DCT

2:17-cv-00182

FigureFun LLC v. Lego Systems Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00182, E.D. Tex., 03/08/2017
  • Venue Allegations: Venue is based on allegations that Defendants conduct substantial business in the district, including deriving revenue from individuals in the district, and that Defendant Lego Systems, Inc. maintains a place of business in Frisco, Texas.
  • Core Dispute: Plaintiff alleges that Defendants' "Lego Dimensions" toys-to-life video game system infringes two patents related to gaming machines that interact with physical tokens containing integrated circuit (IC) chips to store and transfer game data.
  • Technical Context: The lawsuit concerns the "toys-to-life" gaming genre, where physical figurines with embedded data chips (e.g., RFID) are placed on a peripheral device to unlock or control corresponding characters and content within a video game.
  • Key Procedural History: Subsequent to the filing of this complaint, both patents-in-suit were subject to Inter Partes Review (IPR) proceedings. An IPR certificate for the ’276 Patent, issued July 21, 2022, indicates that asserted Claim 9 was cancelled. An IPR certificate for the ’377 Patent, issued July 27, 2022, indicates that asserted Claim 1 was cancelled. These post-filing events fundamentally affect the viability of the infringement counts as pleaded in the complaint.

Case Timeline

Date Event
2002-08-20 Priority Date for '276 and '377 Patents
2006-02-21 Issue Date for U.S. Patent No. 7,001,276
2008-03-04 Issue Date for U.S. Patent No. 7,338,377
2017-03-08 Complaint Filing Date
2018-03-09 IPR Filed for '276 Patent (IPR2018-00754)
2018-03-09 IPR Filed for '377 Patent (IPR2018-00755)
2022-07-21 IPR Certificate Issued for '276 Patent
2022-07-27 IPR Certificate Issued for '377 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,001,276 - Gaming Machine and Server Therefor

  • Patent Identification: U.S. Patent No. 7,001,276, "Gaming Machine and Server Therefor," issued February 21, 2006.

The Invention Explained

  • Problem Addressed: The patent describes a need to enhance token-based arcade games, which often lack novelty, and to adapt complex, long-form strategic simulation games for an arcade setting where players may wish to interrupt and resume play at different machines or locations (’276 Patent, col. 2:26-34). It also identifies a risk that players might fraudulently modify game data stored on portable tokens to gain an unfair advantage (’276 Patent, col. 3:31-41).
  • The Patented Solution: The invention proposes a gaming system where a token with a built-in IC chip stores game data, such as character progression (’276 Patent, Abstract). A gaming machine reads the data from the token and transmits it to a central server, which can verify the data against previously stored records to prevent cheating and allow for persistent gameplay across multiple machines (’276 Patent, col. 4:1-17). The system includes a physical "support" with "recesses" where players place the tokens to interact with the game (’276 Patent, Fig. 3B, col. 12:61-65).
  • Technical Importance: This technology aimed to merge the persistent character development of home video games with the pay-per-play model of public arcades, while introducing server-side validation to maintain game integrity (’276 Patent, col. 2:51-65).

Key Claims at a Glance

  • The complaint asserts independent claim 9 (’276 Patent, IPR Certificate; Compl. ¶14).
  • Essential elements of claim 9 include:
    • A gaming machine utilizing a token with a built-in IC chip
    • An information reader that reads game data from the token
    • A data transmitter with an interface circuit to transmit the read data
    • The information reader comprises an upward-facing recess into which the token is fitted
    • The recess is on a support disposed next to a display device showing game progress
    • An action figure is attached to the token in a detachable manner
  • The complaint does not explicitly reserve the right to assert dependent claims (Compl. ¶14).

U.S. Patent No. 7,338,377 - Token with Built-In IC chip

  • Patent Identification: U.S. Patent No. 7,338,377, "Token with Built-In IC chip," issued March 4, 2008.

