever have been patentable to begin with, with the two main elements being the process for throwing a virtual object at a creature to capture it and the “invention” of riding a creature in an open world and the transition between riding them and not riding them. The patents covering these mechanics mostly come from several divisional patents and their parent patent, which was registered in late 2021.
For all of this, the plaintiffs are seeking $66,000 (yes, that’s the correct number), while also seeking an injunction prohibiting the sale of Palworld in Japan. That latter request, missed by me in my last post on this subject, is by far the more important aspect of the lawsuit. The monetary request is a rounding error for such a successful game, but shutting down sales in even just this one country would be far more devastating.
Again, should any of these patents have been granted to begin with? I certainly don’t think so. And for a variety of reasons. I very much question whether any of these gameplay mechanics are novel enough to warrant a patent to start with. Transitioning between riding creatures and not in an open world game? That’s been going on for a long, long time. Hell, I was doing something like this in 1997 when I was hopping on and off chocobos in Final Fantasy 7.
Which brings us to the subject of prior art. The other game mechanic in question here, throwing an object to capture a creature, has arguably been done prior to this 2021 parent patent’s registration as well. I mentioned in a previous post that the Ghostbusters game that came out in 2009 did this essentially the same way, swapping in capture devices and ghosts for pokeballs and pokemon.
But one IP expert in Japan is highlighting another potential example of prior art from a very ironic and unlikely source: a GTA V modder.
Ryo Arashida, representative patent attorney from the Japan-based Patent Attorney Corporation Siarasia is quoted by the Nikkei Business Online Edition as saying that while the outcome of the lawsuit is unclear, there’s a certain game mod out there that could work in Palworld’s favor.
The mod in question is a fan-made one, designed to be a crossover between Pokémon and Rockstar Games’s Grand Theft Auto V (GTA5). Arashida does not specify the exact mod, but mentions that it was released publicly around 2016 and includes the mechanic of throwing Poke Ball-like objects at characters on the game field to capture them. Given the description, it is likely that he is referring to this elaborate mod inspired by Niantic’s Pokémon GO from August 2016.
According to Arashida, the Pokémon capturing sequence used in this mod is similar to the one described in one of the divisional patents (Patent No. 7545191) Nintendo is suing Palworld over. Moreover, the parent patent that this divisional patent belongs to was registered in December 2021, meaning the GTA5 mod came out several years earlier. Arashida believes that “there is a possibility that the GTA5 Pokémon mod will be recognized as a precedent by the court.” If this were to happen, one of the patents Nintendo and The Pokémon Company are using in litigation against Pocketpair would be deemed invalid.
Now, I won’t claim to be an expert in Japanese patent law, but Arashida does make that claim. It would be quite interesting if a mod for a third-party game, which itself was built on the IP of a plaintiff, could also be used to both defend another third-party from a patent infringement claim and invalidate that patent entirely. The irony there would be sweet enough to warrant a trip to the dentist, methinks.
But all of that intersecting may not really matter when it comes to the validity of a patent. Either Nintendo and The Pokémon Co. actually invented the mechanics in their patents… or they didn’t. In the United States, at least, the use of an invention can serve as prior art for the purposes of patent law.
Whether the same is true in Japan will be seen as this trial progresses.
Filed Under: gta v, japan, palworld, patents, prior art
Companies: nintendo, pocketpair, pokemon company
from the none-of-this-makes-sense dept
If you’ve followed along with our coverage on the hit video game Palworld, developed by Pocketpair, you will know that Nintendo and the Pokémon Co. has sued Pocketpair for patent infringement. Prior to the suit, there had been a ton of speculation that a lawsuit would be filed, but that it would be a copyright infringement suit. That was because there was a clear inspirational element in Palworld harkening back to Pokémon properties, though we also argued that no direct copying had occurred, only concepts and ideas repurposed. For that reason, I was excited that any copyright suit would serve as a demonstration of the idea/expression dichotomy in copyright law. And I generally believed that such a suit would be filed, given the overtly litigious history of both Nintendo and The Pokémon Co.
