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We filed our own comment with the USPTO regarding their attempt to weaken the important inter partes review (IPR) process that has been hugely helpful in getting rid of bad patents. Over at EFF, Joe Mullin wrote up an analysis of some of the comments to the USPTO, which we’re running here as well.
A massive wave of public comments just told the U.S. Patent and Trademark Office (USPTO): don’t shut the public out of patent review.
EFF submitted its own formal comment opposing the USPTO’s proposed rules, and more than 4,000 supporters added their voices—an extraordinary response for a technical, fast-moving rulemaking. We comprised more than one-third of the 11,442 comments submitted. The message is unmistakable: the public wants a meaningful way to challenge bad patents, and the USPTO should not take that away.
These thousands of submissions do more than express frustration. They demonstrate overwhelming public interest in preserving inter partes review (IPR), and undermine any broad claim that the USPTO’s proposal reflects public sentiment.
Comments opposing the rulemaking include many small business owners who have been wrongly accused of patent infringement, by both patent trolls and patent-abusing competitors. They also include computer science experts, law professors, and everyday technology users who are simply tired of patent extortion—abusive assertions of low-quality patents—and the harm it inflicts on their work, their lives, and the broader U.S. economy.
The USPTO exists to serve the public. The volume and clarity of this response make that expectation impossible to ignore.
In our filing, we explained that the proposed rules would make it significantly harder for the public to challenge weak patents. That undercuts the very purpose of IPR. The proposed rules would pressure defendants to give up core legal defenses, allow early or incomplete decisions to block all future challenges, and create new opportunities for patent owners to game timing and shut down PTAB review entirely.
Congress created IPR to allow the Patent Office to correct its own mistakes in a fair, fast, expert forum. These changes would take the system backward.
A wide range of groups told the USPTO the same thing: don’t cut off access to IPR.
Open Source and Developer Communities
The Linux Foundation submitted comments and warned that the proposed rules “would effectively remove IPRs as a viable mechanism for challenges to patent validity,” harming open-source developers and the users that rely on them. Github wrote that the USPTO proposal would increase “litigation risk and costs for developers, startups, and open source projects.” And dozens of individual software developers described how bad patents have burdened their work.
Patent Law Scholars
A group of 22 patent law professors from universities across the country said the proposed rule changes “would violate the law, increase the cost of innovation, and harm the quality of patents.”
Patient Advocates
Patients for Affordable Drugs warned in their filing that IPR is critical for invalidating wrongly granted pharmaceutical patents. When such patents are invalidated, studies have shown “cardiovascular medications have fallen 97% in price, cancer drugs dropping 80-98%, and treatments for opioid addiction becom[e] 50% more affordable.” In addition, “these cases involved patents that had evaded meaningful scrutiny in district court.”
Small Businesses
Hundreds of small businesses weighed in with a consistent message: these proposed rules would hit them hardest. Owners and engineers described being targeted with vague or overbroad patents they cannot afford to litigate in court, explaining that IPR is often the only realistic way for a small firm to defend itself. The proposed rules would leave them with an impossible choice—pay a patent troll, or spend money they don’t have fighting in federal court.
The USPTO now has thousands of comments to review. It should listen. Public participation must be more than a box-checking exercise. It is central to how administrative rulemaking is supposed to work.
Congress created IPR so the public could help correct bad patents without spending millions of dollars in federal court. People across technical, academic, and patient-advocacy communities just reminded the agency why that matters.
We hope the USPTO reconsiders these proposed rules. Whatever happens, EFF will remain engaged and continue fighting to preserve the public’s ability to challenge bad patents.
Republished from the EFF’s Deeplinks blog.
Filed Under: ipr, patent trolls, patents, uspto
Last week I wrote about how the US Patent and Trademark Office is pushing a rule change that would effectively neuter the inter partes review (IPR) system that reviews already granted patents to make sure they weren’t granted by mistake. Patent tolls and other abusers of the patent system have been screaming about this system ever since it started actually helping stop the flood of patent trolling over the last decade and a half. They’ve now convinced the USPTO to change the rules without congressional approval.
The comment period for the USPTO to consider this change closes today, so I wanted to share the comment that I submitted to the proceedings (the full PDF has footnotes, which I’m not bothering to repost here):
The Copia Institute is the think tank arm of Floor64, Inc., the privately-held California small business behind Techdirt.com. As a think tank the Copia Institute produces evidence-driven articles and papers as well as other forms of expressive output such as podcasts and games that examine the nuances and assumptions underpinning technology policy. Armed with its insights it then regularly submits advocacy instruments such as amicus briefs and regulatory comments, such as this one.
We write to oppose the US Patent & Trademark Office’s proposed rule changes for inter partes review (IPR) found in Docket No. PTO-P-2025-0025. We oppose the rule changes for three broad reasons:
Both James Madison and Thomas Jefferson spoke out frequently against the very idea of monopolies, including patents. And when it came time to draft the intellectual property clause of the Constitution, there was a discussion between the two founders. Jefferson apparently worried about Madison’s decision to include patent monopolies in the Constitution, writing to him in 1788:
[I]t is better to … abolish … Monopolies, in all cases, than not to do it in any …. The saying there shall be no monopolies lessens the incitements to ingenuity, which is spurred on by the hope of a monopoly for a limited time, as of 14 years; but the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression.
