Video Game Technology and IP Law: Problems in Patents
Despite an extensive American patent tradition, some patent practitioners perceive video game inventions as being outside the scope of technical inventions that are available for patenting. Unlike traditional gaming patents, however, video game technologies are heavily integrated with many “hard” technologies, such as electrical circuits, advanced graphical processing, complex mechanical devices, touch-sensing, augmented and virtual reality, artificial intelligence, and numerous software disciplines. Even with these technical advantages, many video game patent applicants still face unique challenges that are not commonly encountered in other technologies areas. This article briefly discusses common issues found among video game patents and patent applications with respect to (1) patent eligibility, (2) overcoming prior art, and (3) infringement issues associated with different video game revenue models.
This article series will focus on various intellectual property issues facing video game companies. Rather than emphasizing a few narrow legal issues, this series is intended to provide a more comprehensive perspective of intellectual property in relation to the video game industry. As lawyers, we often focus on many legal issues in a vacuum, e.g., asking whether a specific technology is eligible for patenting under U.S. law. However, clients often see legal issues as part of a larger picture. Where lawyers may enjoy multi-faceted legal complexity, a video game developer may want a simple straightforward answer regarding whether they can provide a product or service. If a company provides such a product or service, the company also wants to know the legal ramifications for the company as a whole, i.e., with respect to available legal protections regarding the product or service as well as any potentials risks. With that in mind, this first article is directed to patent protection and enforcement in connection with video game technologies.
Being associated with the electrical arts, video games companies are relative newcomers to the patent realm. However, American game companies have a long tradition of patenting their product offerings. For example, multiple patents have been granted to various MONOPOLY game-type board games, with the first such patent issuing on January 5, 1904. The USPTO has granted patents for various card games (e.g., the “Magic the Gathering” card game), children’s dolls (e.g., a lifelike “BARBIE” doll), toy building bricks (e.g., the original LEGO patent), and countless other game patents. With respect to video game patents, the first one arguably was for a “cathode-ray tube amusement device” in 1947 that made a “visible explosion” of a cathode ray beam when a target, such as a picture of an airplane, is hit. Following this breakthrough, other video game patents were issued such as one for a television gaming apparatus in 1972 that was licensed to Magnavox, joystick controllers, and game consoles.
Despite this extensive patent tradition, some patent practitioners perceive video game inventions as being outside the scope of technical inventions that are available for patenting. Unlike traditional gaming patents, however, video game technologies are heavily integrated with many “hard” technologies, such as electrical circuits, advanced graphical processing, complex mechanical devices, touch-sensing, augmented and virtual reality, artificial intelligence, and numerous software disciplines. Even with these technical advantages, many video game patent applicants still face unique challenges that are not commonly encountered in other technologies areas. Accordingly, some common issues found among video game patents and patent applications relate to (1) patent eligibility, (2) overcoming prior art, and (3) infringement issues associated with different video game revenue models.
Turning to patent eligibility, the Supreme Court decision in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (“Alice”) created unique legal hurdles for protecting video game inventions. In response to Alice, the courts have found claiming “a set of rules for a game” to be an abstract idea that triggers patent-eligibility scrutiny. As such, any patent claims that make reference to “game rules” fall into this dangerous territory that patent applicants should seek to avoid. By understanding which game features are dangerous for patenting, such as game rules, the smart patent applicant can avoid difficult prosecution battles at the USPTO. After issuance, patent enforcement also heavily turns on whether your video game patent looks closer to patents that have survived the Federal Circuit’s scrutiny rather than ones that were invalidated. With this in mind, patent eligibility is best described as a legal balancing act for video game inventions. On one side, patent applicants must emphasize certain features in video game technologies that examiners and courts respect (e.g., game hardware, machine learning, etc.). On the other side of the balancing act, patent applicants must navigate away from certain features that inventors often like, but which make patent invalidation much easier.
With respect to prior art issues, patent applications for video game inventions are often rejected using references rarely found in other art units, such as YouTube videos, game manuals, and video game screenshots. While U.S. patent law for novelty and obviousness is the same across all technologies, the law is implemented differently based on different facts. To illustrate this point, patent references are always treated as valid printed publications for prior art rejections. In contrast, non-patent references such as YouTube videos, are more commonly disqualified as lacking the requirements for being valid prior art. For example, one court found the Diablo II User Manual to be a valid prior art reference. On the other hand, another court found a technical report uploaded to a website was not “publicly accessible” to persons interested and ordinarily skilled in the technical art, and therefore was not prior art. When faced with non-traditional prior art, there are a variety of legal attacks that can be made against the non-traditional reference, such as lacking enablement, public accessibility, proof of the actual publication date, and whether the non-traditional reference actually teaches the alleged limitation. With video game screenshots, in particular, a software developer may not be able to code a similar game feature without undue experimentation simply by watching someone else play the video game.
Furthermore, it is important to note that the end goal of the patent process may not simply be to obtain a patent, but to protect a product or service. With this in mind, several patent doctrines are relevant to obtaining actual patent protection, such as the patent exhaustion doctrine and divided infringement. As the Supreme Court notes, “[o]nce a patentee decides to sell — whether on its own or through a licensee — that sale exhausts its patent rights.” With 21st century gaming, playing a video game is no longer limited to a few players in a small room crowded around a television set. Online gaming has created a variety of new opportunities for video game play, but also introduced new legal issues in connection to patent rights. Accordingly, drafting valuable patent claims typically requires knowing whether a video game invention will be used in a home console without Internet access, within a smart phone app, and/or in a massively multiplayer online role-playing game (MMORPG). Thus, valid patent protection often turns on knowing whether the infringer will be another video game developer or a third party distributor offering gaming services in connected to a particular game. Likewise, patent claims are best drafted to avoid any necessity to sue a video game company’s customers, i.e., the actual video game players.
In conclusion, video game inventions warrant patent protection just as much as inventions in other “hard” technologies. To obtain valid patent protection for video games, the primary challenge is often found in the diversity of technologies and variety of revenue models used by video game companies. To overcome these challenges, experience is often the best teacher. Legal experience at the USTPO may be valuable. However, understanding why video games are both innovative and highly technological may even more valuable. In some cases, lawyers often need to do what many lawyers haven’t done in decades. That is, enjoy playing video games. Once a person appreciates video game technologies, video games start looking less like games and more akin to other highly complex technological areas.
 U.S. Pat. No. 748,626; U.S. Pat. No. 1,509,312; U.S. Pat. No. 2,026,082; U.S. Pat. No. 2,174,058; and U.S. Pat. No. 4,012,045.
 U.S. Pat. No. 5,662,332.
 U.S. Pat. No. 3,009,284.
 U.S. Pat. No. 3,005,282.
 U.S. Pat. No. 2,455,992.
 U.S. Pat. No. 3,659,284.
 U.S. Pat. No. 4,469,330.
 U.S. Pat. No. 4,799,635.
 See In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016); In re Marco Guldenaar Holding BV, 911 F.3d 1157 (Fed. Cir. 2018) (finding a method of playing a dice game to be ineligible for patenting).
 See Amdocs, Ltd. v. Opennet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (finding patent eligibility when “somewhat facially-similar claims” are directed to a similar improvement found patent eligible).
 See Game and Technology Co., Ltd. v. Activision Blizzard Inc., 926 F. 3d 1370, 1374-1375 (Fed. Cir. 2019).
 See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F. 3d 765, 774 (Fed. Cir. 2018).
 Impression Products v. Lexmark Intern., 581 U.S. ___ , 137 S. Ct. 1523, 1535 (2017)