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>Nintendo Settles Wii Remote Claims; "Rock Band" Defendants File to Advance Proceedings

>The end of October brought a flurry of legal activity relevant to two of the more notable segments of the current generation of video game technology: Nintendo has finally settled out of a U.S. International Trade Commission investigation concerning its Wii Remote, and the game developers and retailers that were sued by Gibson Guitar Corporation over the popular Guitar Hero and Rock Band games have made a move to dispose of Gibson’s remaining infringement claims.

On October 5, the administrative law judge presiding over the ITC’s investigation of the Wii Remote issued an initial determination (ITC court ruling), later upheld by the Commission, that the settlement reached by Nintendo and Hillcrest Laboratories Inc. satisfactorily disposed of the dispute between the parties. Hillcrest, a developer of home entertainment technologies, claimed that the operation of Nintendo’s Wii Remote in combination with the Wii video game console infringed a collection of Hillcrest patents dealing with television-based menu interaction systems and their interactions with a handheld pointing device that is responsive to movement in three-dimensional space. The request for an ITC investigation was filed by Hillcrest in August 2008 in an attempt to block the importation and sale of the Wii Remote in the United States.

While it is known that, under the terms of the settlement, Nintendo avoids admitting any liability for any of Hillcrest’s claims, the parties have not yet come to an agreement regarding the content of the redacted version of the settlement agreement, which will ultimately be available for public review through the ITC’s online document retrieval service, located here.

Meanwhile, Viacom International Inc., Wal-Mart Stores Inc. and the rest of the defendants in Gibson’s Guitar Corp’s Tennesee patent infringement lawsuit have asked the judge in that suit to lift a stay and allow summary judgment proceedings to commence.

For those who would benefit from a short-course review of the somewhat-convoluted Gibson saga: Following the successful releases of Guitar Hero (developed by RedOctane; distributed by Activision Blizzard) in 2006 and Rock Band (developed by Harmonix Music Systems; distributed by Electronic Arts) in 2007, Gibson contacted Activision and Electronic Arts to negotiate licenses under Gibson’s U.S. Pat. No. 5,990,405, which describes a “simulated musical concert experience.”

When all offers to license the ‘405 patent were rebuffed, Gibson began preparing to file suit in its home state of Tennessee against distributors of Guitar Hero. Activision responded in March 2008 by filing a preemptive declaratory action in California, seeking a ruling that Guitar Hero did not infringe the ‘405 patent. Less than a week later, Gibson filed suit in Tennessee, naming as defendants such retail giants as Wal-Mart, Target Corporation, Kmart Corporation and Amazon.com.

Three days after filing against the Guitar Hero retailers, Gibson filed a separate Tennessee suit (since consolidated with the Guitar Hero action) – this one also including Rock Band developer Harmonix, parent company Viacom International Inc. and distributor Electronic Arts – alleging that Rock Band also infringes the ‘405 patent.

In May 2008, the U.S. Patent and Trademark Office (USPTO) granted the Rock Band defendants’ request for reexamination of the claims contained in the ‘405 patent. Meanwhile, in August 2008, the Tennessee court imposed stays on all claims in that case, citing the need to await the outcomes of the reexamination proceedings (pertaining to the Rock Band suit) and Activision’s previously filed California action (pertaining toGuitar Hero).

On February 26, 2009, Activision’s motion for summary judgment of noninfringement in the California action was granted, resulting in an agreement between Activision and Gibson to dismiss all remaining claims in that suit and all Guitar Hero-related claims in the Tennessee suit.

Gibson’s remaining Rock Band infringement claims also took a hit on March 29 when the USPTO rejected a significant number of the claims contained in the ‘405 patent. Gibson responded by amending the claims to include “a musical instrument adapted for (a) making musical sounds and (b) generating/producing an instrument audio signal representative of the musical sounds.”

On October 16, the defendants in the Tennessee suit filed a motion to lift the stay on Gibson’s remaining Rock Band claims so that the court can consider the defendants’ motion for summary judgment of noninfringement. Harmonix, Electronic Arts, Wal-Mart and company contend that the noninfringement ruling of the California court gives rise to a collateral estoppel issue (preventing relitigation of an already disposed-of matter), as those parties claim that there is no relevant difference between Guitar Hero and Rock Band (with respect to the subject matter of the ‘405 patent). The defendants also claim that Gibson’s amendments to the claims of the ‘405 patent have only served to further differentiate the subject matter of that patent from the concepts that drive Rock Band, since it is indisputable that Rock Band does not actually feature a “musical instrument.”

Gibson’s response to the motion to lift the stay was expected sometime this week; however, on November 4 the company received an extension from the court. Gibson has not yet released a statement concerning its prospects with respect to the remaining infringement claims, but for now it appears that the only serious threat (to date) to the stream of music-based games has been squelched.

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November 2009