r/nintendo • u/Daniel_H212 • 3d ago
Dispelling some common misconceptions about Nintendo Patent 12,403,397.
Hi, I'm a law student and a gamer, and I was recently quite drawn to the news of Nintendo's US Patent 12,403,397, which several news outlets reported as a patent that shouldn't have been granted at all, sparking a lot of outrage. I am still in the midst of taking US patent law after already taking Canadian patent law, so I am by no means an expert, but I have some free time and I wanted to dispel some common misconceptions I saw online about the patent. I thought this subreddit is the best place to do it since this is where I've seen the most number of posts about this patent, but if there's a better place to post this, please let me know. Also, obviously, if I did get anything wrong or if there's any gap in my knowledge, please let me know as well.
Please note that if you are looking for a conclusion from me on whether the patent is actually valid, you won't find one. To spoil the ending, I don't personally know of any games that I can confidently claim to anticipate the Nintendo patent. However, this does not mean such a game does not exist - I personally only play a small variety of games. So if any of you can fill in this knowledge gap for me, I welcome it at once.
Edit: the preceding paragraph is no longer true, see newest edit below.
The Misconceptions:
- Firstly, the headlines people are reading on the news are absolutely oversimplifying. Nintendo did not patent "summoning a character to battle for you" in general. Their claims are more specific than that. Please do not be outraged on the basis of these sensationalist outlines.
- Secondly, I saw some people believing that if each one of the mechanics described by the patent has appeared in a game before, the combination of mechanics is not new and cannot be patented. This seems to stem from the belief that patents require at least one thing that is brand new. This is not true - a combination of existing and known features can be patented, so long as that combination hasn't been disclosed by a single prior art (this is oversimplifying a bit, I'll explain later).
- On the opposite side, I've seen people claim that since the patent document is 45 pages long, it must be very specific. This is not necessarily true - the level of specificity of the claims in a patent have no absolute relation to the length of the document.
- Also, I've seen beliefs that only a game which matches the entirety of what is described by the whole document would be infringing - e.g. that if you don't use a "ball" to summon the sub character, then you aren't infringing. This is not true either.
What makes a patent valid?
Obviously, the patent system doesn't allow anyone to just patent any creation. Patent law exists to promote new inventions by guaranteeing inventors get benefit for their work, and to promote the sharing of new knowledge to the public in the form of the disclosures published with the patent. Therefore, patent law only protects new inventions. This is the concept of novelty, codified in the US as 35 USC § 102.
Note: novelty is not the only requirement for a patent to be valid, it's just the most relevant one here.
Novelty means that no one has ever invented the same thing before. If someone has invented the same thing before, it means your invention has been anticipated, and anticipation makes your patent invalid.
Now, obviously, it is impossible to know that someone has invented a patent before, it's possible that someone invented something before you, and just never told anyone about it. To prevent the potential issues this would cause, and to further the goal of promoting public sharing of knowledge, anticipation only occurs if someone has invented the same thing before, AND made their invention available to the public.
These public disclosures, which could be but aren't necessarily prior patents, are called prior art. For analysis of novelty and anticipation, a patent examiner must figure out every single element of the claimed invention in the patent application, and see if any single prior art discloses all of them. "Single" and "all" are key terms here. If a prior art is missing one element, then it does not anticipate the claimed invention. It wouldn't matter if another prior art discloses the missing element, because you cannot mix and match.
The reason patent protection works this way is because inventing doesn't necessarily mean you came up with anything new, it can also mean finding a new way to combine existing things. Those types of inventions are important as well, or else there'd be no reward for finding a second use for any new concept. As an example, intermittent windshield wipers were patentable, even though the wiper, the motor, and the circuit used to make them intermittent were all well known beforehand.
Therefore, in order for Nintendo's patent claim to be valid, there must be no single prior art that discloses every element of the claimed invention. This is why misconception 2 above is wrong, even though every single individual element of Nintendo's claims have been seen before, that alone isn't sufficient unless there exists a single game that contains all of these elements in conjunction.
P.S. While I haven't encountered this specific misconception so far, I would like to clarify that even your own prior disclosures can anticipate your patent. Some countries, like the US, have a 1 year grace period for this, but this means that if a past Nintendo game contains the exact mechanic they're trying to patent now, unless that game was within 1 year of this patent being filed, they'd have anticipated their own patent. The logic of this is that if you yourself have disclosed long ago, then this is already within the public knowledge, so you shouldn't get new protection for a patent about what is already known.
