What Nintendo's Aggressively Bad Patents REALLY Mean | Extra Credits Gaming

Recently, you might have heard about Nintendo receiving two new patents. The first covers a riding and flying system that many thought might have been a shot aimed at Pal World, and the second, and scarier in my opinion, covers aspects of summoning and battling creatures such as in Pokémon video games. Then the internet did its thing. Gamers like myself were furious, game makers were terrified, and attorneys were, well, we'll get to them. So, I wanted to find out what the heck does all of this mean? Can Nintendo really do this? And how might these decisions affect the games industry for years to come? And the answers we found may surprise you. Enjoying the return of Extra Credits? Then please consider supporting us over on Patreon. Real quick up top, please welcome guest writer for this episode, Aaron Jacobs, a partner at the law firm Prince Lobel Tye with 25 years of patent litigation experience, a teacher of a patent trial practice course, and most importantly, our studio director Jeff's best man and

D&D party member. Glad to have you in our tavern, Aaron. Ooh, but also he did ask us to say that all of this is our interpretation and not legal advice. So, please do not disbar him. Thank you very much. Okay, so before we can figure out what Nintendo's patent means, first, let's talk about what a patent is. In short, it is a government grant that gives somebody the right to exclude everyone else from doing the same thing. That's it. Basically, it's a monopoly, and it's usually even more boring than the game. Ooh, I went there. Still playing a game from like 15 years ago. But if the patent owner wants to enforce its monopoly, it has to sue anyone it thinks is infringing in federal court. And that is where patent litigators like Aaron come in. And fun fact that I didn't know, it turns out patents are essentially laid out in the US Constitution. Yeah, in Article 1, the founding fathers gave Congress the power to promote the progress of science and useful arts by securing for limited

times to authors and inventors the exclusive right to their respective writings and discoveries. Neat. Next, we should talk about what can be patented. Well, according to patent law 101, that's not a cute euphemism. It's literally section 101 of the patent statutes. You can get a patent on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Basically, you can get patents for new things and new ways of doing things. But, the Supreme Court has also said there are some things that you can't patent. You can't patent laws of nature, natural phenomena, and abstract ideas. Now, to figure out if you're trying to claim abstract ideas, you first figure out if the patent is directed to an abstract idea, like say method of investing money. If that's the case, you could see if there's an inventive concept that takes it out of abstraction. If so, patentable. If not, no. And, of course, that whole last section probably has all of you patent attorneys screaming into your pillows

right now. And, Aaron would definitely hand out F's to any of his students that said they could easily tell the difference between claims that are abstract and those that aren't. Yeah, turns out it is incredibly complex, more so than we have time to cover here. So, that is why we're going to stick with the broad summary above for this episode. Anyway, Aaron is fairly sure that you can get a patent for something like a new type of table, or you can get a patent on a new method of building a table, but you cannot get a patent on the basic math used to build a table, or ways of investing money specific to table making companies. Also, courts have found that things like dice games and wagering games using a deck of playing cards were unpatentable, and courts have found that patents covering rules in computer games were also unpatentable. But, for a moment, let's circle back and say we just want to patent that table that I brought up before. Because I got to tell you I got some sick ideas. How do we do that? Well, first, we write and then file an

application with the United States Patent and Trademark Office, or PTO. The application has a specification, which describes in writing what has come before and what our new ideas are. It will usually have drawings and figures to help clarify our intent, and it will have claims, our precisely worded statement outlining what we want to, well, claim as ours. Using fancy lawyer words, Aaron explained that the claims define, quote, the meets and boundaries of the patent holder's right to exclude, sort of like how a title to land describes the exact boundaries of the property. Then the Patent Office begins reviewing and rejecting claims. The applicant usually has to amend these claims, and if the applicant is stubborn enough, the PTO eventually issues the patent in a process called patent prosecution. No, we're not talking about putting patents in jail, although that would be more interesting, I think. Basically, the application includes our ideas, which stay pretty consistent during the application process, but our