Instead we got the patent infringement lawsuit. Speculation began immediately as to what patent or patents would be at the heart of that suit. Generally, said speculation landed on a parent and several divisional patents that involve throwing an object at an on-screen character or creature in a video game in order to capture it. That itself was somewhat perplexing, as games that are older than Pokémon have had similar mechanics to that in the past.
But now we have confirmation that that speculation was mostly correct.
“The Plaintiffs,” says Pocketpair, “claim that ‘Palworld,’ released by us on January 19, 2024, infringes upon the following three patents held by the Plaintiffs, and are seeking an injunction against the game and compensation for a portion of the damages incurred between the date of registration of the patents and the date of filing of this lawsuit.”
Looking up those patents, the first alludes to a system where a player aims and fires an “item” toward a character in a field, and in doing so triggers combat, and then dives into extraordinary intricacies about switching between modes within this. The second is very similar, but seems more directly focused on tweaking previous patents to including being able to capture Pokémon in the wild, rather than only during battle. The third, rather wildly, seems to be trying to claim a modification to the invention of riding creatures in an open world and being able to transition between them easily.
I’ll restate what I said in the previous post about these patents. These patents cover broad ideas. It’s a wonder to me why those patents were ever granted in the first place. The paperwork covering them, though rife with pretty diagrams and pictures, doesn’t exactly outline the sort of inventive content I was expecting. Instead, they appear to cover concepts of game mechanics, as though Nintendo or The Pokémon Co. could gobble up the right to use them in video games. The last of these patents in the quote above is perhaps the best example of this.
But it gets even starnger after that.
The statement also includes details on the damages Nintendo is seeking, for what it’s claiming is a violation of it intellectual property. The company wants 10 million yen to be equally split between Nintendo Co., Ltd., and The Pokémon Company. That works out to just under $33,000 each.
All of this for roughly $66,000? I’d have to think that any such award would be eaten into heavily by whatever time and monetary investment these two companies have made into this lawsuit. What can explain the desire by Nintendo and The Pokémon Co. to move forward with this suit when there is so little on the line?
The best I can come up with is that both of these companies just can’t help themselves when it comes to intellectual property. They seem to be more interested in getting their pound, or perhaps ounce, of flesh than making any sort of sound business decisions.
Filed Under: palworld, patents, pokemon
Companies: nintendo, pocketpair, pokemon company
from the patent-trolling-is-a-crime dept
In 2022, three companies with strange names and no clear business purpose beyond patent litigation filed dozens of lawsuits in Delaware federal court, accusing businesses of all sizes of patent infringement. Some of these complaints claimed patent rights over basic aspects of modern life; one, for example, involved a patent that pertains to the process of clocking in to work through an app.
These companies – named Mellaconic IP, Backertop Licensing, and Nimitz Technologies – seemed to be typical examples of “patent trolls,” companies whose primary business is suing others over patents or demanding licensing fees rather than providing actual products or services.
However, the cases soon took an unusual turn. The Delaware federal judge overseeing the cases, U.S. District Judge Colm Connolly, sought more information about the patents and their ownership. One of the alleged owners was a food-truck operator who had been promised “passive income,” but was entitled to only a small portion of any revenue generated from the lawsuits. Another owner was the spouse of an attorney at IP Edge, the patent-assertion company linked to all three LLCs.
Following an extensive investigation, the judge determined that attorneys associated with these shell companies had violated legal ethics rules. He pointed out that the attorneys may have misled Hau Bui, the food-truck owner, about his potential liability in the case. Judge Connolly wrote:
[T]he disparity in legal sophistication between Mr. Bui and the IP Edge and Mavexar actors who dealt with him underscore that counsel’s failures to comply with the Model Rules of Professional Conduct while representing Mr. Bui and his LLC in the Mellaconic cases are not merely technical or academic.
