TCG and the WotC patent

I believe that if you create a TCG that uses completely different mechanics than Magic:the Gathering you are not infringing on the patent. I don't believe they have a sole patent on the concept of selling cards in randomly distributed packs which you can use to create your own customized deck. But, hey, what do I know? I'm not a lawyer.

NOTE : I am NOT a lawyer...

From my understanding the concept of infringing on a patent ONLY occurs if you specifically duplicate ALL aspects of the given patent.

For example, assuming this is the same patent I recall reading a long time ago, if in the patent they talk about *tapping*, if you do not use a mechanic that resembles *tapping*, but does contain all other aspects you are technically *ok* since are are not copying the entire concept. This same concept is being dealt with in the iPhone vs Other mobile phones battles. Basically the other phones are implementing all but a *single* part of the patent, as such they are side stepping the issue based on the differences.

With that said, that would not stop WotC from sending you a cease and desist, and obviously any small time person would rather not spend tons of money to deal with a legal battle against someone such as WotC.

So the only choices you really have are :

1) Go for it and if WotC comes knocking, deal with it at that point.
2) Avoid making a TCG, thus avoid dealing with this entire patent concern.

(I'd still avoid it, though. Cease and desist orders are never fun.)

I am a small publisher whose first game is a customizable card game (still in development stages - licensing etc...) and faced this exact question.

Of course Wizards will say "Yes" royalties must be paid.

Every other publisher I have spoken with has said - don't infringe on WoTC's turf (library, tap, mana, magic) and there is little doubt they will not be inclined to pursue litigation. Also stay away from the term "Trading Card Game" itself.

I was also told this quote "Peter Adkison sent a number of game designers in the industry (me included) full details on his rules as part of a general stock offering for Wizards of the Coast. He sent that stuff out more than a year prior to his filing of the patent, meaning that his patent is subject to being invalidated in court by any of us with this information."

from a publisher - so clearly this invalidates much of the patent's claims.

Still, the $$$ is in the hands of WoTC, so be wise with the decision you make. (And yet, look at The Spoils which is so very similar in so many ways and no issues there.)

Also very true - if you rule it to "signify use" without re-orientation - players will "tap" out of habit anyway, so it doesn't have to be stated insomuch.

We decided to drop the idea of "using" a card - and we have a sort of action payment system where cards have effects that must be payed for to utilize, and we specified whether it could only be used once per turn.

There are many facets to the patent, however much of it can not be claimed by WoTC as original, it's the combination as a whole.

So if you do not blatantly follow the exact same patterns of MtG you should be fine without worry.

Cheers.

My point was, if you do NOT directly duplicate the exact claim, by omitting even a single component of a claim, you are technically not in violation. If there are multiple claims, you would need to *omit* some concept in each claim so that you are not in violation.

This same issue is under debate for many other patents (such as with iPhone vs the new Android based phones, Android based phones are avoiding the patent issue by not implementing ALL aspects as stated in the iPhone/Multi-touch patents) but again the $$ involved with defending oneself against a company like WotC (Hasbro), could make it impossible for a small publisher since the financial burden of going to court to defend would normally be to much of a hit for a smaller publisher to deal with. Of course, I have never heard of anyone actually being sued by WotC with respect to the TCG patents, so I wonder if it really matters. I wonder if they are just using it as a scare tactic, since most will avoid it based on threat of spending too much $$ to defend. On the other hand, I am sure anyone making a new card game would rather not create the *next big thing* and end up paying WotC $$ as a result of being sued.

I want to know if you must break all 3 rules at the same time or one of the 3 rules to get sued.

Hmm, this is a different WOTC patent then I had seen before. The previous one was much longer.

I'm guessing that since the "Parent Case Text" indicates that this is a division of a previous application, that they basically stripped out all of the non-binding claims, and put the strongest claims into this patent, making it more focused.

While I am not a lawyer, by trade, I am someone who works professionally as someone who creates patentable IP, so I do have some experience with this stuff.

Anyway, claim 1 boils down to: "A way to play a game where players take from a large pool of components, create their own sub-pool with which they are going to play with, and the game itself involves playing with the components specifically by moving components out of a players hand, bringing them into play, and rotating them to indicate that they have just been brought into play."

Claim 2 is: "A way to play a trading card game that involves creating a individual pool of cards from a larger set of available cards and building a deck with the individual pool, and then,in the process of the game, bringing the cards into play and rotating them in accordance to a set of rules. And, for some reason, discarding down to a maximum limit of cards in your hand (which to me doesn't make much sense as it loses the focus of the claim, but whatever)."

Claim 3 is basically describes the function of a TGC: multiple copies of the same card, playing with cards from a larger pool, turn order, and finally, "during a turn, a turn a turn can involve a player placing cards on the table face up for the players to see, and designate one or more cards on the table as being in play."

My inclination is that this is not a particular "we own this claim" but is instead an instance which just gets copied over to claims 4,5, and 6, which are the real claims. But I could be wrong on that.

Anyway, so Claim 4 is , "A TCG where designating cards is represented by rotating them."

Claim 5, I would argue is written wrong. It talks about the rotation being 90 degrees; however, there is no wording regarding orientation in Claim 3. I think they meant to say that claim 4 should be referencing Claim 4.

Claim 6 is pretty much: "Rotate the card back to it's original position after rotating it the last round."

Sooooo....I would argue that this particular patent pretty much covers the whole aspect of "tapping" components to indicate their use. And that's about it.