The Invention Explained

  • Problem Addressed: The patent seeks to provide a token for a gaming machine that is more "entertaining" than conventional tokens by adding a "new value" beyond simple currency replacement, thereby stimulating a player's desire to purchase more tokens (’377 Patent, col. 2:51-62).
  • The Patented Solution: The invention is a token with an IC chip that stores a pre-loaded "game initial data set" selected from a larger group of possible data sets before the player starts the game (’377 Patent, Abstract). This data can define a game character's attributes or provide a "bonus data set" that gives the player an advantage (’377 Patent, col. 5:21-27). To enhance player attachment, the token is designed to be physically attachable to and detachable from a three-dimensional "figure" representing the in-game character (’377 Patent, col. 10:15-28).
  • Technical Importance: This approach introduced collectability and variability to physical game pieces, creating a system where players are motivated to acquire more tokens to obtain characters with different or superior abilities and bonuses (’377 Patent, col. 4:5-14).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’377 Patent, IPR Certificate; Compl. ¶18).
  • Essential elements of claim 1 include:
    • A token for a gaming machine comprising an integrated circuit chip
    • The chip has a storage section storing game initial data regarding a character
    • The token is attachable to and detachable from a figure identifying one of a plurality of selectable characters
    • The game initial data is selectable from the character's initial data and is read when the figure with the token is set on the gaming machine
    • The token has a bonus data set providing a predetermined profit in a game
  • The complaint does not explicitly reserve the right to assert dependent claims (Compl. ¶18).

III. The Accused Instrumentality

Product Identification

  • The Lego Dimensions product line, including the Starter Pack, the "portal" or "Toy Pad" peripheral, and various character expansion packs such as the "Doctor Who Level Pack" (Compl. ¶¶14-15, 19).

Functionality and Market Context

  • The accused instrumentality is a "toys-to-life" gaming system where physical Lego minifigures are attached to circular bases, or "Toy Tags," which contain an RFID chip (Compl. ¶15). The complaint alleges that players place the assembled figure onto a "portal" device, which functions as an information reader (Compl. ¶15). The portal reads game data, such as character identity and abilities, from the Toy Tag's chip and transmits this information to a game console via a USB cable, allowing the character to appear and be controlled in the video game (Compl. p. 4). The complaint alleges the system offers a plurality of selectable characters, and that certain characters provide access to bonus content, described as a "predetermined profit" (Compl. pp. 9-10). The complaint includes an image from Lego's instructions illustrating the connection of the portal to a display screen, representing the intended use of the device (Compl. p. 6).

IV. Analysis of Infringement Allegations

'276 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
an information reader, which reads game data from the token with built-in IC chip The Lego Dimensions "portal" reads game data such as character information from the RFID chip in the "Toy Tag" token. ¶15 col. 13:1-9
a data transmitter comprising an interface circuit, which transmits the game data read by the information reading device The portal contains an interface circuit and transmits the read game data to a game console via a USB cable. This is depicted in an image showing the portal's internal circuitry (Compl. p. 4). ¶15 col. 4:30-32
wherein the information reader comprises an upward-facing recess such that the token with built-in IC chip is fitted into the recess The portal has an upward-facing area where the token is placed. The complaint provides a visual comparison of the Lego product to the patent's Figure 3B, labeling this feature as the "upward facing recess" (Compl. p. 5). ¶15 col. 12:61-65
wherein the upward-facing recess is provided on a support disposed next to a display device which shows progress of a game The portal (support) is a peripheral intended for use next to a television or monitor (display device) on which the game is played. ¶15 col. 12:40-46
wherein an action figure is attached to the token with built-in IC chip in a detachable manner A Lego minifigure (action figure) is detachably attached to the circular Toy Tag (token). ¶15 col. 7:32-35