Judge Connolly also concluded that IP Edge, the patent-assertion company behind hundreds of patent lawsuits and linked to the three LLCs, was the “de facto owner” of the patents asserted in his court, but that it attempted to hide its involvement. He wrote, “IP Edge, however, has gone to great lengths to hide the ‘we’ from the world,” with “we” referring to IP Edge. Connolly further noted, “IP Edge arranged for the patents to be assigned to LLCs it formed under the names of relatively unsophisticated individuals recruited by [IP Edge office manager] Linh Deitz.”
The judge referred three IP Edge attorneys to the Supreme Court of Texas’ Unauthorized Practice of Law Committee for engaging in “unauthorized practices of law in Texas.” Judge Connolly also sent a letter to the Department of Justice, suggesting an investigation into “individuals associated with IP Edge LLC and its affiliate Maxevar LLC.”
Patent Trolls Tried To Shut Down This Investigation
The attorneys involved in this wild patent trolling scheme challenged Judge Connolly’s authority to proceed with his investigation. However, because transparency in federal courts is essential and applicable to all parties, including patent assertion entities, EFF and two other patent reform groups filed a brief in support of the judge’s investigation. The brief argued that “[t]he public has a right—and need—to know who is controlling and benefiting from litigation in publicly-funded courts.” Companies targeted by the patent trolls, as well as the Chamber of Commerce, filed their own briefs supporting the investigation.
The appeals court sided with us, upholding Judge Connolly’s authority to proceed, which led to the referral of the involved attorneys to the disciplinary counsel of their respective bar associations.
After this damning ruling, one of the patent troll companies and its alleged owner made a final effort at appealing this outcome. In July of this year, the U.S. Court of Appeals for the Federal Circuit ruled that investigating Backertop Licensing LLC and ordering its alleged owner to testify was “an appropriate means to investigate potential misconduct involving Backertop.”
In EFF’s view, these types of investigations into the murky world of patent trolling are not only appropriate but should happen more often. Now that the appeals court has ruled, let’s take a look at what we learned about the patent trolls in this case.
Patent Troll Entities Linked To French Government
One of the patent trolling entities, Nimitz Technologies LLC, asserted a single patent, U.S. Patent No. 7,848,328, against 11 companies. When the judge required Nimitz’s supposed owner, a man named Mark Hall, to testify in court, Hall could not describe anything about the patent or explain how Nimitz acquired it. He didn’t even know the name of the patent (“Broadcast Content Encapsulation”). When asked what technology was covered by the patent, he said, “I haven’t reviewed it enough to know,” and when asked how he paid for the patent, Hall replied, “no money exchanged hands.”
The exchange between Hall and Judge Connolly went as follows:
Q. So how do you come to own something if you never paid for it with money?
A. I wouldn’t be able to explain it very well. That would be a better question for Mavexar.
Q. Well, you’re the owner?
A. Correct.
Q. How do you know you’re the owner if you didn’t pay anything for the patent?
A. Because I have the paperwork that says I’m the owner.
( Nov. 27, 2023 Opinion, pages 8-9.)
The Nimitz patent originated from the Finnish cell phone company Nokia, which later assigned it and several other patents to France Brevets, a French sovereign investment fund, in 2013. France Brevets, in turn, assigned the patent to a US company called Burley Licensing LLC, an entity linked to IP Edge, in 2021. Hau Bui (the food truck owner) signed on behalf of Burley, and Didier Patry, then the CEO of France Brevets, signed on behalf of the French fund.
France Brevets was an investment fund formed in 2009 with €100 million in seed money from the French government to manage intellectual property. France Brevets was set to receive 35% of any revenue related to “monetizing and enforcement” of the patent, with Burley agreeing to file at least one patent infringement lawsuit within a year, and collect a “total minimum Gross Revenue of US $100,000” within 24 months, or the patent rights would be given back to France Brevets.
