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Cyberlaw Clinic Helps Challenge Bogus Online Gaming Patent

From Cyberlaw Clinic Director Phil Malone . . .

Yesterday, the Electronic Frontier Foundation formally challenged a bogus online gaming patent that threatened small businesses and innovators of multi-player Internet games.  Students from Berkman's Cyberlaw Clinic worked extensively for several years to gather and analyze much of the evidence that formed the basis for the EFF's filing with the United States Patent and Trademark Office (USPTO).

As described by the EFF, "Sheldon F. Goldberg was awarded the illegitimate patent for the method and system of playing games on a network,' and claims to own rights in all online gaming systems that use tournament-style play, advertising, and have real-time updates of ladder-rankings in multi-player games.  Goldberg has used this bogus patent to coerce licensing fees from numerous small businesses, demanding payments that are excessive yet less than potential litigation."

The reexamination request filed with the PTO demonstrated in great detail that the technology covered by Goldberg's patent was actually used extensively by other online gaming companies before Goldberg made his claim.  One of the key examples of such prior art was Netrek, one of the first online multi-player games.  Netrek is written mainly in open-source software, and its code development has been archived online. Berkman Clinical students did exceptional work locating and organizing critical evidence of this early Netrek history, as well as other proof of prior uses detailed in the request.

Hats off to Clinical students Darin Beffa, Elliott Davis, Derek Fahnestock, Devika Kornbacher, Agnes LI, and Nick Schunemen for their hard and innovative work that made this challenge a reality.

EFF was also assisted in its filing by Paul Grewal and Brad Waugh of Day Casebeer Madrid & Batchelder in Cupertino, California.  Grewal noted that "real innovation by others suffers in light of meritless claims like those in Mr. Goldberg's patent.  We are confident that the Patent Office will carefully review the arguments we have presented in our petition."

This reexamination request is part of EFF's Patent Busting Project, which seeks to challenge the chilling effects bad patents have on public and consumer interests.  The Chilling Effects Clearinghouse, led by Berkman Fellow Wendy Seltzer, has archived a marvelous example of Mr. Goldberg's claims on infringement of his patent.

So far, EFF's project has led the PTO to invalidate one patent covering a system and method of creating digital recordings of live performances, and to undertake three more reexaminations of other bogus patents.  The Berkman Cyberlaw Clinic is continuing to assist EFF with research and preparation of several additional requests for reexamination.

For the full reexamination request:

For more on the Goldberg Patent:

For more on the Patent Busting Project:

For the EFF's press release on the filing:

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