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University of Maine School of Law
 Chilling Effects Clearinghouse > Patent > Notices > Claiming computer solitaire is patented (NoticeID 1070, http://chillingeffects.org/N/1070) Printer-friendly version

January 20, 2004

 

Sender Information:
Sheldon Goldberg
Sent by: [Private]
Grossman & Flight
Chicago, IL, 60606, US

Recipient Information:
[Private]
Goodsol Development Inc.
Springfield, IL, 62791, USA


Sent via: postal mail
Re: Claiming computer solitaire is patented

Re: US Patents Nos. 5,823,879, 6,183,366, and 6,264,560

Dear Mr. Warfield:

We represent Mr. Sheldon Goldberg with respect to the above-indentifed patents, collectively referred to as "the Goldberg Patents". It has come to our attention that goodsol.com, an Internet-based service provided by Goodsol Development, Inc., infringes the Goldberg Patents. In addition, Mr. Goldberg has a fourth U.S. patent that is about to issue, several continuation applications currently pending in the U.S. Patent Office, and several foreign patents and pending foreign patent applications. Copies of the three Goldberg Patents are enclosed for your review.

For example, claim 18 of the '560 Patent covers the playing of a card game wherein an ordered collection of card representations is generated in which each card representation is eligible for play in a game of the card game. Multiple players may play the card game, and their selection of card representations may overlap in time. A first player may cease selecting card representations while a second player continues selecting card representations after the first player ceased. A second player may terminate a second game after which the first play may continue playing the first game while the second player commences a third game, and the first game and the third game may overlap in time.

Goodsol.com enables users to play a card game, such as solitaire, in which an ordered collection of card representations is generated where each card representation is eligible for play in a game of solitaire. Multiple players may play solitaire, and their selection of card representations may overlap in time. Also, a first player may cease playing, while a second player continues. Then the second player may terminate the second game, while the first player resumes play of the first game, and the second player begins playing a third game of solitaire, which may overlap in time with the first game.
This is just one example of how Goodsoll Development's services infringe the claims of the Goldberg Patents.

Additionally, many of the claims of the Goldberg Patents are not limited to games. For example, some claims of the Goldberg Patents are broadly directed to network-based presentations, i.e. changing advertising such as pop-up advertising or rotating banners, in connection with network services. This, in addition to goodsol.com, many other aspects of the Internet-based services provided by Goodsol Development, particularly those services employing advertising presentations via pop-ups, banners, etc., may be of interest.

Our client's desire is to resolve this issue amicably and efficiently. To that end, our client would agree to provide an appropriate non-exclusive license in exchange for a one-time lump-sum payment or, alternatively, an annual royalty for the life of the Goldberg Patents. Please respond to this letter in thirty (30) days if your company is interested in discussing a license under the Goldberg Patents.

Sincerely,
Lee F. Grossman

 
FAQ: Questions and Answers

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Question: What is a patent?

Answer: A patent is a form of intellectual property. A U.S. patent is a right granted by the United States Patent and Trademark Office to an inventor to exclude others from making, using, selling, offering for sale, or importing an invention for a limited time. In the U.S., Patent law is driven by the language of the Patent Act, 35 U.S.C.


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Question: Who may own patents?

Answer: The presumptive owner of an invention is the human inventor(s). The inventor may transfer ownership to anyone (including a corporation). Employees often assign the rights to their invention to their employers as part of their employment contracts.


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Question: What does it mean to "infringe" a patent?

Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent.


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Question: What are the requirements for patent protection?

Answer: To qualify for patent protection, an invention must be new, useful and non-obvious.


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Question: What is a "continuation"?

Answer: Applicable mainly in the US, continuations are second or subsequent applications which are subsequently filed while the original parent application is pending. Continuations must claim the same invention as the original application to gain the benefit of the parent filing date.


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Question: How can I search for a U.S. Patent?

Answer: Issued U.S. patents can be found on the United States Patent and Trademark Office website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/.


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Question: How can I search for foreign patents?

Answer: Several online search services are available to find foreign patents. A collection can be found here: http://www.library.okstate.edu/patents/foreign.htm.


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Question: What are patent "claims"?

