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.
