Patents related to games are facing new challenges for being too “abstract,” but a recent court ruling highlights the limits to this line of attack. Last year, the Supreme Court reinvigorated a body of law that defines the types of inventions eligible for patent protection. Generally, inventions deemed “abstract” are ineligible for patenting, unless there is some other inventive concept in how the invention is implemented. Defendants accused of infringing game-related patents have seized on this body of law to challenge issued patents as being mistakenly granted. But in these challenges, what counts as “abstract” has been subject to much debate. So new court rulings on patent eligibility of interactive-entertainment technologies are worth noting. A recent decision should comfort game-patent owners.
Thanks to its pending patent infringement suit in the Central District of California (Timeplay, Inc. v. Audience Entertainment LLC, CV 15-05202 SJO (JCx)), Timeplay, Inc., a Canadian-based tech company specializing in interactive gaming, recently faced a motion to dismiss brought under 35 U.S.C. §101, challenging the patentability of its newly issued patent. The asserted patent generally relates to secondary displays on hand-held controllers for use with network-based games. Shortly after the patent issued, Timeplay sued Audience Entertainment LLC, alleging that Audience infringed by selling a mobile game called “Terminator: Genisys.” In response, Audience, a New York-based competitor, attempted to have the suit dismissed on the basis that the asserted patent was invalid for failing to claim patentable subject matter. In its November 10, 2015 Order, the Court denied Audience’s motion to dismiss, holding that Timeplay’s patent survived under the Section 101 analytical framework set forth by Supreme Court precedent in Alice Corp. Pty. Ltd. v. CLS Bank. This decision should give encouragement to gaming companies that at least some patents in this domain are surviving Alice challenges.
Surviving Section 101
As a prelude to its analysis, the Court briefly surveyed the recent developments in Section 101 jurisprudence, noting the struggle that the lower Federal courts have had in applying the Supreme Court’s framework for resolving patent-eligibility challenges. This two-step framework, which has now become essentially synonymous with Section 101 challenges, was first articulated in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and more recently addressed in Alice. The Court then applied the Alice/Mayo framework, holding that Audience had failed to meet its burden of proving that the claims of the asserted patent were i) directed to a patent-ineligible abstract idea and ii) lacked an “inventive concept,” as explained below.
- Audience failed to prove the Patent is Directed to an Abstract Idea. The Court first noted the parties’ apparent agreement that the asserted patent was directed to the idea of “multi-player gaming using a hand-held controller that has a display screen where the players are also in front of a shared display.” It was unpersuaded, however, by Audience’s attempt to further characterize the patent claims as being “directed to the idea of allowing multiple people to play a game together using generic computer and communications hardware.” Instead, the Court pointed out that the claims, by definition, were limited to the field of multi-player gaming and required the use of multiple hardware components. According to the Court, these limitations distinguished the claimed techniques from those that theoretically could be performed without any particular computing hardware and have been deemed “abstract” within the meaning of Section 101.
- Audience failed to prove the patent lacks an “inventive concept.” Under the second prong of the Alice/Mayo framework, the Court held that even accepting Audience’s characterization that the claims are directed to the abstract idea of playing a game with a group of people, the existing claim elements sufficiently limited that idea to require the use of hand-held controllers that both have a “secondary game display [that] is complementary to the primary game display” and are “configured to download a game software module … prior to initiation of the multi-player game.” The Court concluded that Audience had not met its burden of establishing that these additional claim elements were insufficient to supply the necessary “inventive concept” to transform the claims into a patentable invention.
The ruling illustrates helpful practice tips for those drafting game-related patents. The Court in Timeplay, Inc. v. Audience Entertainment LLCnoted that each of the 38 claims in the asserted patent recite a “multi-player game system” in the preamble and contained the limitations involving handheld controllers with separate screen and software download capabilities, i.e. hardware that was not, on its face, “purely functional and generic” according to this Court. In this post-Alicelandscape, patent drafters should think about how to draft with a strategic level of specificity. They should consider the benefits of adding detailed preambles and putting in additional limitations that include non-generic computer hardware and software components. This decision provides yet another valuable reminder and take-away for patent drafters who should be looking ahead to Section 101 challenges when drafting patent claims.