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Games Not Patentable?

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Games have been having a hard time when it comes to surviving challenges to patentability. Most recently, Bot M8 lost its patent lawsuit against Sony, because its claim was not patentable subject matter. The court used the two-step analysis from the supreme court’s Alice decision to invalidate the claim.

The lawsuit alleged that Sony’s PlayStation 4 “Uncharted 4” and “Uncharted: the Lost Legacy” games infringed claim 1 of U.S. Patent No. 7,338,363. However, the court found claim 1 was directed to unpatentable subject matter.

The court found “…claim 1 of the ’363 patent recites the abstract idea of increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results.” This is step 1.

That’s bad enough, but it gets worse for Bot M8. “But the claim leaves open how to accomplish this, and the specification provides hardly any more direction.” These days, the written description requirement is harder to satisfy. A complete explanation of how the invention works and how it solves a technological problem can be very helpful.

Instead, the court found “…the claim merely recites result-oriented uses of conventional computer devices.” Technically, a claim may define a limitations in functional terms, but if it does, the specification should provide some examples of how the function works, how it should be implemented in practice. In essence, the written description and drawings help a person of routine skill understand how the functional limitations limit the claim to a particular application of an abstract idea, which is often sufficient to overcome invalidity based on patent ineligible subject matter.

This court found “…neither the patent specification, patent owner, or patent owner’s experts articulate a technological problem solved….” Now, that’s going to be a problem. The owner and expert should at least be able to explain how the patented technology solves a technological problem. It’s always good to solve some technological problem in computer implemented inventions, even though it is not an absolute requirement.

The court found that “…the ’363 patent teaches a game machine that updates the game conditions based on past results to keep players engaged.” Unfortunately, the patent specification didn’t explain in detailed enough examples to satisfy this court how that was accomplished. The court cited to a Federal Circuit decision that “’…held that improving a user’s experience’ remains, ‘without more,’ an insufficient technological improvement and, thus, not patentable.” Citing Customedia, 951 F.3d at 1365.

Game patents haven’t done well. In Planet Bingo v. VKGS, 576 F. App’x 1005 (Fed. Cir. 2014), the federal circuit found the claims patent ineligible as an abstract idea, computerized management of a bingo game. In re Smith, 815 F.3d 816 (Fed. Cir. 2016) was found to be patent ineligible, because it was nothing more than a new set of rules for a blackjack casino game. In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) was patent ineligible for the same reasons.

These types of rule-based claims are distinguished from decisions like McRO, Inc. v. Bandai Namco Games America, Inc. 837 F.3d 1299, 1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), which found claims drawn to an improvement allowing computers to produce “accurate and
realistic lip synchronization and facial expressions in animated characters” that was produced only by human animators, previously, but with a different method. Thus, these claims were a technological improvement that did not preempt all lip synchronization schemes but only the specific rule-based scheme recited in the claims.

Game patents that attempt to claim the rules of the game and nothing more than well known generic computer components or steps are going to continue to have problems with being declared patent ineligible. Game technologies that solve some technological problem and recite a particular technological solution to the problem will do much better.


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About the author 

Chris Paradies

Florida Bar certified intellectual property and U.S. patent attorney, founder of Paradies® law, chair of the board of directors for the Tampa Bay Innovation Center and certified coStarters facilitator. West Point graduate, entrepreneur, disruptor. Father, husband, faithful steward.

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