Nintendo’s patents were intended to combat Palworld

On September 19, 2024, Nintendo Co. issued a press release stating that it and The Pokémon Company have officially filed a lawsuit against Pocketpair, Inc. in the Tokyo District Court. As stated in the press release, “the lawsuit seeks injunctive relief and damages on the grounds that Palworld, a game developed and published by (Pocketpair), infringes numerous patent rights.”

Most people know what Pokémon is. Palworld, released in Early Access on January 19, 2024, likely represents the most direct Pokémon competition in some time. For context, just a month after release, Palworld has been played by over 25 million playerswhich equals the total sales of recent blockbusters such as The Legend of Zelda: Tears of the Kingdom and Hogwarts Legacy (both released in 2023).

Importantly, Palworld is a survival game developed and published by Pocketpair that “is set in an open world inhabited by animal-like creatures called ‘Pals,’ which players can battle and capture to use for base-building, traversal, and combat.”

While the news of this lawsuit is provocative in itself, the fact that Nintendo is suing for patent infringement and not copyright infringement further raises the level of interest (not to mention the interesting timing of the lawsuit in connection with the upcoming match in Tokyo Show ).

Some have speculated that Nintendo’s patent enforcement indicates that it has “given up” on pursuing copyright infringement claims. Given Nintendo’s notorious reputation, I don’t necessarily think Nintendo has completely given up the ability to sue for copyright infringement (whether in Japan or other jurisdictions).

Still, I think it might be a bit of a sled to claim that Pals look too much like their Pokémon counterparts in appearance. Therefore, as I detailed in my PatentDocs post from earlier this year, I’d be surprised if we saw Nintendo sue Pocketpair over copyright/trade secrets in the US (apart from the smoking gun regarding improper access to base 3D Pokémon models).

At this point, I think the more important question is whether Nintendo will continue to pursue patent litigation against Pocketpair in the U.S., similar to the Japanese patent litigation. This is a bit difficult to determine given the lack of information about the underlying Japanese patent lawsuit.

In recent years, the industry has moved away from patents, especially when it comes to in-game features. If Nintendo succeeds, perhaps this paradigm may come into question

As of this writing, Pocketpair itself still appears to be “unaware of the specific patents it is accused of infringing.” Therefore, unlike traditional U.S. patent litigation, it appears that a publicly available complaint that specifically lists each of the allegedly infringed patents is not currently available in the Japanese lawsuit.

Regardless, some made predictions on the basis of which they believed the Nintendo/Pokémon assets could be established: (i) joint ownership between the two co-plaintiffs and (ii) the timing of Nintendo’s patent application.

In particular, the Japanese patent attorney compiled a list of 28 possible patents, noting that the following patents issued in Japan – JP 7545191, JP 7528390, JP 7493117 and JP 7505854 – were particularly relevant. Based on machine translations, each of these patents covers various aspects of catching and/or riding “battle characters”, rideable characters, “characters” (e.g. Pokémon) using “player characters”.

Moreover, each of these patents was filed as a spin-off from pre-existing patent families After Palworld release and were expedited for release using Japanese accelerated examination procedures.

Taking the above into account, let’s use the four JP assets mentioned as a starting point. For comparison, there appear to be four U.S. application equivalents (i.e., applications filed with the U.S. Patent and Trademark Office that share a priority claim with at least one of the four JP assets above) – the U.S. application. No. 17/949,666 (“US Application-1”), US Application. No. 17/949,831 (“US Application-2”), US Application. No. 18/652,874 (“US Application-3”) and US Application. No. 18/652 883 (“US Application-4”).

Both US-App-1 and US-App-2 were filed in September 2022, so it is unlikely that they were filed with the specific intention of targeting Palworld (although they can still clearly be brought against Palworld for infringement ). HoweverUS-App-3 and US-App-4 filed in May 2024 (after the release of Palworld).