Madison responded, agreeing that such things are “among the greatest nuisances in government,” but convinced Jefferson that they should not be “wholly renounced” so long as they were very limited and had safety valves to protect against their abuse.
The IPR system is just such a safety valve, allowing anyone to make sure that patents that have been granted truly deserve to be. Years later, Madison summed up his thoughts on patents by saying:
Monopolies though in certain cases useful ought to be granted with caution, and guarded with strictness against abuse.
Once again, the IPR system is just such a system that helps guard against abuse.
As both Jefferson and Madison recognized, government-granted monopolies are prone to abuse without strict systems to guard against abuse. As the US learned in the late 90s and early 2000s, our patent system was being widely abused by non-practicing entities, often single lawyers who would buy up useless, overly broad patents that never should have been granted, and demanding large sums of money from companies who were actually innovating, and actually building successful products.
Congress recognized this problem and how the system of government granted monopolies must be “guarded with strictness against abuse” and created the current IPR system with the America Invents Act in 2011, creating the IPR process.
The concept is simple and straightforward. Patent examiners are already overworked, and there is evidence that mistakenly granted patents make it through our system. No system is perfect. So to make sure that patents are valid, Congress, in its wisdom created a process that enabled those who came across an improperly granted patent to challenge it, and a process to review that patent to make sure it should have been granted.
If the patents are valid, then the IPR process reinforces that, strengthening the quality of the patent. If the patent is invalid, then the IPR process does what Madison believed necessary: strictly guarding the system against abuse.
Over and over again, the IPR system has successfully guarded American innovators against the abuse of government granted monopolies. Over and over again, patents that were mistakenly granted, which Jefferson and Madison warned would limit innovation, have been successfully challenged, and invalidated, protecting actual innovators from having their work halted by a lawyer holding a bad patent.
A bad patent that was used to claim that all podcasting was infringing was thankfully invalidated via the IPR process. Prior to that, many of the top podcasters were sued or threatened, and some even considered stopping their podcasts. Today, we’ve seen that podcasts are an essential part of our media ecosystem. They were not actually invented by the patent holder. Indeed, prior art was found that showed the claims in the patent (which was about audio cassettes, not podcasting) was predated in practice by others.
That patent never should have been granted, and actual innovators in the podcasting space were spared thanks to the IPR process.
And this is not a rare result. In the first decade, patents reviewed by the PTAB using IPR resulted in approximately 40% of the patents challenged being ruled invalid. In other words, when the USPTO had a chance to look closely at those patents, and related prior art, in many cases, they realized that the patent never should have been granted in the first place, and then corrected that mistake.
The IPR process works. It fulfills the important function that Madison insisted any patent system needed: to zealously guard against abuse of those monopoly grants.
Finally, it is important to note that this move by the Patent Office exceeds its authority. Just last year the Supreme Court made clear in Loper Bright v. Raimondo that agencies cannot reinterpret statutes to reach outcomes Congress did not authorize. The America Invents Act created IPR with specific parameters. The proposed rules would fundamentally alter that system—limiting when IPR can be used, forcing petitioners to forfeit other legal rights, and making patents effectively unchallengeable after a single review—changes that go far beyond the USPTO’s role in implementing the statute Congress actually passed.
If the USPTO believes the IPR system needs this kind of overhaul, the proper path is to ask Congress to amend the law. There have been multiple bills proposed in Congress to restrict IPR, and none has passed. Congress has repeatedly declined to make these changes through legislation. The USPTO cannot accomplish through rulemaking what Congress has refused to do through law.
This alone should end the discussion. The agency is attempting to rewrite a statutory framework that Congress deliberately chose not to change, despite years of lobbying pressure to do so. That is precisely the kind of administrative overreach that Loper Bright was meant to prevent.
Both Thomas Jefferson and James Madison worried about a patent system that would be subject to abuses. Madison felt that the system must be guarded carefully against such abuses. After seeing the harm those abuses created, Congress wisely established the IPR process, which has worked well for over a decade.
It would be a massive mistake to reject that, and return us to a world in which the IPR process was limited, and abuse of the patent system against actual innovators was rampant.
Please reject this proposed rule change in order to protect innovation.
Filed Under: inter partes review, ipr, patent trolls, patents, uspto
Imagine a leading American technology firm, the engine of thousands of jobs and critical innovation, besieged by a patent lawsuit. Typical enough, but this time there is a twist: The plaintiff is a shell company with no assets and no products, yet it litigates with the inexhaustible resources of a global superpower. The American company is forced to spend millions on defense, all while fighting in the dark, unaware that the true adversary funding the assault is a sovereign wealth fund controlled by a geopolitical rival.
This is not a hypothetical scenario. It is the reality of third-party litigation funding. This secretive, multi-billion-dollar industry has turned our courtrooms into a speculative asset class. Litigation funding allows outside investors—hedge funds, private equity firms, and even foreign governments—to secretly purchase a financial stake in a lawsuit in exchange for a portion of any award or settlement. The current lack of mandatory disclosure for these arrangements in U.S. federal courts has created a dangerous blind spot. It allows foreign adversaries to weaponize our own justice system against us, posing a direct threat to American technological leadership and national security. Principled, targeted transparency is not merely a procedural nicety; it is a national imperative.
