SUPER SMASH BROS VR EDITION: An Update on ZeniMax v. Oculus

zenimax v. oculus title

The legal battle between two heavyweights over the Oculus Rift continues between ZeniMax Media and id Software, in one corner, and Oculus and Facebook, in the other.  In a court filing this week, the two sides reportedly failed to reach a resolution in a recent court-ordered mediation.

The lawsuit also made headlines in December 2015 when Facebook’s CEO, Mark Zuckerberg, was ordered to sit for a deposition in the case.

If you’ve been living under a rock for the past two years, I’ve provided a summary below.  (I also recommend reading the complaint, a lengthy, but fascinating read for those interested in the VR industry.)

In May 2014, ZeniMax Media, parent company of id Software and Bethesda Softworks, filed suit in a federal court in Texas, asserting claims of trade secret misappropriation, copyright infringement, breach of contract, unfair competition, unjust enrichment, trademark infringement and false designation against Oculus and Palmer Luckey.  (Zenimax has since amended its complaint to add Facebook and John Carmack as defendants.)

In its complaint, ZeniMax alleged that, in 2012, Luckey approached John Carmack (then, an iD software employee) about a Rift prototype, which Carmack offered to help improve.  Subsequently, Carmack and other ZeniMax employees allegedly “transformed” the Rift prototype by adding positional tracking, reducing latency and making other significant improvements.  (According to Facebook, the improvements to the Rift amounted to “hot-gluing” a motion sensor previously purchased from Hillcrest, “placing tape on the outside edges of the lenses, attaching a strap, and plugging the headset into an external power source.”)

Before revealing the improved Rift prototype — and at ZeniMax’s request — Luckey executed an NDA, which stated that ZeniMax would retain exclusive ownership of the IP disclosed under the agreement.  (Facebook has since denied that the NDA is valid or enforceable.)  Carmack later demonstrated the enhanced Rift prototype at E3 in 2012, which resulted in significant attention and acclaim regarding the HMD.

carmack

After a successful E3, Luckey and Oculus allegedly continued to seek out Carmack’s expertise, but ignored ZeniMax’s overtures regarding compensation for its IP. Moreover, Oculus and Luckey allegedly demonstrated the Rift prototype using ZeniMax’s properties (Doom 3: BFG Edition and RAGE) against ZeniMax’s wishes.  In addition, Oculus later solicited and hired away several ZeniMax employees, including Carmack, who became CTO of Oculus.  According to ZeniMax, Oculus has never paid a dime to Zenimax.

In March 2014, Facebook announced that it would acquire Oculus for $2 billion in cash and stock.  Two months later, Zenimax filed its lawsuit.

Perhaps on a related note, earlier this year at E3, Bethesda, ZeniMax’s subsidiary, announced that it was developing virtual reality versions of its blockbuster AAA titles, Fallout 4 and Doom, which, unsurprisingly, would be released on the HTC Vive.

The jury trial in the ZeniMax v. Oculus case is scheduled to begin on Monday, January 9, 2017.

BMW v. TurboSquid: Virtual Patent Infringement?

The blog, Protecting Designs, reported an interesting case filed last month that may have legal ramifications to the burgeoning VR industry:  BMW v. TurboSquid, Inc.

The issue:  Can selling a digital 3D model of a car, which exists only in virtual reality, infringe a design patent?

According to Wikipedia,

TurboSquidTurboSquid is a digital media company that sells stock 3D models used in 3D graphics to a variety of industries, including computer games, architecture, and interactive training. The company, headquartered in New Orleans, Louisiana in the United States, is most known for brokering the sale of 3D models in return for a percentage of the sales. As of 2014, TurboSquid had over 370,000 3D models in its library, making it the largest library of 3D models for sale in the world.

TurboSquid’s website lists Sony Pictures, Activision and Pixar as a few of their clients.

On May 3, 2016, BMW filed a complaint in a federal district court in New Jersey alleging, among other claims, that TurboSquid’s 3D models of certain vehicles infringe BMW’s design patents.  In particular, BMW alleges that TurboSquid is “marketing 3-D virtual models of vehicles that infringe the BMW trademarks, trade dress, and design patents.  [TurboSquid] markets and tags BMW-trademarked 3-D virtual models of BMW vehicles as suitable for games.”

mini
Image from U.S. Patent No. D664,896

BMW’s design patents (D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495) are directed to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” BMW have also asserted trademark infringement claims against TurboSquid and is seeking injunctive relief, disgorgement of all of TurboSquid’s profits under 35 U.S.C. Section 289, attorneys’ fees and other remedies.