right to exclude others from doing what we patent is defined by the claims. Those can and usually do change during the patent prosecution, getting more and more narrow as we go. So, back to our table patent. In our specification, we describe this neat new thing we've come up with, tables. There are round tables, square tables, hexagon tables, and so on. There are pedestal tables and tables with legs. There are red tables and blue tables. Then in our first claim, we claim a table using these fancy patent words you see on the screen right now. But remember, we can only get a patent for something that is new. So, when the examiner at the PTO finds a table in a catalog that was mailed before our application was filed, she rejects our claim. That catalog is what's known as prior art. As the name suggests, it's anything that was publicly available before we filed our application. The catalog has tables, and so that catalog anticipates the claim. Anticipation is legal jargon for the idea that every bit

of the claim is found in a single prior art reference. So here, my table claim is anticipated because the catalog has my one and only requirement, tables. So we go back and amend our claim. We look at our application and decide what we are excited about are square tables. So we add this lingo. Every time we add to the claim, we are subtracting from what we can exclude others from doing. Now we only exclude people from building square tables. All other types of tables cannot infringe on our patent. Unfortunately, the examiner flips through the catalog again and finds a square table. So my amended claim is anticipated. So we amend it yet again to add four legs as a requirement. Now we can't go after pedestal tables, but the examiner finds yet another catalog, and this one has four-legged round tables. She rejects the claim as obvious between the square tables in the first catalog and the round four-legged table in the second catalog. The word obvious is more of

that legal jargon. It means that our claim would have been, colloquially, obvious to combine the tables from the two catalogs to come up with a square four-legged table. And dammit, who knew they collected this many furniture catalogs? So we amend again and limit it to RED TABLES. HAHA! The examiner can't find any square four-legged red tables even combining the catalogs. So we get a patent. But of course, our claim only covers square four-legged red tables. But what if we want to cover green tables? Well, this patent can't, but we can file what is known as a continuation. Continuations let us continue to get more patents from these same specification and drawings. It simplifies the process as we can point to our previous patent and say, that thing we already got, but expanded to cover this new idea. More on that later. Okay, so now imagine we've just spotted someone making a square four-legged red

table and we've decided to do our patriotic duty as Americans and sue them into oblivion for infringement because we believe our patent excludes them from making the type of table we patented. What specifically happens in this situation? Well, they can argue that their tables don't infringe. For example, they could say that their tables aren't red, but more of a burnt orange and they could argue that my patent shouldn't have been issued in the first place because the idea wasn't new enough. They could point to tables that existed before my application like square four-legged tables that are green and round four-legged tables that are red and say that it would have been obvious to combine those two to arrive at my patent. Or they can file an inter parties review or IPR. In an IPR, anyone can go back to the patent office and say that the patent shouldn't have been issued because of prior art that the examiner didn't find. If the patent office decides to institute an IPR, then the court will usually pause the litigation to let the patent office do its thing. The patent office will then

do a mini trial on the patent's validity and decide whether to cancel it. If the claims are canceled, the lawsuit is over since the patent no longer exists. If not, it is back to the litigation and I know that is a lot of information to parse. Actually, speaking of that, Erin, how long do you think this whole process will take? Up to 3 years for an IPR and then four more for litigation? And an IPR costs $500,000 and up to $2,000,000 for litigation on just one patent? That is a huge yikes big enough for me to want to smash someone through my table I just patented and maybe I actually add that to my patent. Wait, no. Wait, I'm losing the thread. Okay, so I know that that foray into my burgeoning woodworking business was a lot of setup, but it gives us the perfect context to talk about the Nintendo patents. So, let's dive into both. Their September 2nd patent lists Shigeru Miyamoto as the inventor, and his application was first filed in Japan in August of 2022. Therefore, anything that came before August 2022 is prior