The litigation funding market has grown exponentially, from a niche practice to an industry with major funders managing over $15 billion in U.S. litigation assets. This rise in speculative capital fundamentally alters the dynamics of justice. With no uniform federal rule requiring disclosure, the decision to unmask a funder is left to the discretion of individual judges, creating an inconsistent and easily exploited patchwork of local rules.
This secrecy infects the legal process. Settlement negotiations, traditionally a two-party affair, are distorted by the presence of a hidden, typically profit-motivated stakeholder whose sole objective is maximizing return on investment. Many litigation funding contracts contain “waterfall” clauses that require the funder to be repaid its investment, often with a multiple of two or three times, before the plaintiff receives a single dollar. This structure creates a powerful incentive to reject reasonable settlement offers that would satisfy the actual parties but fail to meet the funder’s high-return threshold. The case of food distributor Sysco, which alleged in court that its funder, Burford Capital, blocked reasonable settlements in a $140 million-plus funding deal, is a stark illustration of funders controlling litigation to protect their investment.
The discovery process, a cornerstone of American civil procedure, is similarly weaponized. When the funder is a secret competitor or a foreign state, discovery becomes a backdoor for corporate espionage. An adversary can fund a lawsuit against a U.S. tech or defense firm specifically to gain legal access to trade secrets, proprietary technology, and sensitive business plans. The defendant is left with an impossible choice: hand over confidential data to an unknown enemy or pay a nuisance settlement to make the case disappear.
This problem is particularly acute in patent litigation. The Government Accountability Office reports that most large technology companies believe over half the patent infringement suits they face are backed by third-party litigation funders, often involving weak claims. These lawsuits, frequently brought by “patent trolls”—entities that produce nothing but exist only to sue innovators—act as a tax on American ingenuity, forcing companies to divert capital from R&D to legal defense costs.
The most alarming threat is the use of TPLF by foreign adversaries as a tool of asymmetric warfare. A sovereign wealth fund can finance harassing litigation to drain a U.S. competitor’s resources, damage its reputation, and stifle its innovation pipeline—achieving a strategic victory even if the lawsuit ultimately fails.
The potential for foreign interference is high. More than half of new U.S. patents granted in 2024—approximately 180,000—went to foreign companies, with China taking a large share. Thousands of those patents went to entities that are controlled by the Chinese Communist Party and do not operate within the United States.
These foreign-owned patents empower companies controlled by or working at the behest of foreign governments, to sue companies operating in this country. Such lawsuits, covering thousands of patents, can drain resources, distract strategy, and derail research and development for the innovative American companies targeted by the litigation, and under the current rules, the foreign countries can execute this strategy without disclosing who is funding the litigation. The United States is essentially giving foreign governments a ticket to steal U.S. trade secrets under a cloak of anonymity.
This threat is now a documented reality. A Bloomberg investigation revealed that a subsidiary of a Russian conglomerate with ties to Vladimir Putin has funded lawsuits in the U.S. while its founders were under international sanctions. In another case, only revealed due to a Delaware judge’s standing order, a Chinese litigation funder was found to be financing intellectual property lawsuits against Samsung in U.S. courts. And Fortress Investment Group, a major litigation funder now majority-owned by an Abu Dhabi sovereign wealth fund, has financed aggressive patent suits against American tech giants like Intel.
Congress is now considering several proposals to bring this shadow industry into the light. The solutions reflect different diagnoses of the core problem. Rep. Darrell Issa’s Litigation Transparency Act (H.R. 1109) offers a straightforward, comprehensive solution: require disclosure of the funder and the funding agreement in all federal civil cases. Rep. Ben Cline’s Protecting Our Courts from Foreign Manipulation Act (H.R. 2675) is more proscriptive, requiring disclosure of foreign funders while outright banning foreign governments and sovereign wealth funds from investing in U.S. litigation. A third bill by Sen. Thom Tillis, the Tackling Predatory Litigation Funding Act (S. 1821), uses the tax code to disincentivize litigation funding by imposing a steep tax on funders’ profits, eliminating a loophole that allows some foreign investors to pay no U.S. tax on their gains.
The primary criticism of broad disclosure, embodied by the Issa bill, is that it could have a chilling effect on funding for legitimate civil rights or public interest lawsuits. Funders may be unwilling to support controversial causes if their identity is exposed to public backlash. This concern may create unusual political alliances, as both progressive and conservative groups rely on strategic litigation to advance their agendas and may fear the effects of transparency on their donors.
The political reality of these concerns was on full display during a House Judiciary Committee markup just this week. While Rep. Cline’s targeted measure to block foreign adversaries, H.R. 2675, was reported favorably, Rep. Issa’s broader transparency bill, H.R. 1109, failed to reach a vote following strong opposition from a coalition of conservative organizations. In a letter to congressional leadership, some conservative groups argued that the “sweeping disclosure mandates” in H.R. 1109 would violate donor privacy and chill free speech by exposing supporters of sensitive causes to harassment. While acknowledging the urgent need to stop foreign manipulation of the courts, these critics argued for a narrower legislative approach that protects national security without compromising the confidential associations of American citizens.