Even more interestingly, both US-App-3 and US-App-4 were submitted along with the Track One requests. Track One is a program of the United States Patent and Trademark Office (USPTO) under which an applicant pays a fee to significantly expedite the processing of his or her patent application (the USPTO attempts to provide the applicant with a final decision, which may be either an allowance or a final rejection, within a maximum of 12 months ).

Based on this information, it cannot be assumed that Nintendo filed US-App-3 and US-4 with the intention of targeting Palworld.

The first stand-alone claim of US-App-3 currently reads:

1. A durable, computer-readable data medium containing a game program which, when the computer activates an information processing device, causes the computer to perform operations including:

based on the received direction signal, determining the aiming direction in the virtual space; AND

in the first mode,
causing the player character to fire a catching item towards the target in order to catch a field character deployed on a field in virtual space, based on the input of the operation, and when the fired catching item hits the field character, performing a successful capture, determining whether the capture was successful ; AND
when the successful catch determination is positive, positioning the field character hit by the catching item in the player’s possession, and

in the second mode,
causing the player character to launch a combat character towards the target and causing the field character and combat character to start fighting against each other on the field.

Similarly, the first stand-alone claim of US-App-4 currently reads:

1. A durable computer-readable storage medium containing a game program that causes a computer or information processing device to provide execution, including:

controlling the player’s character in the virtual space based on the input data of the first operation;
in connection with selecting, based on the selection operation, a boarding facility that the player character may board and providing a boarding instruction causing the player character to board the boarding facility and bringing the player character to a state in which which the player character can move, wherein the boarding object is selected from a plurality of object types that the player character has;

in connection with providing a second input operation while the player character is in the air, causing the player character to board the boarding facility and bringing the player character to a state where the player character can move in the air; AND

while the player character is on board the boarding object, moving the player character on board the boarding object in mid-air based on the third operation input.

At first glance, it seems extremely likely that these claims were made to tease out aspects of Palworld. For example, without delving into the intricacies of claim construction, statement 1 of U.S. App 3 certainly seems broad enough to cover the behavior of Pal Spheres in Palworld.

Given that these assets seem relevant to potential litigation, let’s at least briefly look at the progress of these two patent applications at the USPTO.

Importantly, US-App-3 received its first Office share on July 19, 2024, and US-App-4 received its first Office share on July 31, 2024. US-App-3 was only rejected due to item ineligibility (35 USC § 101), while US-App-4 was rejected by another examiner for obviousness (35 USC § 103) (note that there was also a rejection for minor vagueness under 35 USC § 112(b) in connection with the dependent claim US-App -4). Nintendo will now have the opportunity to amend its claims and/or oppose the rejection to try to get the patent applications to the finish line.

I think we’re seeing how seriously Nintendo views the threat of Palworld

To avoid losing its Fast Track One status, Nintendo must file responses to these Office actions by October 19 and 31, respectively. So, we will soon find out how Nintendo plans to respond to examiners’ refusals.

If (i) Nintendo’s legal proceedings in Japan are reasonably successful and no global resolution is reached, and (ii) the claims contained in the above patent applications do not require significant modifications to be successful, Nintendo will undoubtedly have the opportunity to file a similar lawsuit for infringement of patents in the USA

These are, admittedly, two quite important “ifs”. Regardless, I think we’re seeing how seriously Nintendo views the threat of Palworld.

Of course, the patent applications discussed above represent only two sample assets of what could constitute an entire portfolio of actionable patents. Still, given their importance to Palworld, I think it shows that Nintendo and The Pokémon Company are serious about acquiring/maintaining patents as an important part of their intellectual property arsenal.

The video game industry has moved somewhat away from patents in recent years, especially when it comes to in-game features. However, if Nintendo succeeds here, perhaps this paradigm can be challenged.

Overall, the Palworld saga is moving fast and I’m very excited to follow what happens next.

Andrew Velzen is an intellectual property expert and associate at MBHB law firm who advises and assists clients on intellectual property issues related to a variety of technologies, including machine learning and artificial intelligence.