Pioneer Patent In Jeaopardy Did Magnavox Cheat?

Video Game Law Blog

January 01, 1989

(This is an archived case summary)

This was an action by Nintendo challenging the validity of Magnavox's “Television Gaming Apparatus” patent, issued in 1972, and the infringement claims made by Magnavox against other parties in respect of that patent. All of the Magnavox patents at issue in this case had been deemed valid in previous cases, most notably in Magnavox's ground-breaking action against Mattel in 1982. In the case at bar, Nintendo was claiming that the patent was invalid due to inequitable conduct on Magnavox's part when seeking issue of the patents in the 1970s. Specifically, Nintendo claimed that Magnavox deliberately failed to disclose relevant prior art, deliberately failed to investigate their knowledge of the relevant prior art, and conducted an improper off-the-record meeting with the patent examiner prior to filing one of their patents.

The Court describes the action as requiring a revisit to the early days of the video game industry where a simple ping pong game would be sufficient to capture the imagination of children. The Court expresses a little nostalgia for the Pong Era and says that children nowadays are ”used to sophisticated video games that replicate laser wars and magical kingdoms and boxing matches.”

As any inequitable conduct on behalf of the patentee would vitiate a patent in the United States, the Court was aware this litigation could shake the very foundation of the video game industry, as the Magnavox patents had been termed ”pioneer patents” and were also the subject of numerous lawsuits and licensing agreements. The prior art that the plaintiff Nintendo relied upon was a patent that related to a game called ”Space War” which was developed in 1961 at MIT and played on a PDP-1 computer. The game itself was played at Stanford University in 1963 and witnessed by James Williams, who later ended up working at Magnavox as outside patent counsel.

Luckily for the video game industry, the Court determined that Nintendo had failed to meet their burden in establishing the required knowledge of Magnavox of the materiality, or deliberate and intentional withholding of this knowledge of materiality, of the prior art.

Nintendo of America, Inc. v. Magnavox Co.
1989, US Dist. Ct., SD NY
707 F. Supp 717
KEYWORDS: patent – prior art – pioneer patent