Of course, that's not to say they have other patents, or that they could go off and find a judge who doesn't have much experience in patent law. Generally, patents should cover a "specific way to fix a need" and not the need itself, as needs aren't supposed to be patentable. Unfortunately, this judge felt differently. At a previous employer I saw that employer get screwed due to a judge like this:

One company had a patent on how to get a desired result (let's say it's catching mice), we developed an alternate patented way to get a result. The judge fined us not because we infringed the original company's patent, but because we came up with an alternate method to get a result equal to their result. The judge ruled against us not because we infringed on their mousetrap design while trying to build a better mousetrap (in fact, our design was worse because of the workarounds we did), just the mere fact that we designed a mousetrap (however different that was). Basically, our "let's use sticky glue" to catch mice infringed on the competitor's "let's use a lever and high tension spring" to catch mice patent because the result was the same (death to the mouse), not the path that got to the result.

"Reading this makes me livid. That's so grotesquely unfair. Why bother creating a patent that describes the method of catching a mouse? Just write, "Catch a mouse," and you're good to go!

Seriously. I thought the idea of a patent was to protect your novel method, not to protect you from any competition in your entire field. This brings me back to when I heard (incorrectly) that WotC was patenting TCGs and I practically blew a gasket."

**********

Yeah, well, this is when you do your research on finding judges! The judge in this case was primarily a criminal justice, had no patent trial experience, and not tech savvy at all. All it took was for the competitor lawyer to wave his hands and basically say, "see, their patent catches mice. EXACTLY what our patent does," and it was pretty much over.

Most judges will usually defer to the U.S. government patent office with the belief that they have a better concept of how patentable things are, unless you can REALLY prove that a patent over-rides another. Judges almost never overturn an awarded patent.

In this case, not only did we lose for stealing a patent, the judge awarded TRIPLE DAMAGES for "knowingly stealing their concept!"

"So, you knew about this patent beforehand?"
"Of course, that's why we created a workaround for it. A vastly inferior workaround."
"ADMISSION OF THIEVERY!!! TRIPLE DAMAGES!!"

I wonder what the outcome for the mouse trap would have been if a "vastly superior workaround" had been done. Perhaps if the maker had identified a problem with the existing patent, and offered a better solution it may have been different.

I thought the idea of patents were to publicly challenge inventors / designers to come up with something better, proving the existing, to be inferior.

A fellow designer and I were just discussing patent concerns a few nights ago. We arrived at the tentative conclusion that (essentially) it's not worth producing a game that gives WotC/Hasbro a reason to even suspect you infringed. Specifically, we posited that if you make it big, you just painted a huge target on yourself for the WotC Lawyer Brigade to descend on your house in a late night raid to staple C&D orders all over you and your family and claim a chunk of your monetary success.

Instead, we look at it as a challenge. So they've essentially patented, as was noted above, the mechanic of "tapping". The work then falls to the rest of us to design a game that doesn't use this mechanic, but is instead different and superior (or at least different and equally successful). Although doho123's tale of rage-inspiring ignorance does give me pause when considering the "just make something better than theirs" approach...

On a different but related note, I've had some incidental experience with patents (my father holds one and I got to follow along as he went through the process), and I could've sworn that I was told that patents had a "life span," i.e. they only protected your idea from duplication for a specified number of years based upon the type of product patented. Maybe that's the case and a game/entertainment patent simply never expires; I could be completely mistaken. My father's patent was for a culinary device, so this could be comparing apples and spark plugs. Is there anyone who might know more about this aspect of patent law?

Disclaimer: I am not a lawyer...layman's understanding...not intimately familiar...blah blah blah, etc.

It's been a long while. But I think the appeals court is a lot like instant replay in football, you need so find sufficient evidence to dismiss a prior ruling.

However, the appeals court did reverse a lot of things, in fact most of the things:

Appeals court reversed the district court's decisions of all "literal infringement", but affirmed infringement of "doctrine of equivalents."

Basically, yes, it is a different method, but it does the same thing.

They reversed the triple damages, because it was obvious that there was a good faith effort to work around the patent. And in fact states that the whole purpose of patent law is to encourage competitors to design or invent around existing patents.

How did Konami and Upperdeck avoid being sued from WotC when they've made CCG's that are similar to MTG?

I want to know this b/c I too am a game designer and I've made a new card. Also, does anybody know any patent game attorney's that have been successful with CCG's?

Thanks

>>Most judges will usually defer to the U.S. government patent office with the belief that they have a better concept of how patentable things are, unless you can REALLY prove that a patent over-rides another. Judges almost never overturn an awarded patent.<<

Actually, a good 2/3rds of all patents challenged in court are ruled non valid. 2/3rds. Dismissed on evidence of prior use.

The thing is, there are so many industries with so many complex inventions that the average patent office clerk has no real chance of adequately awarding patents on merit. All they can do is look up through the existing patents on file to see if there is another patent basically stating the same thing. Lack of such an existing patent does not, in fact, make a thing patentable. As in, the thing trying to be patented may never have been patented, but be a commonly used concept already (ala, prior use).

The case of prior use often pops up when one has to defend themselves against a suit for patent infringement. In my opinion, the reason WOTC has not used their patent to move against any other trading card games is, they don't believe the patent will survive a challenge in court. Prior use can be proven on each and every point within their patent. It can easily be challenged if it were to ever land in court. Knowing this, its better not to challenge anyone. The patent still looks good as an "asset" on Hasbro's books when it comes to showing off for investors. In that capacity it still holds value to them.

Ryan S. Johnson
Guild of Blades Retail Group - http://www.gobretail.com
Guild of Blades Publishing Group - http://www.guildofblades.com
1483 Online - http://www.1483online.com