“I am Just Developing a Smart Phone App; I Don’t Need to Worry About Patent Infringement.” Sure… Go With That
Over the years I have learned that every app developer who creates a totally new app from scratch feels it must be patentable, while every app developer who has created an app using the ___ app as “inspiration” believes the ___ app couldn’t possibly be covered by patent protection. However, this is often true with product development in general and is not limited to those developing apps. Either position may be true, but shooting from the hip to arrive at your position will cost you in the long run.
This week an interesting golf patent infringement lawsuit was filed concerning a golf scoring app, and I have to admit that I have not heard of either Sandbox Software, LLC or 18Birdies, LLC. Click HERE to read the full patent infringement Complaint. The patent at issue is USPN 9737803 titled “system and method for gaming utilizing a mobile device,” which describes the invention as:
A method and system (10) is provided for playing an interactive mobile device based game system though a communication network. The communication network includes at least one system central server (13) and database (14) accessible to the internet or other communication networks. The system further includes any number of mobile devices (15), (16) and (17). Each mobile device includes software or a software application for communicating with the system server. In playing the game, users or players accrue points or otherwise advance in the game as they compete or obverse events which occur in real life situations in their geographic location. The events are entered into the central server and verified by communicating requests from the central server to the mobile devices of other players of the game.
The Complaint explains:
- On August 22, 2017, the United States Patent and Trademark Office duly and lawfully issued U.S. Patent No. 9,737,803 B2 (“the ‘803 Patent”) to inventor Marion O’Neill Lee and Jared Brandon Emrich for the invention entitled “SYSTEM AND METHOD FOR GAMING UTILIZING A MOBILE DEVICE.” (See Exhibit A, Plaintiff’s U.S. Patent No. 9,737,803 B2.)
- The ‘803 Patent discloses and claims, inter alia, a method of playing a mobile computer device based game and a mobile computer device based game.
- The ‘803 Patent is currently in full force and effect. In accordance with 35 U.S.C. § 282, the ‘803 Patent, and each and every claim thereof, is presumed to be valid.
- All rights, title and interest in and to the ‘803 Patent have been assigned to Sandbox Software, which is the sole owner of the ‘803 Patent.
- Defendant 18Birdies promotes, offers to sell, provides and sells a golf related software application (“Accused Product”), which infringes, includes and/or practices one or more of the inventions claimed in the ‘803 Patent. (See Exhibit B, which shows claims 1, 5 and 10 of the ‘803 Patent and a comparison utilizing photographs to the 18Birdies’ Accused Products appearing upon two mobile computer devices)
- On May 15, 2018, Sandbox Software sent 18Birdies a cease and desist letter outlining the infringement of the ‘803 Patent.
- On June 20, 2018, Sandbox Software sent to counsel for 18Birdies an email outlining the reasons 18Birdies is liable for indirect patent infringement; information requested by counsel for 18Birdies.
- On August 1, 2018, 18Birdies responded to the cease and desist letter and denied infringement of the ‘803 Patent.
- The Accused Product infringes at least independent claims 1, 5 and 10 of the ‘803 Patent.
- As shown in Exhibit B, incorporated herein by reference, the Accused Product infringes claim 1 of the ‘803 Patent because the Accused Product preforms all the steps recited in the claimed method, either directly or indirectly.
- Claim 1 recites, in part, “[a] method for playing a mobile computer device based game based on a plurality of game related events which relates to the observation of another player’s action.” [‘803 Patent at 4:38-40].
- 18Birdies’ Accused Product is a game including a method for playing a mobile computer device based game based on a plurality of golf game related events which relates to the observation of another golf player’s action. (Ex. B, p.1)
The referenced “Exhibit B” essentially explains the issue.
I have 2 issues with this situation. First, it is depressing to think that both sides will spend more on legal fees concerning this litigation than either will pocket from sales of an app covered by the patent at issue, and this is probably true even if the case settles within 2 months! Second, I just shake my head when I think of a golfer, probably standing 10 feet way from his competitor, calling a penalty via smart phone. Whether you are an inventor or a golfer, don’t let emotion guide your actions.
Dave Dawsey – A Patent Infringement Attorney
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