Pokémon GO infringes cloud architecture patent: Munich court ruling puts pressure on Niantic (Google/Nintendo) to settle with licensing firm K.Mizra

A few hours ago, the Munich I Regional Court's Seventh Civil Chamber (Presiding Judge: Dr. Matthias Zigann) announced its decision in K.Mizra v. Niantic: the wildly popular Pokémon GO mobile game infringes EP2433414, a patent on "servers for device identification services" that resulted from the research efforts of a reputable and sizeable Dutch organization named TNO (Nederlandse Organisatie voor Toegepast Natuurwetenschappelijk Onderzoe; Netherlands Organisation for Applied Scientific Research). The case numbers are 7 O 13977/21 and 7 O 10368/21. The defendants are Niantic entities in the U.S., UK, and Germany.

Thus far, US-based licensing firm K.Mizra hasn't sought an injunction--only a finding that is entitled to a damages award--but it could do so anytime. For the Pokémon GO community I hope this can be avoided, but as Juve Patent explained yesterday, "nothing has changed" about Germany's automatic injunction rule in patent infringement cases.

The court's press office has thankfully provided me with an anonymized version of the dispositive part of the ruling (the order in a narrow sense). Here's a screenshot of a key passage (click on the image to enlarge):

This comes as no surprise. At the end of the July 14 trial, Judge Dr. Zigann strongly encouraged Niantic--a Google/Nintendo joint venture, with Google's technology being particularly at issue in this case--to negotiate a settlement. Niantic has the right to appeal the decision to the Munich Higher Regional Court, but K.Mizra's infringement argument is rather strong (based on what was discussed at the trial), and the prior art cited by Niantic doesn't really seem to come close to the patented invention.

While it's unclear how protracted this litigation will become or whether it may even extend to other jurisdictions where members of this patent family have been registered (and which would take note of the Munich court's findings), K.Mizra is also asserting a patent against Samsung in Dusseldorf, targeting what is clearly an Android operating system functionality. That patent, too, was originally obtained by TNO. The Samsung case will go to trial in less than a year.

This is another significant win for the Wildanger firm. K.Mizra's winning lead counsel is Dr. Alexander Reetz, who handled matters in a calm but strategic and persuasive way. It was easy to follow his clearly articulated arguments. K.Mizra's lead patent attorney is Dr. Thomas Hell of Bosch Jehle). He and Dr. Reetz played and won as a team. I guess we'll hear about their work more often in the future.

Niantic is being represented by Quinn Emanuel's Dr. Marcus Grosch, who recently got mixed press, one of the reasons for which is that QE is the only patent litigation firm in Germany never to bring patent attorneys along to hearings and trials. That said, I wouldn't attribute QE's defeat in this case to its ironclad rule concerning patent attorneys: K.Mizra seems to have a pretty clear case, and this plaintiff's outside legal team apparently did everything right, so it may just have been impossible to defend Niantic here. But just last month QE also lost an appeal in a Netflix case. And it was two years ago to the day that the first of four German patent injunctions came down on QE client Daimler (the other three followed over the course of only 11 weeks). For a firm that states on its website that it has won 86% of all trials and arbitrations (not long ago they even claimed a 91% rate of success), the German patent litigation track record may very well be substandard. However, Wildanger may really have a hit rate at that level, or at least that's what I've recently seen in the cases I follow (examples: 1, 2).

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Munich court believes Pokémon GO infringes cloud tech patent, Judge Dr. Zigann encourages Google-Nintendo company Niantic to settle with K.Mizra licensing firm

When I learned about K.Mizra v. Niantic two months ago, it intuitively seemed like a very interesting non-standard-essential patent case to me. That first impression was more than validated by today's Munich patent infringement trial. The accused technology is the multi-player mode of Pokémon GO, which is operated by a Google-Nintendo joint venture named Niantic and the world's most popular game in the augmented reality (AR) genre. The patent-in-suit is EP2433414 on "servers for device identification services." The plaintiff, K.Mizra, is a patent licensing firm that has been assigned patents by major operating companies like IBM as well as a reputable and sizeable Dutch research organization named TNO (Nederlandse Organisatie voor Toegepast Natuurwetenschappelijk Onderzoe; Netherlands Organisation for Applied Scientific Research).

The panel is composed of Judge Dr. Zigann (Presiding Judge of the Seventh Civil Chamber of the Munich I Regional Court), Judge Benjamin Kuttenkeuler (the rapporteur in this case), and Judge Dr. Hubertus Schacht (who sometimes fills in to preside over hearings, which among other things led to the affirmance of the first Munich anti-antisuit injunction).