'377 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an integrated circuit chip having a storage section storing at least game initial data regarding the character The Toy Tag contains an IC chip that stores initial data regarding the character, such as its appearance and in-game abilities. ¶19 col. 3:14-19
and being attachable to and detachable from a figure identifying one of a plurality of selectable characters The token (the blue base disc) is attachable to and detachable from the Lego minifigure. The complaint presents an infographic showing the large plurality of selectable characters available (Compl. p. 9). ¶19 col. 10:25-28
wherein the game initial data is selectable from the identified character's initial data and is read by the gaming machine when the figure with the token is set on the gaming machine The game reads the specific data from the token associated with the character placed on the portal, selecting it from the universe of available character data. p. 10 col. 3:6-12
has a bonus data set providing a predetermined profit in a game Placing the Doctor Who character on the portal allegedly unlocks the "Doctor Who World," which the complaint asserts is a "predetermined profit." A screenshot is provided to show this unlock mechanism (Compl. p. 10). p. 10 col. 5:21-27
  • Identified Points of Contention:
    • Viability of Claims: The central issue for both infringement counts is that the asserted claims—Claim 9 of the ’276 Patent and Claim 1 of the ’377 Patent—were cancelled in IPR proceedings that concluded after the complaint was filed. This raises a fundamental question about the legal basis for the infringement allegations as pleaded.
    • Scope Questions: A potential dispute may arise over the term "gaming machine." The patents heavily feature embodiments of large, stationary arcade cabinets (’276 Patent, Fig. 1), whereas the accused product is a peripheral for a home video game console. The litigation may turn on whether the claims can be construed to cover the home consumer electronics market.
    • Technical Questions: For the ’377 Patent, a key technical question is what constitutes a "predetermined profit." The complaint alleges that unlocking a new game level qualifies, but this may be contested if the term is construed to require a specific numerical or resource-based in-game advantage rather than simply access to additional content.

V. Key Claim Terms for Construction

  • The Term: "gaming machine" (’276 Patent, Claim 9)

    • Context and Importance: The construction of this term is critical because the patent's embodiments depict large, multi-station arcade cabinets, while the accused product is a peripheral for a home video game system. The breadth of this term will determine whether the patent's scope extends from the commercial arcade environment to the consumer home gaming market.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that a "video game is a type of game to be played with a home video gaming machine or a portable gaming machine," suggesting the invention is not exclusively limited to the arcade context (’276 Patent, col. 1:36-39).
    • Intrinsic Evidence for a Narrower Interpretation: The detailed description and figures predominantly illustrate an arcade-style apparatus, with features like a "token insertion slot" and "token payout outlet" (’276 Patent, Fig. 1; col. 6:33-40). This focus may be used to argue for a construction limited to the arcade environment.

  • The Term: "predetermined profit in a game" (’377 Patent, Claim 1)

    • Context and Importance: Infringement of this element hinges on whether unlocking a new game world, as the complaint alleges for the "Doctor Who World," constitutes a "profit." The definition will determine whether access to content is equivalent to a tangible in-game benefit.
    • Intrinsic Evidence for a Broader Interpretation: The patent specification uses the related phrase "bonus data set that is advantageous to the player," which could be interpreted broadly to include any benefit, such as access to exclusive content (’377 Patent, col. 5:25-27).
    • Intrinsic Evidence for a Narrower Interpretation: The patent is situated in the context of tokens and points, which have a quasi-economic value within the game (’377 Patent, col. 7:1-15). This may support an argument that "profit" must be a quantifiable, resource-based advantage (e.g., in-game currency, items, or stat boosts) rather than simply access to a new play area.

VI. Other Allegations

The complaint does not contain specific counts or factual allegations supporting indirect infringement or willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A dispositive threshold issue will be one of mootness due to patent claim cancellation: Given that the only claims asserted in the complaint (Claim 9 of the '276 patent and Claim 1 of the '377 patent) were subsequently cancelled in Inter Partes Review proceedings, the most critical question is whether any viable cause of action remains.
  • Should the case proceed on amended pleadings with different claims, a central issue will be one of technological scope: can the term "gaming machine," which is heavily exemplified in the patents as a commercial arcade cabinet, be construed broadly enough to read on a peripheral device for a home video game console?
  • A key claim construction question will be one of definitional interpretation: does the term "predetermined profit," as used in the '377 patent, encompass access to new game content as the complaint alleges, or does its meaning require a more tangible, resource-based in-game advantage for the player?