Pokémon GO fever faces potential indirect patent infringement challenge

The new augmented reality mobile game Pokémon GO, made by Niantic, Inc and Nintendo, has caused Pokémon fever in many countries. The game encourages gamers or 'Pokémon trainers' to walk around outdoors to 'catch' Pokémon and gather items (eg, balls, eggs and potions) at Pokéstops. Serious players spend hours walking around cities or waiting at particular spots to hunt rarely seen characters. Before Pokémon GO fever hit Taiwan in August 2016, a small episode drew the attention of the IP industry and those who were eagerly awaiting the launch of Pokémon GO in Taiwan: a patent infringement claim filed against Niantic, Inc's other reality mobile game, Ingress.

Ingress is considered to be the predecessor of Pokémon GO. The two are played very similarly, but Ingress has not been as successful as Pokémon GO because Pokémon GO has accumulated many fans through previous versions of Pokémon games and the cartoon. Nevertheless, Ingress still has some faithful players. When Ingress was launched Hsin Wang, an IP lawyer, believed that it infringed his patent right – co-owned with Tsao-Hsiang Kuan under Taiwan Patent I300720, “Online game in real world” (filed on May 29 2006) – and sued Niantic, Inc for infringement. Wang told the media that many people blamed him for hindering the launch of Pokémon GO in Taiwain, with some even calling him a patent troll.

The I300720 patent has 13 claims, with one independent claim which recites:

"A game method by integrating a position system and wireless network for performing programs requiring positioning functions, the method includes:

mainframe server;

mobile device having wireless network function;

position system;

integrating the position system with the mobile device having wireless network function, sending data from the mobile device having wireless network function to the mainframe server, letting the mainframe server and the mobile device perform interaction program function via the wireless network."

The claim has various defects, such as uncertain recitation of structural limitations in a method claim and the relative vague and broad claim scope causing a potential invalidity issue. Apart from these issues, the most notable issue might be that, according to the recitation of the claim, Niantic, Inc might not be the entity that practises all of the limitations of the claim. In fact, a single entity might not practise all of the limitations of the claim. Specifically, the action regarding the mainframe server is practised by Niantic, Inc, while the mobile device and position system are both on the user side (ie, practised by the gamers). In other words, even if there is a grey area in claim construction for escaping from this situation, the patent owner might have to claim Niantic, Inc as a contributory infringer.

Cases of indirect infringement (ie, contributory or induced infringement) are still rare in Taiwan. Three representative cases are Takeda Pharmaceutical Company Limited v China Chemical & Pharmaceutical Co Ltd (2009), Magic Optimal Service Tech Co v Cyberlink co (2012) and Monolithic Power Systems, Inc v Fitipower Integrated Technology Inc (2012). The most recent case, MITAKE Ltd v Syspower Ltd (2015), established the single infringer rule for indirect infringement. In this case, two of the steps of the claim at issue were practised by a third party but not the accused infringer, Syspower Ltd. The patentee, MITAKE Ltd, stated that “the Appellee has ‘power of control and instruction’ to the whole procedure practiced on the accused system” fulfills the single entity rule. The judge upheld MITAKE's position and rejected the non-infringement argument.

In the wake of the single entity rule in MITAKE Ltd v Syspower Ltd, the patentee of Taiwan Patent I300720 may be able to claim infringement against Niantic, Inc as the contributory infringer – which would be good news for the patentee, but not so good for Pokémon trainers.