 

It remains to be seen whether “virtual” objects can infringe a design patent (or perhaps in a future case, utility patents).

For more analysis on the trademark claims, Patently-O had an interesting write-up which can be accessed here.

In the News: Magic Leap

magic leap

The secretive startup company, Magic Leap, made headlines recently with two stories of note.  First, as reported last week by UploadVR, Magic Leap is suing two former employees in federal court for trade secret misappropriation.  Magic Leap’s complaint alleges that Gary Bradski (Senior Vice President of Advanced Perception and Intelligence) and Adrian Kaehler (Vice President of Special Projects)  worked together for at least a year, while employed by Magic Leap, to create and develop plans for a new company using “Magic Leap’s intellectual property and Proprietary Technologies” in violation of their various employment agreements.  According to the complaint, while at Magic Leap, Bradski was involved in projects that involved “deep learning techniques for robots,” and that Kaehler was “responsible for the definition and development of technologies of certain projects, as well as the technical vision, staffing, budget, and ultimate implementation of such projects.”  The complaint further alleges that Bradski “disclosed Magic Leap’s confidential information and trade secrets to third parties and specifically misrepresented to third parties that such confidential and trade secret information did not belong to Magic Leap.”

Magic Leap’s complaint is noteworthy in that it asserts trade secret misappropriation claims under the new federal Defense of Trade Secrets Act (“DTSA“), which was signed into law by President Obama only a few weeks prior to the filing of this suit.

Although the details of the allegations are somewhat vague at this point, more information will likely come to light soon.  Because the complaint also asserts trade secret misappropriation claims under California state law, Magic Leap must identify the trade secrets which were allegedly misappropriated with reasonable particularity pursuant to Section 2019.210 of the California Code of Civil Procedure.

magic leap-2In less contentious news, it was also reported in the past few days that the USPTO had issued a design patent, US D758,367, to Magic Leap for a Virtual Reality Headset.  The design patent contains eight drawings (one of which is shown to the left) and was filed on May 14, 2015.

However, Magic Leap’s VP of public relations, Andy Fouché, provided the following somewhat definitive statement to Tech Insider regarding the patent’s images:

“This is part of our R&D and experience validation, and is not at all representative of what our product will look like. Items that any company patents can be helpful to the entire process, regardless if they end up pursuing that path or not.”

So it appears that Magic Leap’s product will continue to remain a secret for now.

 

 

Sony’s HMD Patent Application

Earlier this year, at the Game Developers Conference in San Francisco, Sony announced that its virtual reality headset for the PS4 would launch in October 2016.  At GDC, Sony also demonstrated the social aspect of its VR systems, in which multiple players interacted with each other in a virtual reality environment.

Sony 163 Appl FIG 11

Last week, on May 12, the USPTO published Sony’s patent application, Sony Computer Entertainment’s U.S. Patent Appl. No. 14/996,163 (the ‘163 application).  The ‘163 application is simply entitled “Head Mounted Display,” claims priority to a provision filed in June 9, 2013.  The “inventive concept” of the claims here appears to be rendering a player’s hands into the virtual reality scene, as shown below in claim 17 (emphasis added).

17.    A method for operating a head mounted display (HMD), comprising,

providing the HMD having a head attachment portion and a viewing module coupled to the head attachment portion, the viewing module including an inner side having a view port into a screen configuring for rendering a virtual reality scene, and an exterior housing;

providing a communications module for exchanging data with a computer system, the computer system is configured to generate the virtual reality scene for the screen;

providing a depth camera integrated into the viewing module and oriented to capture depth data of an envrionment in front of the exterior housing; and

processing, by the computer system, the depth data captured by the depth camera to identify hands of a user wearing the HMD in the environment, wherein the hands are rendered into the virtual reality scene, the hands being tracked such that movements of the hands appear as movements of virtual hands extending into the virtual reality scene.

As evident from the claims, the rendering of the virtual hands relies upon data captured by a depth camera located on the HMD.  This is interesting because the depth camera appears to be technology that Sony developed as early as 2011 in response to Microsoft’s Kinect technology.  More information about Sony’s depth camera can be found here and here.