Burley Licensing LLC, run by IP Edge personnel, then created Nimitz Technologies LLC— a company with no assets except for the single patent. They obtained a mailing address for it from a Staples in Frisco, Texas, and assigned the patent to the LLC in August 2021, while the obligations to France Brevets remained unchanged until the fund shut down in 2022.
The Bigger Picture
It’s troubling that patent lawsuits are often funded by entities with no genuine interest in innovation, such as private equity firms. However, it’s even more concerning when foreign government-backed organizations like France Brevets manipulate the US patent system for profit. In this case, a Finnish company sold its patents to a French government fund, which used US-based IP lawyers to file baseless lawsuits against American companies, including well-known establishments like Reddit and Bloomberg, as well as smaller ones like Tastemade and Skillshare.
Judges should enforce rules requiring transparency about third-party funding in patent lawsuits. When ownership is unclear, it’s appropriate to insist that the real owners show up and testify—before dragging dozens of companies into court over dubious software patents.
Reposted from the EFF’s Deeplinks blog.
Filed Under: cafc, colm connolly, patent trolling, patents, scams, shakedowns
Companies: backertop licensing, ip edge, lamplight licensing, mellaconic ip, nimitz technologies
from the this-is-just-super-enjoyable-all-around dept
Three years ago, we updated Vizzini’s list of “classic blunders” from The Princess Bride to include “never try to patent troll Cloudflare.” That was when the company announced that patent troll Sable Networks had made that mistake and now needed to be taught a lesson. That lesson is now complete, and Cloudflare has successfully destroyed a patent troll (and embarrassed it along the way) so much that the troll has agreed to declare its entire patent portfolio open and free for the public to use.
First, some history: over a decade ago, the e-commerce site Newegg was getting sick of patent trolls and decided that it needed to take a “never settle” approach to fighting them. The thing with patent trolling is that it’s asymmetric warfare. Trolls get low quality patents and then shake down companies, knowing that it’s cheaper to just pay some smaller amount to settle than to take the matter to court and win. But, as Newegg’s leadership surmised at the time, settling only leads to more patent trolls and more shake down payments. Making it clear you’ll never ever settle (and being very public about that) should eventually lead patent trolls to look elsewhere.
Since then, a few other companies have embraced this strategy, but none has done so with quite the same gusto, zeal, and commitment to absolutely crushing the souls of patent trolls as Cloudflare.
In 2017, Cloudflare announced its plan to completely destroy a patent trolling firm, Blackbird. It launched something it called Project Jengo, which offered up rewards to anyone helping them to completely obliterate Blackbird’s patents. The campaign was a huge success. Cloudflare won in court (and on appeal) and it appeared it greatly limited Blackbird’s ability to keep trolling.
Sable Networks didn’t bother to educate itself on this before trying its trolling efforts on Cloudflare. Cloudflare opened up the same playbook on Sable (owners of a bunch of old terrible Caspian Networks patents that it bought for a song). Cloudflare fought back and won in court earlier this year.
And it wasn’t just a “you didn’t infringe” kind of win. They actually got a jury to invalidate the patent at issue (the lawsuit had started with many claims over multiple patents, but by the time it went to trial, it had been narrowed down to one claim on one patent, and Sable couldn’t even make that one stick).
Juries very rarely invalidate patents. They are much, much, much more primed to believe that any patent is legit and not realize how many junk patents there are. They also are generally unaware of patent trolling and abusive behaviors by patent trolls that amount to little more than extortion. But here, the jury was convinced that the patent was bogus:
Perhaps it was because Cloudflare dug in during the trial and made Sable look like the extortionate troll it is. From the transcript, you see that Cloudflare’s lawyers got Sable to admit that its only actual business was suing people:
Q. I mean, that’s your business. Let’s don’t beat around the bush. You’re in the business of filing lawsuits, true?
A. Yes.
Q. And you would agree with me that you’ve been in that business for a while, right?
A. Yes.
Also, Cloudflare got Sable to admit that it does little to no research before filing its lawsuits.
