Patent for game-related invention

We would like to introduce to you a court ruling that admitted indirect infringement of a patent related to a game machine and a game program. It is very useful to understand indirect infringement in the computer software related field.

Provision on indirect infringement in Japan
(Patent Act, Article 101, each paragraph)

Infringement of a patent right indicates, as a general rule, acts of working an entire content (all the constituent elements) of a patented invention without the permission of a patentee, and the working of only part of the patented invention is not deemed to constitute infringement of a patent right. However, if this rule is followed too strictly, acts that are not the working of an entire content of a patented invention but are likely to induce infringement of a patent right may be overlooked. This can lead to undesired results in terms of the patent protection. To address it, the Patent Act prescribes that preliminary acts directly linking to infringement are deemed to constitute infringement as indirect infringement (Patent Act, Article 101, each paragraph). In particular, Article 101, paragraphs (i) and (iv) prescribe acts of producing, etc., exclusive products by a third party are deemed to be acts of infringement.

Article 101: The following acts shall be deemed to constitute infringement of a patent right or an exclusive license:

(i) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business;

(iv) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the use of the said process as a business;

Introduction to court ruling 2018 (Ne) 10006

(1) Overview

Appellant (Plaintiff in Prior Instance) is a patentee of the invention entitled “system operating method” (Japanese Patent No. 3350773, hereinafter referred to as “Present Patent”).

The following is the invention according to claim 1 of Present Patent (hereinafter referred to as “Present Invention”).

(※ By following Judgement, alphabetic letters below indicate the respective constituent features.)

[Claim 1]

A A method for operating a game system by loading a storage medium (excluding a storage medium capable of storing saved data) that stores a game program and/or data and is replaceable during operation of a predetermined game device in the game device,

E. the method for operating a game system is characterized in that

B. as the storage medium, at least

B-1. a first storage medium containing a predetermined game program and/or data and a predetermined key, and

B-2. a second storage medium containing, in addition to a predetermined standard game program and/or data, a predetermined extended game program and/or data are prepared,

C. the extended game program and/or data is a game program and/or data to achieve, in addition to the standard game program and/or data, more game characters and/or enriched functions of the game characters and/or expansion of scenes and/or enriched sound, and

D. in loading the second storage medium in the game device,

D-1. if the predetermined key is read by the game device, the game device is operated with both the standard game program and/or data and the extended game program and/or data, or

D-2. if the predetermined key is not read by the game device, the game device is operated with only the standard game program and/or data.

The present case is a case in which Appellant claimed that Product A (an allegedly infringing product) manufactured and sold by Appellee falls under indirect infringement of Present Patent, and demanded payment of damages from Appellee (Defendant in Prior Instance) based on this infringement.

Product A herein refers to a total of 40 game software for PlayStation 2 (these game software corresponding to a second storage medium of Present Invention), most of which relate to the Samurai Warriors series or the Dynasty Warriors 2 series sold by Appellee. Separated from Product A, there is a first game software in the Samurai Warriors series and the Dynasty Warriors 2 series (the first game software corresponding to a first storage medium of Present Invention). Product A is a sequel to the first game software.

Although Product A can be played independently, Product A is characterized by having “MIXJOY” feature that enables users to play the further extended game contents in combination with the first game software.

The issue of the present case was whether or not acts of manufacturing, etc. Product A that can be played independently as well is to be found indirect infringement.

(2) Judgement of Court

The court found establishment of indirect infringement on the ground that “Product A (Note that, “Product A” herein actually indicates part of Product A, but simply described “Product A” for the understanding of key points) is game software to operate a game system by being loaded in game devices …and have, under the social standards, except for the above use of being loaded and used in the game devices, no other economical, commercial, or practical uses, so that Product A is found to be an article whose only use is in the method of Present Invention”.

Appellee alleged that “ ‘a first storage medium… and a second storage medium… are prepared…’ of Present Invention means that each of the storage media is prepared so as to be loaded in the game device by a person working the invention, a user who has only Product A without having a disk of the first game software cannot select MIXJOY and therefore does not work the method of Present Invention and Product A includes a game program with contents being sufficiently enjoyable independently so that Product A has, under the social standards, other economical, commercial, or practical purposes and are not an article whose only use is in the method of Present Invention”. However, the court rejected the Appellee’s allegation on the ground that a form of game playing, in which Product A is played independently, also belongs to the technical scope of Present Invention as described below.

Meanwhile, with regard to “a first storage medium … and a second storage medium … are prepared,” the scope of claims (Claim 1) of Present Invention does not provide description serving as a basis for interpretation such that a subject who “prepares” is a person working the invention (i.e., user who plays the game) and the term “prepare” refers to preparing each of the storage media so as to be loaded in the game device or more specifically means that “in loading the second storage medium in the game device” a person working the invention has the first storage medium. (…)

According to claims (Claim 1) of Present Invention and the description in Specification as stated above, it is understood that “a first storage medium … and a second storage medium … are prepared” of Present Invention means a situation where the first storage medium and the second storage medium can be provided by game software manufacturers and can be obtained by users, and does not mean that the user actually has each of the storage media. Then, due to the same reason, it is not understood that possession of the first storage medium by a person working the invention is necessary “in loading the second storage medium in the game device.”

Hence, the fact that a user who has Product A, etc. but does not have a key disc does not affect the decision to the effect that Product A, etc. are an article whose only use is in the method of Present Invention.

(3) Our Comments

We now organize main points of the present case. The court judged that “preparing” the first and second storage mediums is one of constituent elements of Present Invention, and thus a situation where a user can purchase (possess) only the second storage medium to play the game also belongs to the technical scope of Present Invention. The reason is that the term “prepare” recited in the claim of Present Patent was interpreted as follows:

· It does not require that users actually possess the first and second storage mediums; and

· A situation where the first and second storage mediums provided (manufactured and sold) by game software manufactures are always available to users corresponds to a “prepared” situation.

In Japan, patent infringement issues similar to the present case have been often disputed in the game industry. Our firm would like to continuously watch developments of such issues.

Our firm has abundant experience and achievements in infringement cases. If you have any questions or concerns, please feel free to contact us for the consultation. We will do the best to assist you.

Edited by Hiroko Iwatsuki

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