art and could invalidate the patent. Anything that comes after would infringe on this patent. Nintendo filed the US application in March of 2023. Side note, each country and the European Union has its own system for handling patents. In the patent office's first response to the US filing, get this, they straight-up allowed the claims. Y'all, this is deeply weird. No rejections or even comments on whether this computer game claimed patentable subject matter. No discussion of prior art, nothing. Kirk Sigman, in an article in PC Gamer, referred to this as an embarrassing failure of the US patent system. And this non-legal animated narrator would agree. But, what did Nintendo actually get out of this patent? As it turns out, not a lot. Okay, here's claim one. Now, remember, words in the claims are important. If you don't do even one of them, you don't infringe. Like, remember our patent on tables? If your table was blue or green or chartreuse, you didn't

infringe. So, keep that in mind as I give you a line-by-line of this claim translated into layman, which I happen to speak fluently. Here we go. A computer with a game, the game does a thing using the computer's processor, move a trainer or avatar in a virtual field based on user input, a sub-character, aka Pokémon, appears on the field based on the user's input, such as throwing a Pokéball. When there's an enemy character where the trainer's Pokémon is, the Pokémon and enemy battle based on user's inputs. When the enemy character is not where the Pokémon is, move the Pokémon based on movement instructions toward the enemy character. And when the Pokémon gets there, automatically start and run a battle where the Pokémon's fight. Now, to infringe on this, a game in question would have to do each one of these things. So, if you can't control your trainer's movement, no infringement. If the player can only deploy their Pokémon

onto a battlefield where an enemy waits, no infringement. If the Pokémon doesn't move automatically to a distant enemy, no infringement. Or after moving, if the Pokémon asks if it can battle, no infringement, and so on. So, kind of like, okay. Breaking news, while we were animating this episode, the just installed director of the PTO personally ordered a re-examination of the Amari patent. Aaron is still trying to come up with adjectives to explain how bonkers this is, and we'll be talking more about this later in the episode, which we return you to now, already in progress. That's what news people say, right? But what about Nintendo's patent that was issued before on September 9th? That one lists Kazumasa Iwao as the inventor, and was first filed in Japan in December 2021 and the US in September 2022. That application led to a patent number 12,246,255 in March of 2025, which no one really

seemed to care about when it came out. Before that patent came out though, Nintendo filed a continuation. Remember, that's where you take a patent you're already getting and ask to add different claims. And that led to the new September 9th patent, number 12,409,387, which everyone seems to care about. The US Patent Office's response to the second Iwao patent was slightly less bonkers than the Amore patents, but truly just slightly. The examiner rejected the claims the first time around based on prior art or things that were publicly available. Again, no rejection on patentability mind you, and after several rounds of amendments narrowing down their claims to exclude the prior art, the patent was issued. Here Nintendo actually got a bit more. Here is claim one. So, really it's a lot of words to say something deceptively simple. Layman's degree don't fail me now. Here we go. Mhm. A computer with a game. Control a

trainer or avatar in a virtual space based on user input. The user selects a boarding character like a mount and the trainer boards it and can move in the virtual space on the boarding character. The trainer owns multiple mounts. The trainer can capture and then own characters. While the trainer is in the air, use different user inputs to board a flying mount and now the trainer can move in the air and while the trainer is on the flying mount, move the trainer through the air based upon another different user input. All right, so what's going on here? Well, let's say that we're in a Pokémon type game based on the bit about being able to capture characters. You use one form of controls to move the trainer around. There are at least two boarding characters or mounts the trainer can board. The first apparently can have any form of locomotion, ground, air, water, or cliff. The second boarding character though is a flyer. When the trainer is in the air, flying, falling, jumping up the ground, whatever, input a different type of command to board a flyer, the

trainer can then fly using a third set of commands. That does seem pretty broad. It also seems like it might have been written to cover what they thought Palworld might do, which was announced five months before the patent was filed. But that is allowed. If your patent application was filed before the accused system was made public, you can write claims to cover specific products. Yippee! Here a few things stood out. First, these patents seem like the types that should have been at least questioned on that patentability ground that had lawyers screaming into pillows before. When claims like this get through without a single question about patentability, they're either super impressive or super suspect. This is close enough to other claims that were invalidated by courts that it seems like it should fall into the super suspect category. Second, the fact that the Amore patent issued without even a single rejection is mind-boggling. Aaron