Transparency in patent litigation raises none of these concerns. The patent is not a civil right, but a grant of a franchise, and its effects are entirely economic. The civil rights interests that surround who funds advocacy around a legislative or issue campaign are absent. On the other side of the ledger, there is no legitimate interest to protect the ability of foreign adversaries to covertly interfere in American business and innovation. Semiconductor companies should know who is behind invasive discovery requests into sensitive advanced manufacturing technology, generative AI developers should know who is attacking and dissecting the inner workings of their AI models, and retailers should know who is using weak patents to disrupt, for example, basic online sales technology like the use of online shopping carts. The stakes in such cases are focused on the parties, technology, and discovery requested—defendants have a right to know who is suing them.
Despite these complexities, something needs to change. Defendants have a right to know the identity of their true adversary. More urgently, the stakes of allowing foreign governments to secretly manipulate our courts are simply too high. American leadership in generative AI and advanced manufacturing can be disrupted and undermined through abusive litigation—we need to know who is behind such lawsuits. The national security threat is not speculative; it is happening now.
We can target the most egregious threats with a bipartisan solution. An approach that focuses on transparency in high-risk commercial litigation and blocking foreign-state interference is desperately needed. The favorable committee vote on Rep. Cline’s bill is encouraging—continued support for H.R. 2675 as it moves forward is key—but the opposition to a disclosure requirement in Rep. Issa’s bill is misguided. Even if a carve-out is needed for non-profit, mission-driven litigation, we must act to secure our courts from foreign manipulation and protect the intellectual property that fuels our economy. This is not a partisan issue. Secret misuse of American courts must end.
Nathanael Andrews is Senior Associate Counsel for the Software & Information Industry Association
Filed Under: litigation finance, patent trolls, patents, transparency
The US Patent Office is about to gut the only effective tool we have for killing bad patents—and they’re doing it by administrative fiat, without Congress, in a way that would make patent trolling easier than it’s been in over a decade. They need to hear from you by Tuesday, December 2nd, or this may become reality.
Patent trolling was really holding back all sorts of innovation in the 2000s. As soon as any company started to become successful, trolls would come out of the wood work, holding terrible, vague, highly questionable patents, and demand a payoff. In 2011, Congress finally gave us the America Invents Act, which created inter partes review (IPR)—a process that lets anyone challenge a granted patent at the USPTO and ask them to review whether it should have been approved in the first place.
IPR was necessary because patent examination is fundamentally broken. It’s not adversarial, examiners have limited time and resources to investigate prior art, and applicants can keep resubmitting until someone approves their application. Patent examiners were even being dinged for taking too long reviewing patents, which created perverse incentives to just rubber-stamp applications to clear the queue. The result: a shit-ton of bad patents that never should have been granted.
The IPR process finally began to move the patent landscape back in the right direction, allowing anyone to kick off a review of a patent to see if it had been improperly granted. If it was validly granted, then the IPR process would prove that, in effect strengthening the patent. But if the patent was nonsense, then the IPR process could invalidate it. And it’s done that for a bunch of terrible patents that never should have been granted.
Patent trolls have hated IPR from day one, and they’ve fought it relentlessly. They challenged the process all the way to the Supreme Court—and they lost. Then they tried again. And they lost again. Losing twice at SCOTUS would stop most campaigns, but the troll lobby just pivoted: for years they’ve been pressuring Congress to change the law and kill IPR outright.
Having failed in court and Congress, the troll lobby is now getting the Patent Office to do their dirty work through administrative rulemaking. This started two years ago under Biden, but patent trolling is bipartisan and the Trump USPTO is pushing the same approach. They can’t eliminate IPR without Congress, so instead they’re proposing rules that would make it functionally useless.
Here’s what they want to do, and why each piece is bonkers:
First, IPR would only be available if the patent isn’t being litigated. Which means all a troll needs to do to block IPR is… file a lawsuit. You’ve just created a massive incentive for more patent troll litigation. The cheaper, faster administrative process gets shut down the moment the troll decides to sue someone—which is exactly what trolls do.
Second, if you file an IPR, you forfeit your right to challenge that patent in court later. Think about the game theory here: a troll threatens to sue you. You try to use IPR to kill the bad patent. But now, if the troll decides to sue you, you’ve permanently given up your ability to challenge the patent as part of your defense! The troll has everything to gain and nothing to lose by forcing you into this choice. Again, more incentive to sue.
Third, if anyone challenges a patent in any process and it survives, no one can ever challenge it again. Ever. New prior art surfaces five years later proving the patent is garbage? Too bad. Someone else has better evidence? Doesn’t matter. One shot, that’s it. This effectively gives bad patents a shield of invincibility after a single successful defense.
There’s a (it ends Tuesday, December 2nd—the form says November 17th but it’s been extended), and the USPTO needs to hear why these rules are insane.
Your comment doesn’t need to be long or use fancy legal language. Just explain why you think it’s a bad idea to create rules that give patent trolls more incentive to sue, or that force defendants to forfeit their legal rights, or that make bad patents unable to be challenged forever. As , the important thing is that actual users and creators—not just lawyers and lobbyists—show up in the record.