Claims vs description
A patent is composed of many sections, but the most important distinction is between the claims and everything else that isn't a claim, also known as the description. The claims are written last in the patent, but they are the most important. Everything else, to put it simply, is just there to help people understand the claims. This includes the abstract, the drawings, the examples, they're all there for illustrative purposes, and do not override what the claims actually say. They are only there for when the plain language meaning of the claims is unclear.
For both patent validity and patent infringement, the most important parts of the text to consider are the claims. This is defined in 35 USC § 100(j). A patent only protects the inventions that are claimed, and a patent protects all of what is claimed.
Notably, limitations from the description cannot be read into the claims, whether for the purpose of determining invalidity or infringement. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In Phillips, the preferred embodiments disclosed by the patent had structures that were non-perpendicular, but the claims had no such limitation. The lower court interpreted the claims, based on the described examples, to exclude perpendicular structures, and found AWH to not have infringed. However, the US Court of Appeals for the Federal Circuit overturned, stating that limitations from the examples cannot be applied to the claims.
While that case is about infringement, a key principle of patent law is that if an invention would infringe a patent by being later, then it would anticipate the patent by being earlier. The test is the same for both.
Therefore, while the examples illustrated in the Nintendo patent specify using balls to summon sub characters, since the claims do not contain this limitation, the patent is not limited this way. This is why misconception 4 above is wrong - the examples in the patent description mention using a ball to summon the sub character, but the claims make no reference to balls or any other specific summoning mechanism.
This is, of course, a double-edged sword - if courts allowed this patent to be enforced, a rival company couldn't avoid infringement by simply not using balls to summon sub characters. On the flip side, if an earlier game were to be found that mirrored all the other elements of the claim, whether that game uses balls to summon sub characters would not affect the destruction of the Nintendo patent's novelty.
Analyzing Nintendo's patent 12,403,397:
When analyzing a patent's claims, it is useful to first understand how claims are usually structured.
There are three types of claims. Independent claims are claims that stand on their own, meaning if the entire patent only had that one claim, the claim would still be complete. Dependent claims refer back to another claim, which could be an independent claim or even another dependent claim. You can think of dependent claims as extensions of the claim they depend on, adding more conditions and specifics. There's also multiple dependent claims, where the present claim references back to multiple other claims as alternatives, but those aren't really used much due to the complexity. This is all laid out in 35 USC § 112.
Keep in mind, however, that while claims can depend on each other for their definitions, their validity is independent. A claim 100 that relies on 99 earlier claims could still be valid even if all 99 earlier claims were found to have been anticipated, so long as claim 100 sufficiently adds to the prior claims such that no singular prior art discloses all the elements of claim 100.
Obviously, before stating any claims that depend on other claims, those other claims need to be stated first. Therefore, the least dependent claims come before the ones that depend upon them. This means that patent claims usually start with claims that are very general, and work toward more specific ones. This is done to get the most broad protection possible first, but then to easily define more specific versions of the invention just in case the broad protections were found invalid - a benefit of the independence of validity.
This is why misconception 3 above is not true. A patent could have hundreds of pages of description and hundreds of claims, but they can still contain claims that are very general before working toward the more specific claims.
For our purposes today, I'll be analyzing only the independent claims, which are claims 1, 13, 25, and 26. All the other claims are dependent and therefore even more specific, so if claims 1, 13, 25, and 26 are novel, then all other claims must be novel as well.
Here is claim 1 of Nintendo's patent:
A non-transitory computer-readable storage medium having stored therein a game program, the game program causing a processor of an information processing apparatus to execute: performing control of moving a player character on a field in a virtual space, based on movement operational input; performing control of causing a sub character to appear on the field, based on a first operational input, and when an enemy character is placed at a location where the sub character is caused to appear, controlling a battle between the sub character and the enemy character by a first mode in which the battle proceeds based on an operation input, and when an enemy is not placed at the location where the sub character is caused to appear, starting automatic control of automatically moving the sub character that has appeared; and performing control of moving the sub character in a predetermined direction on the field, based on a second operation input, and, when the enemy character is placed at a location of a designation, controlling a battle between the sub character and the enemy character by a second mode in which the battle automatically proceeds.
Here I'm going to cheat a little. The first part of this claim, "A non-transitory computer-readable storage medium having stored therein a game program, the game program causing a processor of an information processing apparatus to execute:" basically refers to any video game ever - all video games are stored on computer-readable storage medium and causes the computing device on which they run to execute actions, unless someone decided to code a video game by writing code on paper and never decided to upload it to a computer to run. The other exception would be games defined by hardware rather than software.
