Last fall, the PTAB modified its procedures for IPR claim construction, eliminating the use of the broadest reasonable interpretation standard. Since the rule change last year, companies challenging the validity of patents at the PTAB are required to use the Phillips plain and ordinary meaning standard.
Continue Reading “Addressing Video Game Claims Under the Phillips Standard at the PTAB”

As real-world celebrities continue to expand the reach of their persona into the digital realm, the potential benefit for advertisers, game developers and esports event promoters is exceedingly high. But with increased opportunity comes increased risk.

A New York Supreme Court recently addressed this risk when it construed the State’s right of publicity statute[1] in a dispute over an NBA 2K18 video game avatar. In Champion v. Take Two Interactive Software, Inc., celebrity basketball entertainer Phillip “Hot Sauce” Champion sued the video game developer, alleging violation of his right to privacy for Take-Two’s use of his name and likeness. The Court ultimately dismissed the lawsuit, but not before it provided a helpful discussion of New York’s publicity statute and its modern application to the esports industry.
Continue Reading Celebrity Entertainer Sues Over Video Game Avatar

It is very common to defend against a claim of patent infringement by litigating in the district court and the PTAB in parallel. The most straightforward-way for the defendant to win is to persuade the PTAB that the asserted patent is invalid. But, that is becoming more difficult as Director Iancu pushes the PTAB to apply greater scrutiny to petitions in order to address patent owner criticism that the PTAB proceedings are unfair. However, a recent decision disposing of a non-practicing entity’s long-running litigation against Ubisoft highlights how a defendant that ultimately lost on an issue before the PTAB can use the loss to their advantage in district court.
Continue Reading Converting an IPR Loss into a District Court Win

Most video game patents that are asserted in litigation are also challenged at the PTAB through IPR or PGR petitions. Patent Owners looking for new ways attack such challenges have turned to the failure to disclose real-parties-in-interest (“RPI”). Under 35 U.S.C. § 312(a)(2), “[a] petition . . . may be considered only if . . . the petition identifies all real parties in interest[.]” Additionally, under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” These requirements can pose unique questions for video game companies based on their relationships and business process. 
Continue Reading Failure to Launch: Not Identifying the Proper Parties Can Prematurely End an Video Game IPR Challenge

Video game patents being asserted in litigation are frequently challenged by defendants at the Patent Trial and Appeals Board by filing a petition requesting inter partes review (IPR), post-grant review (PGR), or (less frequently) covered business method review (CBM). Gaming companies need to be cautious in preparing these petitions as the PTAB continues to increase its scrutiny of petitions and is showing a reluctance to “fill in the dots” for deficient petitions.
Continue Reading Challenges in Filing Successful IPR Petitions for Video Game Patents

The U.S. Copyright Office is making changes to the Digital Millennium Copyright Act (DMCA) safe harbor agent registration process. The changes impact both new online service providers as well as existing online service providers who have already registered an agent. Read on for details about what you will need to do.
Continue Reading Deadline Approaching: Action Required by December 31 To Avoid Losing DMCA Safe Harbor Protection

The Federal District Court in Delaware recently denied a motion to dismiss a patent infringement case involving a video game networking technology patent based on the patent allegedly being  invalid for lack of patent-eligible subject matter under 35 U.S.C. § 101. Despite all of the recent press regarding the so-called Alice test, which revised the test for patent-eligible subject matter, video game related patents are still obtainable and enforceable. It is critical that patent applications for these inventions be carefully considered, the patent applications be properly drafted and the claims be presented in a way that complies with the relevant test.
Continue Reading Video Game Network Patent Found to Be Patent Eligible – Not an Abstract Idea

A recent federal district court decision denied a motion to dismiss a complaint brought by Artifex Software Inc. (“Artifex”) for breach of contract and copyright infringement claims against Defendant Hancom, Inc. based on breach of an open source software license. The software, referred to as Ghostscript, was dual-licensed under the GPL license and a commercial license. According to the Plaintiff, those seeking to commercially distribute Ghostscript could obtain a commercial license to use, modify, copy, and/or distribute Ghostscript for a fee. Otherwise, the software was available without a fee under the GNU GPL, which required users to comply with certain open-source licensing requirements. The requirements included an obligation to “convey the machine-readable Corresponding Source under the terms of this License” of any covered code. In other words, under the open source license option, certain combinations of proprietary software with Ghostscript are governed by the terms of the GNU GPL.
Continue Reading Important Open Source Ruling Confirms Enforceability of Dual-Licensing and Breach of GPL for Failing to Distribute Source Code

The U.S. Copyright Office’s new electronic system for copyright-agent registration and maintenance goes into effect on December 1, 2016, and with it comes new rules. Beginning December 1, all online service providers must submit new designated-agent information to the Copyright Office through the online registration system. Electronic designations should be filed on December 1, 2016, or as soon as possible thereafter. Service providers who fail to timely submit electronic designations will be ineligible for the safe harbor from copyright-infringement liability provided by § 512(c) of the Digital Millennium Copyright Act.
Continue Reading Don’t Lose Your DMCA Safe Harbor Protection!

Episode 21 is a delightful maze of plots, plot twists and omens.  At Pied Piper, Richard fails in his attempt to go over CEO Action Jack’s head and have Laurie, the investor, force Jack to scrap his Box and build the consumer platform.  As a result of this failed coup, Jack warns Richard darkly, “if you’re going to shoot the king, you’ve got to be goddamn sure you kill him.”  Undeterred, the team opts for covert action:  they will build their consumer platform while pretending to build Jack’s box. They form a secret ‘startup within a startup,’ aptly/obviously codenamed “Skunkworks.” But before they can even get to work, Richard lets the Skunkworks plans fall into the enemy, sales team hands… and it seems like the entire scheme is blown!
Continue Reading Trade Secrets and Lies (Silicon Valley – Episode 21)

This blog entry, which focuses on the Google Play Developer Distribution Agreement, is the first of two articles geared at helping app developers understand the fine print of the agreements they are asked to enter into with the companies that distribute their products. Following later this year, the second installment will focus on the iOS Program Developer Program License Agreement.
Continue Reading Bargaining with the Little Green Robot: Understanding the Google Play Developer Distribution Agreement [1]