EFF provides a sample comment if you want a starting point:
I oppose the USPTO’s proposed rule changes for inter partes review (IPR), Docket No. PTO-P-2025-0025. The IPR process must remain open and fair. Patent challenges should be decided on their merits, not shut out because of legal activity elsewhere. These rules would make it nearly impossible for the public to challenge bad patents, and that will harm innovation and everyday technology users.
But honestly, you can make it even more specific. Pick one of the three perverse incentives above and explain why it’s backwards. Or talk about what happened before IPR existed, when trolls were shaking down every successful startup they could find.
IPR has actually worked in killing off genuinely terrible patents, . He tried to shake down all the top podcasters. Without IPR, that patent might still be out there. Or if you use a fitness tracker today, thank the IPR process. It killed off a ridiculous patent that was used by a troll to try to shake down every company in the space.
IPR works. Don’t let the PTO kill it off to appease the troll lobby.
EFF points out how important this is as well:
IPR hasn’t ended patent trolling. But when a troll waves a bogus patent at hundreds or thousands of people, IPR is one of the only tools that can actually fix the underlying problem: the patent itself. It dismantles abusive patent monopolies that never should have existed, saving entire industries from predatory litigation. That’s exactly why patent trolls and their allies have fought so hard to shut it down. They’ve failed to dismantle IPR in or in —and now they’re counting on the USPTO’s own leadership to do it for them.
The USPTO is doing all this without congressional approval. If they really want to rewrite IPR rules, they should ask Congress to conduct a full review and pass a law. Instead, the PTO is trying to rewrite the laws through administrative fiat, betting that no one will notice or care enough to stop them.
They’re wrong. File a comment by December 2nd. Make your voice heard.
Filed Under: inter partes review, ipr, patent trolls, patents, uspto
Well, this is actually pretty fascinating. We’ve been discussing the somewhat bizzare patent lawsuit Nintendo is waging against PocketPair in Japan for some time now. PocketPair is the company behind the hit game Palworld, which has obviously drawn inspiration from the Pokémon franchise, without doing any direct copying. Powering this attack were several held or applied-for patents in Japan that cover some pretty general gameplay elements, most, if not all, of which have plenty of prior art in previous games and/or game mods. Most recently, two things happened on opposite sides of the ocean. In September, the USPTO approved a couple of new, but related patents in a manner that had at least one patent attorney calling it an “embarrassing failure.” Separately, in Japan, a patent that Nintendo applied for, which sits in between two approved patents that are being wielded in the Palworld lawsuit, was rejected for being unoriginal and for which prior art exists. Given how interrelated that patent is with the other approved patents, the same logic would apply to the approved patents, bringing into question whether all of these patents should just be invalidated.
Back on the USPTO side, one of the patents that was approved without proper due diligence was patent #12,403,397 and covers the summoning a “sub character” that will either fight at your command or fight autonomously based on input from the player. Again, prior art abounds in this sort of thing, which is the “embarrassing failure” mentioned earlier.
Well, in what is apparently the first time in a decade, USPTO Director John Squires personally ordered a re-examination of this patent.
John A Squires has personally ordered a re-examination of the patent, citing previous patents which might make it invalid. Specifically, Squires has focused on the patent’s claim to having a sub-character fight alongside you with the option to make them fight either automatically or via manual control. In his order, Squires said he had “determined that substantial new questions of patentability have arisen” based on the publications of two previous patents, named as Yabe and Taura.
The Yabe patent was granted in 2002 to Konami, and refers to a sub-character fighting alongside the player either automatically or manually, while the Taura patent was granted in 2020 to Nintendo itself, and also refers to a sub-character who battles alongside the player.
Yes, one of the previous patents that might invalidate this one is held by Nintendo itself. And I would argue that these gameplay mechanic patents are still far too generic and obvious to those in the industry to be patentable at all. That isn’t Squires’ argument, however. Instead, the original examiner did some true tilting at windmills to pretend like prior art didn’t exist because of minute specifics in this new patent and so never considered the Yabe and Taura patents.
While this doesn’t directly relate to the patent suit in Japan, it’s hard not to see this in the context of the patent rejection in Japan, never mind how the rest of this weird lawsuit is going, and not see that this is a house of cards that is collapsing in on Nintendo.
And, most importantly, I still can’t see how any of this is worth it for Nintendo. Bad publicity, legal costs, time, energy, effort, and for what? Palworld is still a hit and the Pokémon franchise is still strong. What are we doing here?
Filed Under: japan, john squires, patents, pokemon, us, uspto
Companies: nintendo, pocketpair, pokemon company
Nintendo and the Pokémon Company’s lawsuit in Japan against PocketPair, makers of the hit game Palworld, is still ongoing. As we’ve reported previously, this isn’t the copyright or trademark lawsuit that everyone expected when Palworld was first released. Instead, probably knowing that they couldn’t get around the idea/expression dichotomy in copyright, at least, Nintendo filed a patent suit instead. The patents referenced covered several different gameplay mechanics for which there is plenty of prior art in video gaming, such as capturing creatures in a thrown object and transitioning from riding creatures or items in an open world setting. As this was all going on, PocketPair began both patching out some of those gameplay mechanics from Palworld, while also trying to invalidate the patents powering the lawsuit. And, most recently, PocketPair pointed to even more examples of prior art in other games and game mods for the very mechanics Nintendo had managed to patent.
