Nintendo, Palworld, A GTA 5 Mod, And An Injunction For The Japanese Market

We’re waiting for the lawsuit in Japan between Nintendo, The Pokémon Co., and Pocketpair, the developers of the hit game Palworld to really get going. In the meantime, the public commentary is filling the information void, including commentary from IP experts. The suit revolves around a series of patents the plaintiffs hold that cover a variety of gameplay elements. I very much question whether those gameplay elements should ever have been patentable to begin with, with the two main elements being the process for throwing a virtual object at a creature to capture it and the “invention” of riding a creature in an open world and the transition between riding them and not riding them. The patents covering these mechanics mostly come from several divisional patents and their parent patent, which was registered in late 2021.

For all of this, the plaintiffs are seeking $66,000 (yes, that’s the correct number), while also seeking an injunction prohibiting the sale of Palworld in Japan. That latter request, missed by me in my last post on this subject, is by far the more important aspect of the lawsuit. The monetary request is a rounding error for such a successful game, but shutting down sales in even just this one country would be far more devastating.

Again, should any of these patents have been granted to begin with? I certainly don’t think so. And for a variety of reasons. I very much question whether any of these gameplay mechanics are novel enough to warrant a patent to start with. Transitioning between riding creatures and not in an open world game? That’s been going on for a long, long time. Hell, I was doing something like this in 1997 when I was hopping on and off chocobos in Final Fantasy 7.

Which brings us to the subject of prior art. The other game mechanic in question here, throwing an object to capture a creature, has arguably been done prior to this 2021 parent patent’s registration as well. I mentioned in a previous post that the Ghostbusters game that came out in 2009 did this essentially the same way, swapping in capture devices and ghosts for pokeballs and pokemon.

But one IP expert in Japan is highlighting another potential example of prior art from a very ironic and unlikely source: a GTA V modder.

Ryo Arashida, representative patent attorney from the Japan-based Patent Attorney Corporation Siarasia is quoted by the Nikkei Business Online Edition as saying that while the outcome of the lawsuit is unclear, there’s a certain game mod out there that could work in Palworld’s favor.  

The mod in question is a fan-made one, designed to be a crossover between Pokémon and Rockstar Games’s Grand Theft Auto V (GTA5). Arashida does not specify the exact mod, but mentions that it was released publicly around 2016 and includes the mechanic of throwing Poke Ball-like objects at characters on the game field to capture them. Given the description, it is likely that he is referring to this elaborate mod inspired by Niantic’s Pokémon GO from August 2016. 

According to Arashida, the Pokémon capturing sequence used in this mod is similar to the one described in one of the divisional patents (Patent No. 7545191) Nintendo is suing Palworld over. Moreover, the parent patent that this divisional patent belongs to was registered in December 2021, meaning the GTA5 mod came out several years earlier. Arashida believes that “there is a possibility that the GTA5 Pokémon mod will be recognized as a precedent by the court.” If this were to happen, one of the patents Nintendo and The Pokémon Company are using in litigation against Pocketpair would be deemed invalid. 

Now, I won’t claim to be an expert in Japanese patent law, but Arashida does make that claim. It would be quite interesting if a mod for a third-party game, which itself was built on the IP of a plaintiff, could also be used to both defend another third-party from a patent infringement claim and invalidate that patent entirely. The irony there would be sweet enough to warrant a trip to the dentist, methinks.

But all of that intersecting may not really matter when it comes to the validity of a patent. Either Nintendo and The Pokémon Co. actually invented the mechanics in their patents… or they didn’t. In the United States, at least, the use of an invention can serve as prior art for the purposes of patent law.

Whether the same is true in Japan will be seen as this trial progresses.