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Patent troll Treehouse targeting small MMOs
Patent troll Treehouse targeting small MMOs
July 12, 2013 | By Kris Ligman

July 12, 2013 | By Kris Ligman
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    29 comments
More: Console/PC, Social/Online, Business/Marketing



GamePolitics reports that at least four massively multiplayer online games have received legal notices from a law firm representing Treehouse Avatar Technologies, holding that the MMOs "may be infringing" on one of Treehouse's patents.

The companies contacted include Bad Pug Games (Starpires), Prairie Games (Minions of Mirth), eGenesis (A Tale in the Desert) and HiTech Creations (Aces High). Each company received a letter on or around July 1st from New Jersey-based law firm Lerner, David, Littenberg, Krumholz & Menlik, LLP, warning them that their titles could be infringing on their client's patent (U.S. Patent 8,180,858), concerning a "method and system for presenting data over a network based on network user choices and collecting real-time data related to said choices."

A copy of the letter sent to Prairie Games is available on GameLaw. However, all the letters are virtually identical. They do not explicitly call out the recipients' games as infringing, but suggest that they may in violation -- and offer to sell the companies a license, just to be safe.

This is a common tactic of patent trolls. NewEgg recently defeated another litigious company which had succeeded in extracting millions in patent licenses from online retailers over an ambiguously-worded patent.

Some of the MMO developers targeted by Treehouse are skeptical that the company has a valid claim. "We released all the source code to our 3D MMORPG into the public back in 2007," Prairie Games' Director of Product Development Randel Reiss tells GamePolitics. "Prior to that, as far back as 2005 we were publishing [with] Wizards of the Coasts' System Reference Document (SRD) -- WotC's decade-old royalty free d20 System License."

It should be noted that Treehouse's patent was filed in 2010.

When threats don't work, lawsuits can be the next step. Treehouse filed suit against Turbine Entertainment (now part of Warner Bros. Interactive) in 2012, regarding the same patent. The case is still pending.


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Comments


Booby K
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So, they got granted a patent for online character creation.

LOL too much prior art: Ultima Online 1997, Everquest 1999, FF11 2002-2004, WOW 2004. Which are way before the patent filing date of 2010.

Craig Jensen
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Can we just say patents don't apply to software already?

This is ridiculous.

Chris Clogg
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How dare you suggest something logical!!!

Michiel Hendriks
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I think the Telephone and Light Bulb patent controversies are proof enough that the whole concept of patents is flawed to begin with.

bill mangione-smith
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Perhaps. Should we only have laws and systems that have no flaws? Some of my favorite games have had bugs ...

And given the smallpox blankets and tuskegee syphillis scandals you must view the US in the same light, right? Which is just to say two examples isn't really very many out of the numbers involved. And in the telephone case it was really just ordinary corruption old school - not a patent specific issue.

bill mangione-smith
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While the patent was filed in 2010 it is based on an application filed in 2000 so its claims that as the priority date.

Also, just giving claim 1 a quick read, it is not a patent on all of online character creation but rather only a specific aspect of that. No idea if it is valid or not but the claims are not nearly as broad as Booby suggests.

Finally, no, we cannot say patents don't apply to software. There is no logical or legal basis for that. To believe that you have to either believe software is *never* inventive (I don't buy that for a second) or that patents should not apply to anything. But that second option is generally viewed as crazy so people argue software is somehow different.

Luke Shorts
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What you say about priority is partially correct, in the sense that the priority claim refers to two distinct patent applications filed respectively in 2000 and 2005, so in order to determine the effective filing date of each claim it would be necessary to determine which subject - matter comes from which application.

I disagree however with your assessment that the patent only targets some "specific" aspects of character creation. All the steps but the last of method claim 1 are ubiquitous in all MMOs which offer character generation, and I find it hard to believe that they were new even in 2000 (can't say for sure since I didn't play MMOs back then, but I think Everquest's client would perform all those steps during character creation).

The last step of the method "tallying the number of times the selected character attribute has been selected by a plurality of users" is an implementation choice normally hidden to the user, but I doubt that tracking user choices was invented after 2000 either.

Aiden Eades
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We can however say that broad patents such as this do not.

Lets face it, when it comes to patenting hardware you need to have the functionality, the end result, the designed mechanism. Effectively you need a working schematic of the hardware piece and that schematic is hat is protected. If I were to make a version of your invention, but used a different methodology to come to the same end result, your patent doesn't cover my invention (as an example, a wankel engine or a V engine)

Software however, only the process, or final result is patented. Not the method of how it's made. Although I could make the same package using a completely different method, different tools, different language, different compiler. Effectively under the hood it's completely different, the end result is the same and therefore protected.