But one key aspect in all of this is that several of the patents featured in this lawsuit are still in the application stage. And now one of those patents, which notably sits in between two other mechanic patents of Nintendo’s, has been rejected as unoriginal.
Nintendo’s ongoing legal campaign against Palworld developer Pocketpair has hit another roadblock. A key patent in Nintendo’s “monster capture” family, one that sits right between two patents, currently being asserted in the Tokyo District Court, has been rejected by the Japan Patent Office (JPO).
The decision cites a lack of inventive step, pointing directly to older games such as ARK, Monster Hunter 4, Craftopia, Kantai Collection, and Pokémon GO itself as examples of prior art.
I cannot read Japanese script, but here is a visual representation of how interrelated these patents are. The one in the red box was the applied for patent that was rejected. The two on either side of the equation are the already granted patents that are being wielded in court against PocketPair.
The newly rejected 2024-031879 application descends from Nintendo’s 2023 filing (JP7505852), which has already been granted and is one of the patents cited in Nintendo’s lawsuit against Pocketpair. Meanwhile, patent 2024-123560 (JP7545191) branches off, another granted patent also being used in court.
That means this isn’t some irrelevant side filing; it’s literally sandwiched between two patents central to the litigation. If the JPO finds that one member of the patent family lacks originality, it raises questions about the others.
As GamesFray notes, this “sibling-parent” structure makes the 2024-031879 rejection potentially significant. The same reasoning (lack of inventive step, obviousness based on prior art) could easily apply to the related patents Nintendo is wielding in court.
As far as the lawsuit is concerned, this could be a big freaking deal. As Windows Central notes, the same logic the JPO used to reject this specific patent can easily be applied to the two granted patents central to the suit. Combine all of that with the prior art used to reject this patent and you have a solid defense in court against patent infringement and, I would say likely, the invalidation of Nintendo’s existing patents.
In this case, the rejection undermines Nintendo’s claim that its patents protect truly original gameplay ideas. When Japan’s own patent authority says otherwise, that argument loses credibility fast.
The ruling also puts pressure on Nintendo’s third patent-in-suit, which, according to previous reports, has already been modified mid-litigation. A sign that Nintendo is getting desperate.
We’ll see if Nintendo attempts to amend these patents or appeal JPO’s decision. I imagine it will, given how desperate it has behaved at pretty much every turn in this lawsuit.
But my larger question for Nintendo is a simple one: is this really worth it? Palworld still exists and I haven’t seen any evidence that the Pokémon franchise is suddenly suffering a loss of revenue or worth. So other than the digging in of heels and refusing to back down, what are we accomplishing here?
Filed Under: japan, originality, palworld, patents, pokemon
Companies: nintendo, pocketpair, pokemon company
As all things old are new again, a bill that would make obtaining bad patents easier and harder to challenge is being considered in the Senate Judiciary Committee. The Patent Eligibility Restoration Act (PERA) would reverse over a decade of progress in fighting patent trolls and making the patent system more balanced.
PERA would overturn long-standing court decisions that have helped keep some of the most problematic patents in check. This includes the Supreme Court’s Alice v. CLS Bank decision, which bars patents on abstract ideas. While Alice has not completely solved the problems of the patent system or patent trolling, it has led to the rejection of hundreds of low-quality software patents and, as a result, has allowed innovation and small businesses to grow.
Thanks to the Alice decision, courts have invalidated a rogue’s gallery of terrible software patents—such as patents on online photo contests, online bingo, upselling, matchmaking, and scavenger hunts. These patents didn’t describe real inventions—they merely applied old ideas to general-purpose computers. But PERA would wipe out the Alice framework and replace it with vague, hollow exceptions, taking us back to an era where patent trolls and large corporate patent-holders aggressively harassed software developers and small companies.
This bill, combined with recent changes that have restricted access to the Patent Trial and Appeal Board (PTAB), would create a perfect storm—giving patent trolls and major corporations with large patent portfolios free rein to squeeze out independent inventors and small businesses.
EFF is proud to join a letter, along with Engine, the Public Interest Patent Law Institute, Public Knowledge, and R Street, to the Senate Judiciary Committee opposing this poorly-timed and concerning bill. We urge the committee to instead focus on restoring the PTAB as the accessible, efficient check on patent quality that Congress intended.
Republished from the EFF’s Deeplinks blog.
Filed Under: alice v. cls bank, bad patents, chuck grassley, dick durbin, patent eligible subject matter, patent trolls, patents, pera, software patents, uspto
The lawsuit between Palworld maker PocketPair and The Pokémon Co. (Nintendo included) is still ongoing. As the litigation progresses, PocketPair has been patching out some of the very content and gameplay mechanics that the Pokémon people complained about, which is unfortunate. The patents we’re talking about are quite broad in the realm of video games and, as I have been pointing out since early on, suffer under the existence of plenty of prior art.