even turned to a thesaurus to find a better word for it. Amazing, argle-bargle, astonishing, breathtaking, extraordinary, incredible. And that's just from the first half of the alphabet. When claims get through without even a single rejection, they are also either super impressive or super suspect. Third, he pointed out that the Amore patent claim is really, really narrow. How often are you going to do those specific things? And even if you were going to do that, this brings up the question of damages. When a patent owner sues, it can try to get lost profits or a reasonable royalty. For lost profits, the owner has to argue that it would have earned some of the infringer's profits but for the infringement. So, would anyone really choose one game over another because of this? If not, then the owner is limited to a reasonable royalty, which a jury decides. And really, how much would anyone pay to be able to include this tiny aspect into a game? Meanwhile, the

Owayo September 9th patent claim is really, really broad. It seems like it covers having a trainer who can board a flyer when the trainer is in the air, but that's its own problem. Now, there's an old word salad saying in patent law, that which infringes if later, anticipates if earlier. Think about it like this. An application is filed at a point in time. The Way Out Japanese application was filed on December 22nd, 2021. A Pokémon-type system launched on December 23rd that does all of those things of the claim infringes. But if that exact same Pokémon-type system came out on December 21st, then it would invalidate the claim because it was already public and is therefore prior art. And how many games out there do you think had a feature where a character could capture mounts, one of which was flying and had to be mounted when the user was off the ground? Even if we ignore the ginormous headache of patentability, the Amory patent is super easy to avoid. For example, if the game

requires the user to direct the Pokémon-type creature toward the things it's going to battle, no infringement. Heck, even the A Way Out isn't that hard to get around. The story of this patent caught fire when people learned the patent claim included the idea of capturing and owning characters, right? But in truth, that's just one small bit of a much, much larger claim, and all of the words are important. Like if you just use the same user input for moving the character, regardless of whether they're on the flyer, there's no infringement. It could be that simple. Plus, there's a good chance that someone, maybe even one of you, will find prior art that does all of the things and give it to any company that is accused of infringement. But on the flip side here, if all of that is the case, you got to wonder why Nintendo went to all of this timely and expensive trouble. Bingo, bud. Occam's razor would suggest Nintendo is using the threat of patents to block future competitors, especially

ones with modest development budgets. Because even if those competitors think they might win the lawsuit or IPR, the cost of doing so would be much too high to handle for a smaller up-and-coming company. And just speaking for me personally here, may I say not a great look, Nintendo. We break in again to elaborate on the breaking news we already broke in about before. As we mentioned, a few weeks after we went into production on this episode, the brand new director of the PTO unilaterally decided to re-examine the already issued Amari patent. Apparently, there was enough noise in the industry that it caught even his attention. To be clear, a director instituted re-exam hasn't happened in more than 15 years when they did so on patents that were asserted against BlackBerry. The director's decision this time round explains that there are a couple of patents that seem to cover at least some of the claims of the Amari

patent. So, maybe these claims go away. Heck, maybe they all go away, or maybe some are invalidated and some survive. Either way, we'll be pretty sure to monitor and update you on this breathtaking adventure, perhaps on our live show, Games for Breakfast, Mondays at 11:00 a.m. Eastern Standard Time. And until then, we return you to the calls to action already in progress. I'm tapping the papers like the news people do, but it's lower than the desk. IT'S LOWER THAN THE DESK! BUT WHAT DO YOU ALL THINK? Now that you have an introductory grasp on how patents function, are patents like this going to stymie future game development? Or is there enough wiggle room in the Pocket Monster genre for future competitors to still make their marks? Please let us know in the comments. I'm dying to hear what you all think about this. And I hope you enjoyed this deep dive into a topic that I thought I understood, but Aaron proved very quickly that I did not. Thanks, buddy. This episode was made possible due to our awesome patrons over on Patreon. If

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