After scheduling a patent infringement ruling for August 18, Judge Dr. Zigann warmly encouraged that Niantic--the Google-Nintendo joint venture company that operates Pokémon GO--take a license, given that K.Mizra's complaint was hardly going to be rejected.

In all likelihood, the only question at this stage is whether K.Mizra will prevail

• on one or more method claims

  or

• on both its method and system claims.

The first scenario is the one Judge Dr. Zigann outlined during the first part of the hearing. K.Mizra's lead counsel--Wildanger's Dr. Alexander Reetz--subsequently gave the court potential reasons to conclude that the asserted system claim is indeed infringed within the territory of the Federal Republic of Germany. Territoriality is a non-issue for the method claim. The court did not indicate whether it might change mind about the system claim, but one way or the other, K.Mizra is on the winning track. If not for Germany's "loser pays" rule for the allocation and potential recovery of fees, the system claim's fate wouldn't even matter.

Niantic's counsel from Quinn Emanuel raised three claim construction arguments that are unavailing:

• The claim language refers to an application server and a correlation server. The application server in this case provides a game, and the correlation server identifies users who are standing next to each other and wish to play together. Niantic wanted the term "server" to be understood in the sense of a separate piece of hardware, but the court concurs with K.Mizra that it's all about the function. In today's cloud computing world, the distinction between logical and physical servers is key, and it makes even more sense in light of the description that says "the distinct server units may be [which means they alternatively "may not be"] constituted by servers having separate casings" (emphasis added)

• Niantic also disputed infringement because a "match message" does not go directly from one server to another (but through an end-user device). However, neither the claim language nor the specification supports that narrow reading.

• Yet another attempt by Niantic to narrow the scope of the patent-in-suit related to the digital messages. Niantic argued that the initial message involved a UUID, but later in the process something else would be sent.

  Dr. Reetz and his team (also including patent attorney Dr. Thomas Hell of Bosch Jehle) deserve credit for having convinced the court of their proposed claim constructions and infringement theories through their pleadings. Let there be no doubt about their strong performance at today's trial either. But it was Judge Dr. Zigann who made the best point in the claim construction context. He noted that it's not practical to require such messages as the one at issue in this case to be an identical bit sequence throughout a given process, pointing to the court's experience with codec patents. What a great example. It is indeed in the nature of codecs that the bit sequence changes (as a result of compression and decompression), which doesn't mean that there isn't some substantive continuity. That's an excellent analogy to today's patent-in-suit. (Munich is an increasingly popular enforcement venue for codecs.)

For now, K.Mizra is "only" seeking a judgment on the merits, which will entitle it to an accounting, subsequently to the receipt of which K.Mizra can calculate its damages claim and sue for a particular damages award. But as Judge Dr. Zigann noted, K.Mizra can at any point in time now bring an additional claim or injunctive relief. If K.Mizra did so with the lower court (instead of amending its complaint to that effect on appeal, which would be an option in Germany), it would have to bring an additional complaint, and Judge Dr. Zigann warned Niantic against the cost implications of such a case that K.Mizra would predictably win.

Niantic's invalidity arguments didn't get traction. To the extent that I was able to follow, it seemed that none of the prior art references came reasonably close, nor does there appear to be a case for intuitively combining two or more of them.

Under the circumstances, the only surprise today was that Dr. Reetz said Niantic had not sat down with K.Mizra yet to negotiate a license agreement. It actually seems that Google would have more than one reason to work constructively toward a solution. As I found out last month, K.Mizra is asserting another patent--which was also originally obtained by the Dutch research institute I mentioned further above--against Samsung, and if Samsung's phones infringe, then it's actually Google's Android mobile operating system that implements the patented technique.

Niantic was granted leave to file a post-trial brief, but the fact that the ruling is scheduled for five weeks from now--and three weeks after the deadline for that filing--shows that it's not really a difficult case for the court to decide. Come August 18, I'll try to find out more from the court.

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Patent licensing firm K.Mizra suing Pokémon GO maker Niantic (Google/Nintendo) over cloud architecture patent: Munich trial scheduled for July

The Landgericht München I (Munich I Regional Court) has informed me of a pair of patent infringement cases by U.S.-based patent licensing firm K.Mizra against Pokémon GO maker Niantic, a Google-Nintendo joint venture. The case numbers are 7 O 13977/21 and 7 O 10368/21 (Seventh Civil Chamber; Presiding Judge: Dr. Matthias Zigann), and the patent-in-suit is EP2433414 on "servers for device identification services."