Well, the prior art I mentioned is not the same as the prior art PocketPair brought up in its defense, but its there nonetheless. Going all the way back to April, the company has been pointing out that the things The Pokémon Co. got patents for have existed in gaming long before Nintendo claims to have invented them.
Defending itself against a patent about capture balls (Poke Balls) to capture/fight, Pocketpair points to Rune Factory 5, Titanfall 2, and Pikmin 3 as examples of games where players can release captured monsters “or a capture item (like a ball)” in any direction. Meanwhile, Octopath Traveller, Final Fantasy 14 and a Dark Souls 3 mod show players the chance of a likely capture when trying to tame a beast.
Pocketpair also apparently used Far Cry 5 and Tomb Raider as games that proved “there can be different types of throwable objects,” according to the report. While games such as The Legend of Zelda, Monster Hunter 4, Path of Exile, and Dragon Quest Builders, as well as mods for Minecraft and Fallout 4, were also namedropped.
That seems like quite a trove of examples to point the court to. Unless PocketPair is completely fabricating the similarity of what appears in those games and what is in these patents, it’s hard to imagine The Pokémon Co. coming out on top here. Given the company’s reputation, and Nintendo’s especially, I’m not particularly in the mood to give them the benefit of the doubt.
Especially when the companies also responded recently specifically to the examples that were game mods by saying, “Nuh uh! You can’t use mods as examples of prior art! It’s not fair!”
One of the examples highlighted by Pocketpair was the Dark Souls 3 mod Pocket Souls, a Pokémon-like mod for FromSoftware‘s 2016 action RPG. However, Nintendo argued that mods don’t count as prior art since they can’t stand alone without their base games, but speaking to Grokludo in a video interview (below), US patent law expert and Banner Witcoff IP litigation and patent prosecution partner Kirk Sigmon argues that “Nintendo is so wrong, it hurts.”
Adding that “I don’t know why they made that argument,” Sigmon notes that “there’s some nuance in Japanese law that might dictate where they’re coming from,” but generally speaking, “when we’re talking about what we call prior art for the world of patents, it doesn’t have to be perfect. In fact, it doesn’t actually have to be functional, right? There have been plenty of instances in which prior art has been used that is not even a computer program in the first place.”
Sigmon was also featured in our post about how the USPTO recently abdicated its responsibilities when examining two new patents that were granted to Nintendo. He’s fascinating and the embed for the full interview is below.
The idea that mods can’t count as prior art is very, very silly. And while Sigmon does note that there may be specifics in Japanese patent law that might be powering this claim from The Pokémon Co., he has practiced patent law in Japan, so he knows what he’s talking about.
“There may be some nuance there in Japanese law that I’m not aware of. I’ve done quite a bit of Japanese patent law myself, but you know, there may be some nuance there,” Sigmon acknowledges. “But in general I think that that argument is a loser. It’s one that is fixated too highly on form over function, which is just a bad idea, because where do we end that dispute, right? There are plenty of Unreal Engine 5 games, are those mods too, just because they’re running on a singular engine? It gets into this weird dispute that no one knows what the hell’s going on anymore. So, from my perspective, it’s just a loser argument from Nintendo. I think that they’re trying to throw a Hail Mary because there’s so much out there.”
It’s almost as though The Pokémon Co.’s lawyers are confusing copyright and patent law, honestly. This sounds so close to the more generally correct claim that mods don’t get copyright protection because they are a derivative work. But that isn’t how patents generally work at all.
I, too, will acknowledge that I’m no expert in the realm of Japanese patent law, but given the preponderance of prior art examples, and this flailing about mods from The Pokémon Co., it’s starting to look like this lawsuit is a stinker and should be dropped.
Filed Under: palworld, patents, prior art, video games
Companies: nintendo, pocketpair, pokemon company
As you will hopefully recall, that very strange patent lawsuit between Nintendo and PocketPair over the latter’s hit game, Palworld, is ongoing. At the heart of that case is a series of overly broad patents for what are generally considered generic game mechanics that also have a bunch of prior art from before their use by Nintendo in its Pokémon games. These include concepts like throwing a capture item at an NPC to collect a character, as well as riding and mounting/dismounting NPCs in an open world setting. The result, even as the litigation is ongoing, has been PocketPair patching out several of these game mechanics from its game in order to protect itself. That it feels this is necessary as a result of these broad patents is unfortunate.
And, because of the failure of the USPTO to do its job, it seems things will only get worse. Nintendo was awarded two additional patents in just the past couple of weeks and those patents are being called an “embarrassing failure” by patent attorney Kirk Sigmon.
The last 10 days have brought a string of patent wins for Nintendo. Yesterday, the company was granted US patent 12,409,387, a patent covering riding and flying systems similar to those Nintendo has been criticized for claiming in its Palworld lawsuit (via Gamesfray). Last week, however, Nintendo received a more troubling weapon in its legal arsenal: US patent 12,403,397, a patent on summoning and battling characters that the United States Patent and Trademark Office granted with alarmingly little resistance.
According to videogame patent lawyer Kirk Sigmon, the USPTO granting Nintendo these latest patents isn’t just a moment of questionable legal theory. It’s an indictment of American patent law.