Q. You believe it would be responsible, reasonable business practice to sit down and talk to folks before you sue them, right?
A. Yes.
Q. You didn’t do that here, did you, sir?
A. No.
Q. And you don’t do that as your practice, right?
A. That’s correct.
Q. You told this jury not 20 minutes ago that you sue every time. You don’t talk to anybody. That’s what you told them, fair?
A. Fair.
Q. And what you stood up here and told this jury is everybody in this industry, including me, sues first and talks later, correct?
A. Correct.
Q. But that’s just not true, is it, sir? The responsible business people in this business actually sit down and talk to folks before they sue them, fair?
A. Fair.
Q. And you don’t do that, do you, sir?
A. No.
I mean, that’s a thing of beauty.
Anyway, beyond just winning the case, Cloudflare has gotten Sable to (1) pay Cloudflare $225k for having to defend this nonsense lawsuit and (2) much more importantly, agree to release its entire patent portfolio to the public for anyone to use so that Sable can never sue over them again:
If you can’t see that screenshot from the agreement, it says:
DEDICATION TO THE PUBLIC OF THE SABLE PATENTS; ROYALTY FREE LICENSE AND RELEASE; PAYMENT BY SABLE TO CLOUDFLARE
2.1 Dedication To The Public Of The Sable Patents. Within twenty-one days of the Effective Date, the Sable Parties shall dedicate the Sable Patents to the public, including by filing and recording the appropriate document(s) and paying any applicable fee(s) with the United States Patent and Trademark Office pursuant to 35 U.S.C. § 253. For the avoidance of doubt, this Section 2.1 requires the Sable Parties to disclaim and dedicate to the public the entire term, or any terminal part of the term, of the Sable Patents granted or to be granted.
Now, I believe many of Sable’s patents are close to running out anyway. But still, what a huge victory, and one that should be celebrated. Cloudflare has truly gone past NewEgg’s “don’t settle” standard, to this impressive “don’t settle, and we will make you regret patent trolling, and do everything possible to stop you from ever patent trolling ever again, and we’ll make you feel bad too, because you deserve it.”
Filed Under: don't settle, patent trolls, patents, project jengo, trolling
Companies: cloudflare, sable networks
from the patently-absurd dept
As we just talked about the joint lawsuit filed in Japan by Nintendo and The Pokémon Co. against Pocketpair, the company behind the hit game Palworld, we still don’t have all the details. But one of the strange things about the suit is that is not a copyright or trademark suit, which is what everyone expected as soon as the game launched. Instead, this is supposedly a patent infringement suit, with the plaintiffs claiming that Palworld infringes on several of their patents. This led everyone from the folks at Pocketpair itself to the public to ask the obvious question: what patents?
Nintendo and The Pokémon Co. have yet to provide this detail, so we’re in the speculative stage at the moment. That being said, if this really is a patent infringement suit, some commentators out there believe they have found the likely culprits, which are several divisional patents recently filed for with the USPTO.
Kiyoshi Kurihara, a Japanese patent attorney and consultant on intellectual property spoke to Yahoo Japan on the lawsuit (translated by Automaton), and pointed to a “killer patent” that revolves around the mechanic of catching Pokémon itself.
“It seems like it would be hard to avoid if you want to make a Pokémon-like game, and it’s easy to infringe if you’re not careful,” Kurihara is quoted as saying.
The way a divisional patent works is to isolate specific aspects within a parent patent. This tends to happen when a single parent patent contains multiple protected elements, then divided out in the divisional patents. The patent that Kurihara and many others are pointing to in this case is Japanese Patent No. 7545191, which essentially covers the game mechanic of capturing a character with a “capture item”, in this case a Poké Ball.
Aiming a capture item (Poké Ball) at a character placed on the field (Pokémon), releasing the capture item in a direction determined by player input, judgment of whether capturing is successful or not upon contact between the capture item and Pokémon, and changing of the Pokémon’s status to “owned by the player” when capturing is successful. In addition, the patent also covers the mechanic of having capture probability displayed to the player, regardless of whether it uses colors, graphics or numbers.
