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Nintendo recently argued that mods for games can't be used as examples of 'prior art' to invalidate patents like the ones it's using in its lawsuit against Palworld developer Pocketpair, in a take that one US patent law expert says is "so wrong, it hurts."
Nintendo and The Pokemon Company's lawsuit against Pocketpair has been ongoing for over a year now, after the companies alleged that the survival game devs had infringed upon multiple patents, including ones related to Poke Ball-style catching mechanics and boarding and riding mounts. One of Pocketpair's defences against these claims involved pointing to examples of 'prior art' – evidence that an invention was already known prior to a patent's filing – which can determine if an idea is novel enough to be patented.
One of the examples highlighted by Pocketpair was the Dark Souls 3 mod Pocket Souls, a Pokemon-like mod for FromSoftware's 2016 action RPG. However, Nintendo argued that mods don't count as prior art since they can't stand alone without their base games, but speaking to Grokludo in a video interview (below), US patent law expert and Banner Witcoff IP litigation and patent prosecution partner Kirk Sigmon argues that "Nintendo is so wrong, it hurts."
Adding that "I don't know why they made that argument," Sigmon notes that "there's some nuance in Japanese law that might dictate where they're coming from," but generally speaking, "when we're talking about what we call prior art for the world of patents, it doesn't have to be perfect. In fact, it doesn't actually have to be functional, right? There have been plenty of instances in which prior art has been used that is not even a computer program in the first place."
One previous unrelated example of this, he says, was in an inter partes review (basically, a trial to review how patentable something is) which used a Dungeons & Dragons manual as prior art, "which is not a video game at all, but it's talking about character sheets and things like that for the purposes of that IPR."
Sigmon continues: "You don't have to go find prior art that's a specific nature. Like, it doesn't have to be marketed. Oftentimes the minimal requirement is that it's written down somewhere. Like, you have to prove it existed, right? [...] But generally speaking when we're showing prior art it's some document somewhere and we're just validating the date in which it came out.
"So Nintendo's argument that mods are somehow different, to me, is the most asinine thing I've seen, because I know what you're talking about, it just… I don't get where they're coming from. I think it smacks to me as someone who doesn't understand computers at all, honestly."
Furthermore, Sigmon argues that from his perspective, "mods are valuable," and "if you're creating a mod for a game that has certain functionality, that's all that matters."
"For sure there have been instances in which I've been in fights with the patent office or I've been in litigation where the references we've used have been things that were never actually made, and that had numerous real world flaws, but that doesn't prevent them from being prior art, at least in the United States," he continues.
"There may be some nuance there in Japanese law that I'm not aware of. I've done quite a bit of Japanese patent law myself, but you know, there may be some nuance there," Sigmon acknowledges. "But in general I think that that argument is a loser. It's one that is fixated too highly on form over function, which is just a bad idea, because where do we end that dispute, right? There are plenty of Unreal Engine 5 games, are those mods too, just because they're running on a singular engine? It gets into this weird dispute that no one knows what the hell's going on anymore. So, from my perspective, it's just a loser argument from Nintendo. I think that they're trying to throw a Hail Mary because there's so much out there."
Furthermore, Sigmon speculates that "I think deep down inside they know these patents are junk. They don't want them to be invalidated, they don't want a bad mark on their record. But, mods? That gets into this weird definitional case, I would never make that argument in a million years."
Of course, the lawsuit is still ongoing, so it remains to be seen what will come of these arguments in the end, anyway. But at least according to Sigmon, Nintendo's dismissal of mods in the prior art counterargument might not be so simple.