“Broadly, I don’t disagree with the many online complaints about these Nintendo patents,” said Sigmon, whose opinions do not represent those of his firm and clients. “They have been an embarrassing failure of the US patent system.”
And as Sigmon goes on to note, the failure is multifaceted in both instances. Sigmon notes that both patents are for mechanics and concepts that ought to be obvious to anyone with a reasonable amount of skill in this industry, which ought to have made them ineligible to be patented. That standard of patent law only works, however, if the USPTO acts as a true interlocutor during the filing process. In both of these cases, though, the USPTO appears to have not been in the mood to do their jobs.
Sigmon notes that it is common for patent applications like this to show some amount of questioning or pushback from the examiner. In both of these cases, that seemed almost entirely absent from the process, especially for patent ‘397.
Most of the claims made in the ‘387 patent’s single parent case, US Pat. No. 12,246,255, were immediately allowed by the USPTO, which Sigmon said is “a very unusual result: most claims are rejected at least once.” When the claims were ultimately allowed, the only reasoning the USPTO offered was a block quote of text from the claims themselves.
The ‘397 patent granted last week is even more striking. It’s a patent on summoning and battling with “sub-characters,” using specific language suggesting it’s based on the Let’s Go! mechanics in the Pokémon Scarlet and Violet games. Despite its relevance to a conceit in countless games—calling characters to battle enemies for you—it was allowed without any pushback whatsoever from the USPTO, which Sigmon said is essentially unheard of.
“Like the above case, the reasons for allowance don’t give us even a hint of why it was allowed: the Examiner just paraphrases the claims (after block quoting them) without explaining why the claims are allowed over the prior art,” Sigmon said. “This is extremely unusual and raises a large number of red flags.”
It’s hard to know what to say here. I obviously can’t crawl inside the head of whoever examined these patents at the USPTO. To that end, it would be irresponsible to claim that this is obvious laziness by a government employee, though on the surface that’s certainly what this looks like. Absent more information that is not currently available, any alternate theories as to why these applications were handled is mere speculation.
But with the Palworld example fresh in our minds, we do certainly know what the granting of patents like this will result in: more patent bullying by Nintendo.
“Pragmatically speaking, though, it’s not impossible to be sued for patent infringement even when a claim infringement argument is weak, and bad patents like this cast a massive shadow on the industry,” Sigmon said.
For a company at Nintendo’s scale, the claims of the ‘397 patent don’t need to make for a strong argument that would hold up in court. The threat of a lawsuit can stifle competition well enough on its own when it would cost millions of dollars to defend against.
And in the current environment, where challenging bad patents has become essentially pointless, you can bet we’ll see Nintendo wielding these patents against competitors in the near future.
Filed Under: palworld, patents, pokemon, prior art, uspto
Companies: nintendo, pocketpair
We’ve talked a bunch about the lawsuit drama between Nintendo and the Pokémon Co. against PocketPair, the makers of the hit game Palworld. The short version goes something like this. Palworld is clearly inspired by the Pokémon world and games, but does not directly copy anything from those properties. Nintendo in particular seems very annoyed by this game even existing, but, again, no actual direct copying is occurring here. Instead, Nintendo has sued PocketPair for patent infringement over patents it holds for Pokémon video game mechanics that are, to put it mildly, quite generic and for which prior art/use already exists. That lawsuit is still ongoing, but PocketPair proactively removed several supposedly offending features from Palworld to protect itself as much as possible.
If you take anything away from all of that, it should be that Nintendo cares deeply about its IP and protecting its rights in any way imaginable. At least for itself, that is, because as this lawsuit is still active Nintendo is also offering up a clear Palworld clone on its Switch 2 eShop.
Published by BoggySoftware, Palland has been available since July 31 and is available to buy for £9.99. A handful of images from the game show Pokemon-inspired monsters being shot at with a gun. “I watched a few minutes of gameplay and holy shit it looks so bad,” one fan wrote on Reddit. “This is so absurdly bad looking I am not surprised they let it onto the Switch. They don’t have to worry about anyone actually wanting to play it,” added another.
Dataminers have also found evidence that Palland developers were calling the game “Palworld” during development. “I really fucking hope this gets thrown in Nintendo’s face during court,” said one fan.
Now, let’s stipulate a couple of things. First, Techdirt has historically taken the position on video game clones that is something like: We totally understand why this annoys the original creator, but if your game is first and good and the “clone” doesn’t do a bunch of direct copying, we don’t really think it’s a threat to the original creator making money. Second, PocketPair specifically has come right out and has said that it has zero problem with others trying to clone its game.
But PocketPair also obviously doesn’t see any issue with Palworld being inspired by Pokémon and Nintendo just as obviously disagrees. That’s how moral stances work. If Nintendo has a problem with PocketPair’s bankshot of inspiration over properties it owns, it should have just as big a problem with selling more clear clones of others’ games. It appears it does not have that problem, however, and is happy to collect money for a Palworld clone even as it sues the company behind the game for patent infringement.
It’s hypocrisy of a kind, at the very least. Sadly, that isn’t terribly surprising for Nintendo.
Filed Under: competition, palland, palworld, patents, pokemon, switch 2
Companies: boggysoftware, nintendo, pokcetpair
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