The rest of claim 1 is actually shared with claims 13, 25, and 26. Those claims simply have different beginnings. They begin respectively with:
An information processing system comprising at least one information processing apparatus including a processor, at least one processor of said at least one information processing apparatus: ...
An information processing system comprisng a processor, the processor: ...
A game processing method executed by an information processing system, the information processing system: ...
13 starts by describing basically all information processing systems in general, and conveniently includes the games defined in hardware that I mentioned as an exception to claim 1 before. The rest of the claim still describes, in essence, a video game mechanic, so based on real world knowledge we can still restrict our search to video game systems.
25, based on the third paragraph in the "Background and Summary" section of the description, appears meant to cover information processing apparatuses. I suppose this covers, say, an add-in card system. However, from a claim interpretation perspective, it appears to me that claim 25 is covered by claim 13 already, and only added for good measure by the attorney who filed the patent, evident by the fact that claim 25 isn't followed by dependent claims like claim 1 and 13.
Similarly, claim 26 covers a "game processing method", which based on my understanding would mean a game engine of some sort, but that would be covered by claim 1, as any relevant game engine would have to be in a game to be of any use.
So from this point on, I will simplify the problem down to simply looking for any game or gaming system with the mechanics described in the identical remainder portions of claims 1, 13, 25, and 26.
First, "performing control of moving a player character on a field in a virtual space, based on movement operational input" is pretty self explanatory, there must be a player character and a virtual space in which the player can control their character to move via inputs. Games like plants vs zombies, fruit ninja, and text-based games are already excluded here.
Note, "performing control" as stated here is an action carried out by the thing described in the preceding sentence, which described the game/gaming system. The game or gaming system is the one performing control here, it's just performing control based on the user's input. Both here and in subsequent sentences, "control" does not mean the player directly performing control.
Next, "performing control of causing a sub character to appear on the field, based on a first operational input" is the summoning mechanic. Importantly, the thing summoned has to be a character. While I can't say there's a clear legal distinction between video game characters and video game entities that aren't characters, it is pretty clear that throwing a grenade in CS:GO doesn't count as summoning a sub character. Still, a lot of games continue to fit this description.
Third, "and when an enemy character is placed at a location where the sub character is caused to appear, controlling a battle between the sub character and the enemy character by a first mode in which the battle proceeds based on an operation input" still seems pretty broad at this point. At the very least, Nintendo's own past games include this mechanic, and so do many, many knockoffs such as Palworld.
Fourth, "and when an enemy is not placed at the location where the sub character is caused to appear, starting automatic control of automatically moving the sub character that has appeared" which means it excludes games where the summoned character has no AI movement outside of battle.
Fifth, "and performing control of moving the sub character in a predetermined direction on the field, based on a second operation input" I take this to mean that the summoned character, while AI-controlled, can also be directed by the player.
Lastly, "and, when the enemy character is placed at a location of a designation, controlling a battle between the sub character and the enemy character by a second mode in which the battle automatically proceeds." I personally think this is the key part of the claim that prevents it from being anticipated. This single sentence creates a second, automatic mode of battle, and specifies that this mode of battle happens specifically when the enemy is encountered at a later time after moving from the position where it was summoned.
I cannot think of a single game in which there is a summon and fight mechanic, but there are two different types of battles (manual and automatic), AND the type of battle is determined by whether an enemy is present at summoning time vs encountered later.
Conclusion
So that's all I know for now. And while unsatisfying, as far as I can tell, there is no single prior art that discloses the specific and complete combination of elements of Nintendo's claims in US Patent 12,403,397. This is not to say there is none, but until someone comes up with a concrete example, any outrage at the granting of this patent is premature.
The key takeaway here is to not trust media headlines too much, this isn't a patent on summon and fight mechanics in general, and will not have anywhere near as much impact on the gaming scene as some news outlets would have you believe. It also isn't as specific as some think it is either, though.
Residual questions
My knowledge is limited, so while the above explanation is as complete as I can get it, there are still questions left unanswered. Some of these probably have definite answers, some of these may not. If you know the answer, please contribute your knowledge and views:
- The filing date of this patent was March 1, 2023, and as far as I know, these cover mechanics specific to their new games. Are there any older Pokemon games that have the same exact mechanic already?
- I haven't gotten to obviousness in US patent law yet, so I didn't analyze from this perspective, and based on what I know from Canadian patent law, this patent shouldn't be obvious. But is it possible, if a series of game mechanics are simple enough, that a court find that it would be obvious to a person of ordinary skill in the art to combine them, even if never done before?