While the divisional patents were just filed for weeks ago, likely in preparation for this lawsuit, the parent patent has been held since 2021. Because of that, it would still be valid to use against Pocketpair.
Although you have to wonder just how valid this patent is, not to mention why the plaintiffs haven’t wielded it against others. Is throwing a ball to capture a character really patent worthy? Is it really a mechanic invented by Nintendo and The Pokémon Co.? Hell, the Ghostbusters video game came out in 2009 and, as in the movies, involves a capture device you have to toss at ghosts and then guide them into it. That was well before the 2021 patent was granted.
Kurihara hinted at some of this in his comments above. A patent like this would preclude anyone from making a game that is inspired by Pokémon games. It would also be very easy to infringe upon unintentionally, given its real or potential broad use in the gaming industry.
And regardless of how this lawsuit shakes out, this sure looks like Nintendo and The Pokémon Co. scratching and clawing for any excuse to sue the competition. Maybe it would be better to just compete instead.
Filed Under: japan, palworld, patents, poke ball, pokemon, prior art, throwing a ball
Companies: nintendo, pocketpair, pokemon company
from the a-patent-for-what-exactly? dept
Well, it took awhile, but we finally got here. Earlier this year, we discussed the game Palworld shortly after its release. It made our pages because the game is clearly partially inspired by the Pokémon series of video games, with some very stark differences. Similarities aside, the characters in the game are certainly different than those in Pokémon games, coupled with the use of firearms in the game along with other game mechanics that made it demonstrably different than any other game. As we highlighted at the time, this made Palworld something of an example of how the idea/expression dichotomy works and we warned that, while Nintendo or The Pokémon Co. might eventually pursue legal action over the game, a copyright suit ought to have a hard time surviving a defense using that dichotomy.
Which is why, while I wasn’t terribly surprised to learn that Nintendo and The Pokémon Co. have in fact sued Pocketpair over its Palworld game, I sure wasn’t expecting to learn that it was doing so over patent infringement.
Nintendo and The Pokémon Company announced they have filed a patent-infringement lawsuit against Pocketpair, the makers of the heavily Pokémon-inspired Palworld. The Tokyo District Court lawsuit seeks an injunction and damages “on the grounds that Palworld infringes multiple patent rights,” according to the announcement.
Beyond mere copyright concerns, though, Nintendo’s lawsuit announcement specifically alleges patent infringement on the part of Palworld (though this difference could come down to vagaries of translation from the original Japanese). A lawsuit over patents would seemingly require some unique game mechanic or feature that has been specifically granted stronger protections by the patent office. While the Pokémon Company does hold a number of (US) patents, most of them seem to deal with various server communications methods or the sleep monitoring capabilities of Pokémon Sleep.
Adding to the mystery in all of this is that nobody but the plaintiffs seems to have any idea what these patents that were infringed upon could be. I tend to agree that perhaps there’s a translation issue at work here and this really is instead a copyright and/or trademark infringement suit, but we’ll have to wait for more to come out to see.
If it is patents, I’ll be surprised. I’ll be even more surprised if there is any validity to such a patent infringement claim. That’s just not typically how these things in the video game industry work.
But if it really is a trademark and/or copyright claim, it should fail and fail hard… if this suit were brought in the United States. In Japan, however, it’s more complicated. Japanese copyright law does not have an explicit idea/expression dichotomy in the way US copyright law has, but the courts there do sometimes give a nod to and use it in a similar way.
But any sane copyright law would allow for games to be inspired by, but not replicas of, an original work. The whole point of copyright generally is not to allow any one entity own the concepts that go into a video game, but instead the specific expression of the same. And, for what it’s worth, Pocketpair too appears to be confused as to what this is all about.
“We have received notice of this lawsuit and will begin the appropriate legal proceedings and investigations into the claims of patent infringement,” Pocketpair says in a statement. “At this moment, we are unaware of the specific patents we are accused of infringing upon, and we have not been notified of such details.”