The two cases will be heard on July 14. Counterintuitively, there is no prayer for injunctive relief in those cases, though I remember that Nokia didn't initially request an injunction against Daimler, but later amended its complaints accordingly. In German patent infringement proceedings, plaintiffs are even free to seek additional remedies during the appellate proceedings (as German appeals are rather broad in scope).

The name of the game is the claim--and claim 1 is usually the broadest one. This is what it covers (or just click here to skip the claim language):

A system for identifying proximate devices arranged for detecting a sensory identifier and transmitting request messages comprising representations of the detected sensory identifier, the system comprising:

• means for correlating representations of the detected sensory identifiers from the request messages received from the devices so as to match two or more of those devices, and

• means for carrying out an application involving devices that have been matched by said means for correlating representations,

wherein said means for correlating are at least one correlation server and said means for carrying out the application are at least one application server, the at least one correlation server and the at least one application server being distinct servers,

wherein the proximate devices are arranged to include, in the request messages, an indication of an application to be executed, the at least one correlation server being configured to compare the applications indicated by the request messages, and causing a transmitter to transmit the match message based on the match to an application server identified by the matching indications of the application in the matched request messages.

The TL;DR is that there are different types of servers,

• with one type having the task of identifying users who are in the same vicinity and

• the other providing the actual application that those geographically close users are using--and "sensory identifiers" (meaning something you can see, hear, smell...) are used to figure out whether users are really next to each other.

Pokémon GO was a blockbuster from the outset. A few years ago, Niantic added a "Buddy Adventure" feature. Here's a YouTube video from Santa Monica that wonders whether this is "[t]he FUTURE of Pokémon GO" and in which you can see the use of QR codes (such as on the title picture but also in the video, especially around 8m15s):

The user who initiates a multiplayer session then shows the QR code to others who must scan the code with their phones to join. The QR code is an imagine, so it undoubtedly represents a sensory identifier.

A quick Google search for information Pokémon GO's cloud architecture leads to--guess what--a Google blog post, "How Pokémon GO scales to millions of requests?"

When I became involved with patent policy in 2004 as a campaigner opposing the proposed EU directive on computer-implemented inventions (aka Software Patents Directive), I was an adviser to an open-source software maker (MySQL) and frequently raised the concern that open-source program code was available for inspection by patent holders looking to identify potential infringements. Reverse engineering often works as well, but it takes a lot more effort. Generally speaking, software makers can be too open for their own good if they reveal the inner workings of their products. Here, the defendant didn't open-source Pokémon GO in its entirety, but disclosed a whole lot of information in an interview published on a Google website. That wealth of information would normally require pretrial discovery in the United States. It may have been unwise to reveal so much. Also, Google's Kubernetes Engine, which is mentioned in that Google interview, is a piece of open-source software.

It's been more than nine years since I attended a Munich trial--before the same division, Presiding Judge Dr. Zigann's Seventh Civil Chamber--involving Google's infrastructure: Microsoft was asserting a patent against Google Maps and on the winning track with respect to infringement, but the patent was later deemed invalid by the Federal Patent Court. The Google Maps case raised a question of first impression: whether a cloud service that is partially provided by servers located outside of Germany can infringe the German part of a European patent. There have since been various German court rulings that have developed a certain standard for what constitutes an infringement in such setups.

Pokémon GO was a smash hit from the moment it launched and had to scale its server infrastructure to huge numbers of concurrent users more quickly than any previous game. What Google did was--and still is--admirable. I remember how at the height of the Pokémon GO frenzy there were groups of children running around trying to catch Pokémons. It's an augmented-reality game, and when I tried it out, I caught a first Pokémon on my desk and the second one in the garden. However, there was one aspect of it that I found highly objectionable (I didn't experience it myself but read about it): the random generator that decides where to place those Pokémons sometimes picked places like graveyards or private properties, resulting in trespassing or at least in inappropriate behavior. I believe it was highly irresponsible and reckless on Niantic's part not to ensure that Pokémons would be found in public spaces only.

Now Pokémon GO is facing what could be a serious and costly patent infringement problem. Google's go-to law firm for defending against patent lawsuits is Quinn Emanuel. The daughter of John Quinn (the "Quinn" in "Quinn Emanuel"), Megan Quinn, joined Niantic's board in late 2017 according to Wikipedia.

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