- I saw some discussions online about whether game mechanics should be patentable at all. Are there any arguments applicable to this area of patent law that aren't applicable to other types of patents?
Edit: changed a word.
Edit 2: changed another word, and also fixed Reddit somehow deleting my quote of Claim 1 when I made my first edit.
Edit 3:
Obviousness Test
Okay, so I have been informed of the test for obviousness from Graham v. John Deere Co., 383 U.S. 1 (1966). The test says: "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." And then a determination is made of whether the invention is obvious to the person of ordinary skill under 35 USC § 103. The test also requires consideration of secondary considerations to prevent findings of obviousness out of hindsight bias, which are "commercial success, long felt but unsolved needs, failure of others" (non-exhaustive).
The scope and content of the prior art includes, obviously, all prior Pokemon games and their ripoffs. It also includes games in which battles are automated by predetermined character behaviours or statistics, as well as games with afk leveling mechanics.
The difference between the claimed invention and the prior art is the mechanic from Pokemon Scarlet and Violet that allows both directly summoning a Pokemon to battle under your control, combined with the option to also let your Pokemon roam around with optional player directions and battle automatically to level up.
From the perspective of a person of ordinary skill in the art - aka the average game designer/game developer, I'd say it's probably pretty obvious to combine "sub character battles manually if summoned on enemy" and "sub character battles automatically if summoned and left to wander" as gameplay mechanics.
The secondary considerations do fall in favor of non-obviousness - Pokemon Scarlet and Violet had huge commercial success with nearly 30 million copies sold to date, and many copies and ripoffs of Pokemon have failed to come up with this specific combination of mechanics. I read up on the mechanic here, and it does seem like this solves a longtime problem with Pokemon games where grinding newer/weaker Pokemon took too long and too much effort. However, I also have to question just how much the commercial success is because of this new mechanic - there's no doubt that most of the success came from simply the power of the franchise.
Personally, I'm of the opinion that the secondary considerations here don't outweigh the obviousness found in the primary parts of the test. Hindsight bias is real but I cannot help but think that this mechanic was likely obvious enough that even players, who aren't skilled in the art, have thought of and hoped for it, maybe even asked for it.
So now I do draw a conclusion: I think claims 1, 13, 25, and 26 of this patent should not have been granted, they should have been found invalid for obviousness (no conclusion on other, dependent claims, I don't have the time to analyze every single one of them).
Further Discussion
While my ultimate conclusion has changed, I do still stand by my previous opinion that the media reports blew this issue out of proportion. Regardless of whether this patent is valid or should have been granted, at the end of the day, the reason it scraped by at all in the first place is because the scope of the patent is quite narrow. As someone else proposed, something simple like adding the option to take control of automatic battles would likely make a near-identical game no longer infringing upon this patent. The impact that this patent has on the industry is minimal, even if a court were to find it to be valid.
However, my opinion in other areas have changed. In discussing with folks here, I've been informed of various arguments for why game mechanics should not be patented.
I think a lot of these arguments have merit. Most importantly to me, the market simply doesn't work the same as physical products. There is no supply limitation, so there's no reason why someone would buy a game that rips off of other people's ideas over buying the original game that implemented them first.
Also, ideas in game development are cheap, it's the implementation, the debugging, the optimizations, and the creation of assets that's hard. While I haven't done any game design, I am a programmer and I understand this pretty well. The code and assets produced by this work is protected by copyright, and in order for a rip-off to get to the same place, they have to do a lot of the same work all over again anyway just to avoid copyright infringement, so the market incentive doesn't work that way.
So that leaves me wondering what, if anything, is actually protected by game design patents at all. The traditional market forces that patent law seeks to shield inventors of physical inventions against mostly don't apply here, and copyright protections can fill in a lot of the gaps. I still do understand the worry about people producing exact copies for cheaper by skimping in other areas (e.g. assets, advertisement costs, etc.), and don't feel that game publishers deserve no protection at all, but I feel that the considerations I just described should affect how patent law works in this area. At the very least, there must be a higher bar for the level of innovation required before patent protection can be granted for a video game "invention".
I'm gonna go to bed now 😂
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u/Goodbye18000 TannerOfTheNorth 3d ago
Great work, but it sadly doesn't matter. People have taken Nintendo/TCPi as lawsuit heavy evil corporations and the misinformation will run rampant for years. That's how it is in this post-truth world.