This is the primary issue with software patents. Not that they exist, but their implementation.

bill mangione-smith
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Actually, when you patent hardware, you do not need the end result of a physical object. Nor a schematic. And if you have the schematic that schematic is not what is protected by a patent you may receive - for that you need a copyright.

Your characterization of software is also off the mark. The USPTO and federal law makes no distinction between software patents and other types - it does not even recognize what is a software patents. What you need to file a patent for both is the same. And you are most definitely *not* patenting the final result - that technique is used for chemical patents and such - but rather the method. In fact method claims are exactly the type that are most often used for what people consider software patents.

I submit this is the primary problem with discussion of software patents on the internet. People hold firm positions with - pardon me - insufficient basis in the facts.

bill mangione-smith
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Luke the claim is to the same disclosure - not two distinct applications - if you look at the cover of the patent they are two continuations - what you are suggesting would be the case if they had added new material and thus filed what is known as a continuation in part. The priority date goes to the root of the tree in 2000.

Without that last step being employed there can be no patent infringement. Thus, while they do rely on character creation they cannot assert against just that but the full claim. And your characterization of the last element is much broader than the language - the issue is whether an accused infringer tallies the number of times ... not if they in general track user choices.

Michael Joseph
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"Finally, no, we cannot say patents don't apply to software."
--

What we can say is that patents should not apply to software. It's really easy to say this in fact. There is very logical basis to hold this view. Primarily, software patents hurt innovation and the patent system (if not just to give monopolies) is supposed to foster innovation. The games industry would look nothing as it does today had early game developers patented every "invention" they "discovered".

In software, much of what occurs "first" still represents a very obvious solution to other engineers in the field. The fact is, you get multiple developers "discovering" multiple inventions at the same time ALL THE TIME and if you had more developers working on a particular problem you'd have even MORE members participating in these simultaneous discoveries.

This is just the reality of software engineering.

In fact, "discoveries" is a much more accurate term I think than "inventing." It is only arrogance and greed that make us declare we've invented something. And it's really quite perverse to think that monopoly rights are given to an entity just for being first to discover.

People don't really invent anything.... unless you're a magician.

bill mangione-smith
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In every patent suit there is at least one party that has a claim to innovation - the one with the patent. Sometimes the other side has patents and cross sues. Sometimes they are innovators with no patents. Sometimes they haven't innovated at all but are business guys who saw an opportunity. The idea that patents are a net burden to innovation rests on ignoring the benefits to the patent inventor.

You are right that often times what a person does in software was obvious to others. You can't get a patent on that. Not a problem.

By the way, I personally reject your notion that people in SW are not inventive but merely discover things. Thats a really insulting view to a wide range of incredibly talented developers that I've met.

Finally, rest comfortably, your perverse situation has not happened and is barred by law. People cannot patent aspects of nature nor objects awaiting discovery.

Luke Shorts
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Bill, you are right that they are simple continuations so priority should not be an issue; the patent actually includes a terminal disclaimer adjusting its term.

As for the last feature of the claim, I have cited it verbatim precisely because I know that it is the wording of the claim that defines the scope of protection and consequently infringement... what I meant by my "broad characterization" is that I cannot possibly imagine how could this feature be considered non-obvious, in view of the fact that character data is (as usual in MMO practice) stored in a database - which have the built-in capacity of counting the number of occurrences of a certain field value in their records - and the fact that it was and it is common practice in the field of MMOs to track user choices.

That being said, it is hard to shake the feeling that prosecution was not done properly when you see that the best documents cited by the USPTO against the patent were a document relating to generating helper characters for ATM's or the like and a Tamagotchi-like electronic device...

bill mangione-smith
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The PTO starts by looking at the data base of patents. Software developers almost never do that (what, less than 1% maybe?) and often don't file patent. Its a funny approach and problematic I agree. There is hope that the new pre-issue reviews will help with this - I'm doubtful - who wants to scour that body of patents to find something that *might* be a problem then find the art? That will happen at early on in the life of the law, and for notorious inventors or trolls, and then rapidly decline.

Amir Barak
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I think someone should patent a "method or system of accruing funds by usage of legal manipulation and presenting them with lawyer-based communication". Then sue the hell out of patent trolls...

Matt Heaton
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Actually Halliburton already was able to get a patent on patent trolling ;)

http://www.google.com/patents/US20080270152

bill mangione-smith
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And they still got it "wrong" - those claims don't cover most patent trolls. :)

Matt Heaton
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I'm aware of at least half a dozen small MMO developers who have received these threats. I can only imagine the true number is many times that. The problem is that despite the obvious invalidness of the patent, it hard for a small company to fight back individually so they often roll over and just pay the license or settlement. This gives the troll more ammunition to go after others.