And so now we wait to see what the actual details here are. Frankly, sans some translation issue, none of this makes much sense to me. And while Nintendo and The Pokémon Co. certainly have shown themselves to be willing to stretch IP laws to be the bully generally, this seems to go beyond the norm.
Filed Under: copyright, idea expression dichotomy, japan, palworld, patents, pokemon, satire, trademark, video games
Companies: nintendo, pocketpair, pokemon company
from the all-trolling-all-the-time-act dept
Have you been missing patent trolls destroying innovation and making products you like more expensive? Have you felt that, maybe, some lawyers who did nothing but send extortionate shakedown letters weren’t getting rich enough? Well then, good news for you, Congress is looking to bring all that back!
In the early years of Techdirt, we spent a lot of time talking about patent trolling, and how terrible, ridiculous patents that never should have been granted were being used as a shakedown mechanism against actual innovators. Greedy, shameless lawyers would get or buy extremely broad and vague patents, where there was no intention to actually bring a product to market, and then they’d threaten, extort, or otherwise shakedown, companies who actually built successful products, often totally unrelated to the patents in question.
Thankfully, a decade or so ago, the worst aspects of patent trolling were limited (though certainly not eliminated). Changes to the law made it easier to challenge bad patents, and the Supreme Court ran through a series of cases that made it clear that terrible concepts like business models and pure software were not patent-eligible subject matter. Both have been hugely important.
And the Senate is looking to roll back both of them.
In 2012, the America Invents Act had some issues, but among its good ideas was the Patent Trial and Appeals Board (PTAB), which enabled “Inter Partes Review” (IPR) of patents. This allowed anyone to challenge the validity of a patent by showing prior art to the PTAB, allowing the PTAB to say that the original patent examiner made a mistake and shouldn’t have granted a patent.
This process has been hugely important in stopping dangerous and bad patents. In the early 2000s, scholars detailed part of the reason the patent system was so broken was the lack of an antagonistic process in the granting of patents. You have the party applying for the patent, and then you have the examiner. The examiner may challenge the applicant on certain points, but there is no such thing as a “final” no (even if there is something called a final rejection), such that the applicant can keep trying. And there’s no one pushing back on the other side and pointing out why something doesn’t deserve a 20-year monopoly.
That resulted in plenty of patents that shouldn’t have been granted becoming weapons of mass litigation. The IPR process allowed people to challenge these patents, to show that the sole patent examiner who handled the case got it wrong, and to get rid of the dangerous and unnecessary monopoly.
Patent trolls have long hated the IPR system. They’ve challenged it multiple times, but so far, the concept has held up in court, including the Supreme Court.
The other major change that helped stop terrible patents was the Supreme Court repeatedly taking cases about people patenting things that should never have been patentable, and calling out the patent office and the lower courts for allowing this nonsense. One of these cases, Alice v. CLS Bank, from a decade ago, effectively said that software and business models weren’t patentable (though not as clearly as it should have). This followed on similar rulings saying that medical diagnostics and genes shouldn’t be patentable either.
But, of course, some people in Congress love patents and patent trolling. Senators Chris Coons (who, for years, worked for W.L. Gore, a company known for its patent enforcement, though which was also on the receiving end of many patent lawsuits) and Thom Tillis have long been supporters of ever more troll-friendly IP laws.
They have two bills that may get voted on today that seek to wipe out all of the good things discussed above. EFF has a summary of each:
The Patent Eligibility Restoration Act (PERA, S. 2140) would overturn Alice, enabling patent trolls to extort small business owners and even hobbyists, just for using common software systems to express themselves or run their businesses. PERA would also overturn another 2013 Supreme Court case that prevents most kinds of patenting of human genes.
Meanwhile, the PREVAIL Act ( S. 2220) seeks to severely limit how the public can challenge bad patents at the patent office. Challenges like these are one of the most effective ways to throw out patents that never should have been granted in the first place.
