San Francisco - Electronic Frontier Foundation (EFF) has won reexamination of a bogus online gaming patent from the U.S. Patent and Trademark Office (PTO) -- the fifth successful reexamination request from EFF's Patent Busting Project.
Sheldon F. Goldberg was awarded the illegitimate patent for online gaming systems that use tournament-style play, advertising, and real-time updates of ladder-rankings in multi-player games. Goldberg has used this bogus patent to coerce licensing fees from numerous small businesses.
In the reexamination request, EFF along with Paul Grewal and Brad Waugh of Day Casebeer Madrid & Batchelder show that the technology covered by the Goldberg patent had been widely disseminated in the public domain for years before Goldberg made his claim. The Patent Office took quick action on the request, recognizing this substantial new question of patentability less than a month after the request was filed.
"The patent process was designed to encourage invention, investment, and disclosure and was not meant to be used as a tool to threaten legitimate businesses," said EFF Intellectual Property Fellow Emily Berger. "Reexamination proceedings like these are essential in protecting the public from patents that should never have been granted in the first place."
This reexamination request is part of EFF's Patent Busting Project, which combats the chilling effects bad patents have on public and consumer interests. So far, the project has killed one patent covering a system and method of creating digital recordings of live performances. Four more reexaminations, including this one, are under review by the USPTO due to the Patent Busting Project's efforts.
"Undeserved patents cause significant harm to innovation and competition in the information age," said Paul Grewal. "We are pleased that the PTO recognized the substantial questions of patentability raised in EFF's request and look forward to the PTO's ultimate decision on the merits."
Students from the Cyberlaw Clinic at the Berkman Center for Internet and Society at Harvard Law School also carried out extensive research for the reexamination request, helping locate much of the critical evidence of prior use of technologies covered by Goldberg's patent. Members of the Netrek online gaming community also provided technical analysis and legal declarations that figured prominently in the PTO's decision to grant EFF's reexamination request.
For the full reexamination order:
For more on the Patent-Busting Project:
Intellectual Property Fellow
Electronic Frontier Foundation
Day Casebeer Madrid & Batchelder