 

Valve’s Chaperone Patent Application

A key distinguishing “feature” of the Vive, a virtual reality system jointly developed by HTC and Valve, is room scale technology.  Room scale allows a VR system to track a user’s position within a physical space through the use of “lighthouses” placed in the corners of a room.  Room scale purports to create a more immersive experience, whereby a user can physically move about within her virtual environment.

The downside to all of this is that Vive users may run into walls … or worse.

Enter: Chaperone.  Chaperone is a feature of Vive, wherein graphical representations of physical boundaries appear when the user is about to collide with a wall. A recently published patent application reveals Valve’s attempt to patent the aptly-named feature to prevent such accidents (and perhaps avoid lawsuits like this).

Vive Chaperone Patent FIG 9

U.S. Patent Application No. 14/933,955, published on May 5, 2016, is entitled “Sensory Feedback Systems and Methods for Guiding Users in Virtual Reality Environments.”  The application is assigned to Valve, and claims priority to a provisional application filed in November 2014.  The application presently includes a single independent claim which recites, in part, “a method for warning a user of a head-mounted display of potential collisions with real-world obstacles.”  (The USPTO has yet to issue its first office action.)

The specification of the ‘955 application is an interesting read for VR enthusiasts (i.e., geeks) for other reasons.  First, for historical buffs, the application includes a photograph of an early HMD, Vive Chaperone Patent FIG 2which could be described as “less-than-flattering.”

Second, to define a user’s physical “play” space, the Vive setup currently requires a user to physically walk around the edge of the room with a controller in hand.  The specification of the ‘955 application discloses defining the boundaries of the user’s physical space through the use of “lasers or ultrasound.”  Could this be a feature of Vive 2.0?

Third, the specification also describes the “teleportation” game mechanic that is presently used in two room-scale games: the Lab and the Budget Cuts demo.  This game mechanic addresses the problem of locomotion within a “virtual space” (e.g., spacecraft hangar) that is larger than the real-world space in which the Vive system is setup (e.g., your home office).  It will be interesting to see if Valve attempts to file a continuation on this game mechanic, especially in light of Alice and the Federal Circuit’s recent decision in In re Smith.

Finally, it will also be interesting to see how the claims of the ‘955 application will change, if at all, throughout prosecution, especially in light of expectations that Oculus will be implementing its own room scale technology in the near future.

GeoVector v. Samsung

On May 5, 2016, GeoVector Corporation (“GeoVector”) sued Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (“Samsung”) in federal district court in the Northern District of California.  GeoVector’s complaint asserts against Samsung numerous patent infringement claims, trade secret misappropriation claims (under California law), Lanham Act violations and RICO violations.

According to the complaint, GeoVector was founded in 1987 by John Ellenby, a former employee at Xerox-PARC.  In 1990, John Ellenby and his son, Thomas, conceptualized and invented “the first augmented reality device which utilized data as to the device’s position and orientation to display relevant information to the user.”

GeoVector is the owner and assignee of U.S. Patent Nos. 6,037,936 (“Computer vision system with a graphic user interface and remote camera control”), 7,301,536 (“Electro-optic vision systems”), 7,916,138 (“Electro-optic vision systems”).

FIG 17

GeoVector alleges that, in December 2002, Samsung and GeoVector had a meeting in which GeoVector produced a “confidential slide deck demonstrating the possibility of integrating GeoVector technology into Samsung handsets.”  GeoVector also alleges that it disclosed to Samsung, in confidence, “its entire unpublished patent portfolio, including its early applications for augmented reality patents.”  Despite negotiations that continued into 2008, the parties never consummated a licensing agreement.  Subsequently, GeoVector alleges that Samsung began incorporating GeoVector’s technology into its Galaxy devices.

GeoVector begain sending numerous notice letters to Samsung in April 2013, notifying them of infringement, including claim charts.  GeoVector also alleges that Samsung wrongfully patented GeoVector’s same augmented reality technology.

GeoVector’s complaint is fairly detailed and also takes a few shots at Samsung’s past IP litigations (“Because Samsung regularly refuses to license technology without being sued, victims are forced to sue Samsung”), and includes a list of former “victims.”

 

Welcome to Field of (Di)Vision

Welcome to Field of (Di)Vision, a legal blog about the intersection between the technology of virtual/augmented reality and intellectual property laws.  Our blog endeavors to bring you the latest news and happenings from the VR/AR industry from a legal perspective.

Here are some of the things you can expect to find on this site:

  • Curated recent patent application publications and issued patents relating to the field of virtual reality and augmented reality
  • News from the VR/AR industry regarding IP disputes
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