Frivolous Patent Claim Causes Headaches

Some game developers could face years in court and hefty legal costs if an allegation by an Illinois patent holder goes to court. A lawyer representing Craig Enokian of Palos Heights, Illinois has sent letters to several software companies informing them that they are potentially liable for patent infringement for developing computer programs containing video sequences derived from performances by living beings.

Enokian's attorney, Ernest Kettleson, is demanding that software companies either cease and desist in the manufacture and sale of these games or pay licensing fees to his client.

Scott Miller, the president of Apogee Software, who received a letter from Enokian's attorney last week, said that his attorneys don't believe that the claim has any merit, but that it could get expensive if Mr. Enokian decides to go to court.

At press time, GameSpot News could not confirm which software companies besides Apogee had been contacted.

Enokian owns US Patent No. 4,662,635 issued on May 5, 1987. The patent allegedly covers a video game that uses a television or cathode ray tube to display plays previously performed by living beings and recorded on a video medium. The playbacks on the screen occur in accordance with certain selections made by the user.

Mark Traphagen, counsel for the Software Publishers Association, says that SPA has been tracking the case for over a year. "We're not aware of any suits that have been filed. It hasn't engendered much concern."

According to an SPA summary of the case, defense against Enokian's claim will probably focus on invalidating the patent, either by showing that the invention had been anticipated by prior art, or that it is obvious to practitioners in that art. In other words, if companies can prove that the technology was available before the patent was granted, or that the process is completely routine to making video games, Enokian has no case.

Some companies, especially those which make only PC games, may counter that the patent doesn't apply to them.

Enokian's patent specifically describes a device that plays back one or more videotapes on which all conceivable plays, or a selected number of the more common plays, are recorded. Two players each have a card detailing the selection of plays recorded. The example cited is for a football game in which one player chooses a play for his team to execute and the opposing player chooses a defense. The selected plays are encoded on the device, which then plays both actions back on the television display.

Traphagen says that SPA is trying to create a climate in which patents won't be issued for devices like this, avoiding costly lawsuits down the line. "We're trying to make sure that patents are of good quality," said Traphagen. "One of the things we're doing is to improve the database of prior art. To do that we support the Software Patent Institute. Secondly, we make sure the patent examiners understand the software industry."

SPA is also championing patent reform legislation currently before the Senate that would give software companies low-cost alternatives to litigation in defending themselves from what Traphagen calls "junk patents." The bill passed the House this spring, and SPA hopes it will be enacted by the end of this year.