Answer: A patent consists of an abstract, a description of the invention, disclosures of prior art, drawings, and one or more claims. The claims are the only truly enforceable part of a utility patent, and they define the property right owned by the patent holder. They are written in technical language, and must embody subject matter that is within the scope of patent law, is novel and is not obvious. The more broadly written the claims, the less likely they are to avoid rejection or invalidation on the grounds of obviousness or anticipation by prior technology. The more narrowly written, the less likely a competing technology or device infringes the claims. To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim.


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Question: What are the elements of a claim?

Answer: Patent claims generally contain an introductory paragraph called a "preamble," which is followed by a series of phrases called "elements." Elements can be recited as a means or steps for performing a specified function, but elements recited in this way may be interpreted more narrowly than if recited by name, structure or as a defined step.


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Question: What can be patented?

Answer: [not yet answered]


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Question: What is "prior art"?

Answer: Publicly disclosed inventions, including patented inventions, are known as "prior art" that can be cited against a new patent applicant. Publicly disclosed inventions are considered prior art without regard to where (United States, Europe, Asia, etc.) or in what form the public disclosure occurred (a journal article, an archived PhD dissertation, an online publication).


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Question: What happens if prior art is not disclosed in a patent application?

Answer: If a patent applicant intentionally fails to disclose relevant preexisting technology of which he or she was aware in his application, the patent could be invalidated on the grounds that the applicant engaged in inequitable conduct. Intentional failure to disclose can be inferred from evidence that the patent applicant was aware of the undisclosed technology and knew that it was material.


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Question: What are the consequences of being found to have committed patent infringement?

Answer: A patent owner may recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be "willful." The patent owner may also be entitled to enjoin further use and sale of the patented invention.


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Question: What may not be patented?

Answer: The following subjects are not entitled to patent protection:


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Question: If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?

Answer: For years, software was considered outside the scope of patent protection to the extent based on mathematical algorithms, as mathematics is the basic working tool of contemporary science and technology and algorithms can be natural laws. In 1981, the Supreme Court held that software-related inventions are not per se to be excluded from patent protection simply because the process of performing the program's function may involve underlying mathematical algorithms. Software uses a non-physical process by operating electronically through the utilization of a mathematical equation (algorithm) to control the output of the computer program. Mathematical algorithms have a functional application in computer programs, and thus can be protected under the Patent Act. To use an example from physics, electricity was not patentable, but the way in which electricity transmits information may be patentable.


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Question: Can software technology be protected by patent law?

Answer: Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example).


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Question: What is a business method patent?

Answer: A business method patent is a specific type of software patent on a computer implemented way of transacting business. As in the case of other software patents, business method patents can have process claims in the form of a sequence of steps comprising the business method carried out using a computer system, the system configuration defined by the software for carrying out the business method, or an article of manufacture, such as a CD having the software for carrying out the business method stored on it. Some business method patents are controversial because they appear to cover otherwise conventional business techniques, such as auctions, when implemented on the Internet or other networked computers. Other business method patents have been allowed without considering the best prior art and may be overbroad.

Patents have issued on methods and systems covering -- or purporting to cover -- such things as: all Internet-like browser/display systems (to Prodigy Services Company); reverse auctions over the Internet (to E-Bay); placing a purchase order via a communications network (the "one-click" patent to Amazon.com), and the like. Many computer program and so-called "business method" patents have been challenged as invalid and improvidently granted on the grounds that the innovation lacks sufficient uniqueness or inventiveness. Nonetheless, because a patent can confer broad and powerful rights upon its owner, and once issued is presumptively valid, patent owners are attempting to enforce their rights against rival software developers or website operators.


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Question: What are the defenses to patent infringement?

Answer: There are two basic lines of defense: non-infringement and invalidity.

Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing.

Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent.


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Question: Does it matter if infringement is accidental or innocent?

Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement.


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Question: What does it mean to obtain a license for a patent?

Answer: A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner's rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a "license," a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties.


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Question: How long is a patent's term?

Answer: For patents filed on June 8, 1995 or later, the protection lasts for 20 years from the date the patent application is filed. For patents filed prior to June 8, 1995, the term is 17 years from the date of issuance or 20 years from the date of application, whichever is longer.


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