Expert: George H. Morgan, P.E., Patent Agent - 5/15/2008

Question
QUESTION: I have a very specific question and I understand the effort that will need to be put into it might mean you do not want to answer it.
The patent with number 5,662,332 (or should I be referencing the reissue? RE37,957) has some claims that are not clear enough to me. Reading them I can't make out if the are very generic - making any game that starts by making a "deck" out of a pool of objects is copyright infringement - or actually rather narrow - only if this is followed by a repeating number of turns that have the right order of their elements one will infringe upon this copyright.
To make things worse, I have browsed the internet and found that there actually are people that assume both views. It would be very helpful if you could help me assess this.

Jasper

ANSWER: Jasper, I will give it my best shot.
As a patent agent, I am not qualified to address infringement of patent issues, as that is a matter for the courts & it takes an attorney. Also, you mentioned copyright issues, which is outside & separate from patents. That also is outside my domain.

My domain is prosecuting patent applications for inventors.

That said, I can mention the following:

You want the reissue of the patent.  Are you sure that RE37,957 does not refer to a copyright registration?  That would be a horse of a different color. If it is a patent re-issue, then that is the one to be concerned with.

To see what the claims covert you need to go back to the specification and see what it said. There is also a "doctrine of equivalents" to be concerned with, as well as amendments during prosection of the application, to gain acceptance, can lose rights under the "doctrine of equivalents". This is why often the attorneys giving infringement opinions dig out the prosecution history of the application.

Keep in mind, that when claims are too broad, they are more difficult to enforce.

You really need to see a patent attorney  on this, where you can sit down and discuss face to face. If  you are here in the Mid West, convenient to Louisville, Ky., I can recommend a very  good one. You are looking at a couple thousand dollars.

I also can recommend a very good one up near Detroit.

I am in Evansville, Indiana. If you want the contact info of either of the above, my email is patagent@evansville.net.

I hope that helps at least a little. Best wishes on your project.

George H. Morgan
Professinal Engineer
Patent Agent
web site: http://www.evansville.net/biz/patagent

---------- FOLLOW-UP ----------

QUESTION: Thanks for your help so far.

First off the bat is me excusing for the mistake I made. While I really have been looking into copyright, trademarks and patents lately, I was really talking about patents and using the word copyright was the mistake I made.

Let me explain the situation in more detail. Sometimes it appears more like it's a patent on the complete genre. Personally, I am a European student (or, actually I will start at university next year) and I am looking into what I can and can't make as a web application. In my search on the legality and such I came across someone who happened to have started designing his own trading card game only days before - so currently my goals are to research for both. Both of us are on a low budget, so that might be a bit of a problem.

If I understand it correctly, to infringe a patent (haha, good intentions) one would have to match the descriptions of  all elements of one claim, not necessarily more than one claim. If something "consists of" or "comprises" elements, the order of the named elements is not important.

So let's take the original version of the patent as an example (the reissue has ten times as many claims, so that is a lot harder to talk about). Summarized the claims are as follows:

1. A method of playing games, with rules instructing on drawing, playing and discarding cards. The method consisting of:
~ making a deck of cards
~ getting a starting hand of cards
~ players taking turns until the game is over. Steps of turns comprising:
  a. Putting cards on the playing surface
  b. Bringing the cards into play by:
     I. selecting one or more game components
     II. bringing the game component into play by moving one or more game components from one orientation to another.

2. method of playing a trading card game, with rules instructing on turn execution, number of cards in a deck and hand. Method of playing comprises the steps of:
~ collecting a pool of cards
~ making a deck out of them
~ drawing a starting hand
~ executing turns in sequence and at the player's option, steps of executing a turn comprise:
a. drawing one or more cards
b. entering one or more cards by entering it into play in a first orientation and tapping any cards in accordance to the rules to signify they have been used
c. discarding cards if necessary in order to maintain the card limit.

3. A method of playing card games, method being suitable for cards and multiple copies of cards, with rules instructing on turn execution, number of cards in a deck and hand and the objective of the game. Method comprises the steps of:
~ obtaining a pool of cards
~ constructing a library of cards
~ drawing a starting hand
~ each player executing turns until the game is over according to the rules, turn includes placing one or more cards on the playing surface for other players to see and designate it for entry into play.

4. (literally) The method of claim 3, wherein said step of designating one or more of the cards comprises rotating the one or more cards on the playing surface from an original orientation to a second orientation.

5. (literally) The method of claim 3, wherein said second orientation is 90 degrees from the first orientation.

6. (literally) The method of claim 3, wherein said step of executing a turn comprises the initial step of rotating the player's cards previously designated in a prior turn from the second orientation to the original orientation.

If one were to make a game that matches the description of claim 1, but not that of claim 2, one would need to get a license with WotC (the owners of this patent) first. If thus, claim 3 (which is also in the reissue) represents a claim not on the particular game, but on the genre as a whole - you can barely make a trading card game without the named steps. (Unless of coarse (as someone suggested to me) having additional restrictions in deck building would keep the game out of range of the patent - the description for deck building being: "each player constructing a library of a predetermined number of cards by examining and selecting cards from the player's pool of cards".)
However, if the claims do work in such a way, what is the reasoning behind claims such as 4, 5 and 6. I mean, what is the point in specifying what change of orientation the game you have made uses (90 degrees) if your patent covers all differences in orientation? (actually now I look at it, claim 3 actually does not mention any orientations... but anyway, what would the sense of such a claim be if the first claim did mention a first and second orientation like claim 1 does)

As noted before, the reissue including a lot more claims, and thus is probably even more restricting to the genre. Any way, that's what I have perceived so far.

I understand if you cannot help me out, but I do really appreciate the help you have given so far and the fact you have actually read all of this before dismissing it.

Thanks for all the help,

Jasper

Answer
Your understanding you discussed in your third paragraph is correct.

Beyond that, I can't help you. I really don't see how they got a U.S. patent on that. So, any infringement questions need to be addressed by a patent attorny as it is a matter for the courts to decide.

When my clients find that their invention seems to infringe, I advise them to call the patent holder & cut a deal. It has worked both times I recommended that to two different clients.

Many patent holders have patents they were not able to exploit & they would be happy to work with someone who wants to grab the ball, so to speak, and run with it.

Hope that helps. Best wishes on your project & your career.

George H. Morgan
Professional Engineer
Patent Agent