With 6 lawsuits, 32 preliminary injunction actions, and over 20 PTAB proceedings, GREE and Supercell have been duking it out in the IP world, with millions of dollars in legal fees being spent in the process.[1] Most recently, the PTAB denied Supercell’s PTAB challenges to GREE patents in early September, while an Eastern District of Texas lawsuit went to verdict and found in favor of GREE on September 18th, awarding $8.5 million dollars in damages to GREE.[2]
Continue Reading Clash of Game Companies: Lessons Learned from GREE and Supercell Dispute
Chris Ponder
Chris Ponder is a partner in the Intellectual Property Practice Group in the firm's Silicon Valley office.
Left Empty Handed: Valve Shut Down on Written Prior Art, Highlighting Importance of System Art
System art is of increasing importance in patent disputes despite being frequently overlooked or “left for later” in many cases. A recent decision in the Ironburg Inventions v. Valve Corp. case highlights the importance of system prior art, particularly as IPR success rates have dropped from their high points in 2012-15.
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“Addressing Video Game Claims Under the Phillips Standard at the PTAB”
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.
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Converting an IPR Loss into a District Court Win
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.
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Caution to Game Companies: PTAB Continues to Preclude PTAB Challenges That It Views As Untimely
In a proceeding that included Patent Office Director Andrei Iancu on the panel, the PTAB issued an order this past week denying institution of 3 IPRs filed by Valve. The decision demonstrates that the PTAB continues to tighten its standards for institution of post-grant challenges, including based upon considerations related to what it perceives as fairness to patent owners.
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Failure to Launch: Not Identifying the Proper Parties Can Prematurely End an Video Game IPR Challenge
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
Challenges in Filing Successful IPR Petitions for Video Game Patents
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