Both of these would be horrific for the future of innovation and would bring back into the foreground more patent trolling shakedowns over completely bogus patents that never should have been granted. It would literally set innovation back a decade. And for what? To help a few lawyers shakedown more innovators? Who wants that other than the patent trolls?
Over the last decade, patent trolling hasn’t gone completely away, but it has become less of an existential threat for innovators than it was for the first ten to fifteen years of the 2000s. These two bills would destroy that and bring us back to an era of less innovation and more shakedowns.
The EFF link has ways to contact your senators to vote against these bills, and I hope that many of you will do so.
Filed Under: alice v. cls bank, business model patents, chris coons, gene patents, ipr, patent trolls, patentable subject matter, patents, ptab, software patents, thom tillis
from the two-bites-at-the-apple dept
If you follow tech news at all, you likely heard some stuff about the potential for an Apple Watch ban over patent infringement. It was all over the news. Apple had pulled its high end watches from its store last week, following an ITC ruling from earlier this year claiming that Apple’s blood oxygen reading sensor in the watch violated the patents of a company by the name of Masimo. The patent claim here might even have some level of validity, given the history of how Apple ended up developing such tech.
Then, last week, there were claims that the Biden administration could step in and block the the enforcement of the ITC’s ruling. But that always seemed unlikely (even if Obama did step in a decade ago to block a similar enforcement of an ITC ruling saying that Apple infringed on Samsung patents).
You also might have heard the news yesterday that Apple’s watches were going back on sale following an appeals court stepping in to halt the import ban. Of course, many articles about this failed to mention which court stopped the ban, so we’ll help you out on that one. It was the Court of Appeals for the Federal Circuit (CAFC) granting the stay of the ITC’s order in a two page order while it reviews it.
If all of this sounds vaguely familiar, well, it should. Almost exactly a year ago, we wrote about something that sounded nearly identical. The ITC had said it was going to ban the import of Apple watches, after saying that Apple infringed on a patent from a different company, AliveCor, regarding heart rate tracking (as opposed to blood oxygen tracking). In that case, also, the Biden administration chose not to step in and veto the ITC. And, also, in that case, the ITC ban was put on hold while Apple and AliveCor continued to fight things out in court. (One major difference in the AliveCor story is that the Patent Trial and Appeal Board invalidated AliveCor’s patents even before the ITC ruled, which made things… well… weird.)
But, really, what this should be doing is shining a bigger light on the silly ITC loophole through which both of these cases happened. We’ve been writing about the ITC loophole for over 15 years. It basically is a mechanism that gives patent holders two separate chances to file a lawsuit against a company for patent infringement, as the ITC process can happen in parallel with a case in federal court for patent infringement.
While the ITC is limited in the remedies it can issue (it can’t order a company to pay up, it can only block the import of goods from abroad), it leads to these weird situations where the ITC can effectively route around the courts and issue a separate ban order (like these two in the past year or so regarding Apple Watches) regardless of what a court finds (or if the Patent Office admits it made a mistake in issuing the patent).
This whole process is a mess. There is an Article III court process for reviewing if someone infringed a patent or not. There’s no need for another agency, one unrelated to patents, to have the authority to review the case separately. All it does is give patent holders an extra shot at trying to force another company to pay up.
In this case (as with the AliveCor situation), at least, it seems that the CAFC is stepping in to say “hey, let’s wait on the ITC bans until the entire court process has played out,” but that just reinforces the idea that the ITC process is confusing and duplicative.
Let the courts go through their process, including appeals, and if by the end of that process it’s determined that one company infringed on another’s patents, and then is unable to negotiate a license, then open up the ITC process to put in place an import ban. At that point, it’s been thoroughly adjudicated in courts of law, rather than through the administrative ITC process, and avoids situations like this where an import ban threatens to block an entire product before it’s been fully adjudicated in court.
Filed Under: apple watch, import ban, itc, itc loophole, patents, ustr