It's truly disgusting what they are trying to do, it's not much different than mafia protection rackets.

bill mangione-smith
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If only I had a dollar for every time I've heard the "obvious invalidness" argument. If that is the case then you will win easily in court and get the other side sanction for violating rule 11.
For example consider the claim "22. The method of claim 21 wherein said associating information is selected from the group consisting of: a user-assigned name for said character, a password, an IP Address, a name, an address, an email address, a zip code, information on said user's device, and combinations thereof."

I don't think that was clearly obvious in 2000. Why would anybody combine a password with an IP address for example?

Mike Weldon
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" If that is the case then you will win easily in court"

Irrelevant. You have to pay your lawyer either way. It doesn't matter if you have an easy case or not. Both sides lose when it goes to court, and only the guy who can afford the legal fees has any chance of winning in a settlement. This is why it is extortion and should be illegal.

bill mangione-smith
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Not true. If you violate rule 11 by bringing a case that is so obviously invalid you often end up paying the other guys costs.

Trolls don't extort with obviously invalid patents - they extort with invalid ones that take a little bit of work. Sure they may lose but they will be in the game - with an obviously invalid patent you don't even really get into the game - just wrack up bills.

Luke Shorts
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From a moral standpoint, extorting with a patent not so egregiously invalid that you can avoid fee shifting does not appear much better than extorting with an "obviously invalid" one where you risk a Rule 11 sanction.

Furthermore, given current US practice, you get a Rule 11 violation only in the most outlandish cases, even when other indicators of "trollish behavior" are present; even Chief Judge Rader of the CAFC has gone on record encouraging judges to apply those provisions more rigorously:

http://www.nytimes.com/2013/06/05/opinion/make-patent-trolls-pay-
in-court.html?_r=0

Rule 11 is anything but a panacea; it is just part of a number of features of the US legal system that make it an ideal hunting ground for trolls...

bill mangione-smith
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Luke - I can't disagree with you about the difficulty there. I was stating that in response to the notion that a patent would be "obviously invalid", assuming Matt meant obvious in the ordinary sense and not in the legal sense. If a case fit *that* description then it would probably have a much better chance at bringing sanctions. My point was to push back against the very common notion that most of the cases like this clearly have no merit in a manner that can be quickly and cheaply determined. In my experience that is very rarely the case. You may get a letter from somebody but they rarely file. That being said quite a few stinkers are not so low as to meet that bar.

I wasn't making an argument that one approach was more moral than the other - simply that the characterizations that people often make after very quick review (like reading the title or abstract) rarely match the facts.

Marvin Papin
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I should patent about the use of the letter "e".

Michael Joseph
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In the case of software at least, patents do not encourage innovation. And that's ostensibly what patents are supposed to be about. Software patents discourage innovation. So what are they really for? They're weapons wielded by business warlords. In an honest system these tools would have been revoked decades ago.

I think vast majority of software engineers (the people who are the most informed on this issue) are against software patents.

What does it say if this is true but change remains impossible?

bill mangione-smith
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Patents certainly do encourage innovation in software all the time. I know many inventors, individuals, startups, and in big companies, who will vehemently disagree with you.

The vast majority of software engineers do not understand patents or business - why should they its not their job? So why should their thoughts on the value of things they don't understand matter at all?

Change is always possible. There are serious efforts underway to define what should be considered a "software patent" and rule them non patentable material. And there is a lot of money behind that because the big guys get hit for much bigger damages than the small guys. Big software companies are willing to play the game as the rules are today but really they want protection to go back to the old days when they could just adopt somebody else's idea with no need to pay them for it.

Mike Weldon
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The vast majority of lawyers do not understand software development or the process of discovery so why should their thoughts on the value of patents matter at all?

See I can play that game too.

bill mangione-smith
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Nobody does that. Lawyers are not asked what the value of a patent is or if it is innovative. That is not their role specifically because they have no relevant expertise. Unless they own the patent and are not acting in the role of a lawyer.

You can play that game but can you win it?

Gregory Booth
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Patent rexamination!

Small developers sometimes don't have the resources to pursue a defense in court, perhaps if we keep an eye out for filings we can challenge them (some trade org?) before these trolls gain traction.

http://www.finnegan.com/resources/articles/articlesdetail.aspx?ne
ws=5285ec90-9523-4acd-84b1-6f6e6a1eb2ec

http://www.fr.com/post-grant-webinar-series/

http://ipspotlight.com/2012/01/09/uspto-proposes-rules-for-challe
nging-patents-prior-to-issuance-and-post-grant/

We can all whine about patent trolls but unless patents like this are challenged at the source it will continue.


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