Context: This is the sixth part of our “explain it to me like I’m five” series on Nintendo v. Pocketpair (the Pokémon-Palworld patent infringement dispute). Previous parts:
- Why Nintendo can sue Pocketpair over patents filed AFTER Palworld’s release
- Japanese patent attorney: Palworld doesn’t implement “smooth switching” of riding objects as claimed by Nintendo
- Two of Nintendo’s three patents-in-suit against Pocketpair relate to collecting characters: let’s look at the claims
- Nintendo grappling with hard choice after U.S. patent office overwhelmingly rejected anti-Palworld patent application
- Yesterday Nintendo received a U.S. version of another anti-Palworld patent and asked the U.S. patent office for an interview to get a third patent
What’s new: Nintendo has recently received a third U.S. patent clearly designed for assertion against Palworld, and a fourth one is now forthcoming after a patent examiner told Nintendo’s patent attorneys that the application would be granted based on Nintendo’s new arguments, amendments to the claim language and a terminal disclaimer.
Direct impact: This means Nintendo will soon have a small arsenal of four U.S. patents that it could try to assert against Palworld in a U.S. patent infringement lawsuit. games fray believes that such litigation looms large as Nintendo would not be making so much of an effort to obtain anti-Palworld U.S. patents without an intent to actually use them. There is a reasonably high likelihood that a filing with a U.S. district court will be made in the spring or summer, not necessarily over all of those four patents but possibly over a subset. The fact that this step appears ever more likely does not mean that Nintendo will win. In the scenario of a U.S. lawsuit by Nintendo we expect Pocketpair to have strong non-infringement (partly also because of a workaround) and invalidity arguments, and a U.S. jury may consider Nintendo a bully.
Wider ramifications: Pocketpair has recently made two key filings in the Japanese Pokémon-Palworld lawsuit. On January 31, 2025, Pocketpair filed its defenses to Nintendo’s infringement arguments, and three weeks later (on February 21, 2025), Pocketpair also filed its invalidity contentions. We are working with Japanese counsel to obtain more information. Our lawyers went to the Tokyo District Court on March 6, 2025 and were told (link to X post) that the filings are voluminous, which is part of the reason why they are not yet available for public inspection. As soon as our counsel can see them, we will be able to report on how Pocketpair defends Palworld against Nintendo’s patent bullying.
For a recap, these two U.S. patents were recently obtained by Nintendo (together with the other 50% owner, The Pokemón Company) and relate to the Palworld dispute:
- On December 31, 2024, the United States Patent & Trademark Office (USPTO) granted U.S. Patent No. 12,179,111. As we discussed in our February 12, 2025 article, Pocketpair knew that this patent would be granted when it released Palworld update late last year that changed a certain game mechanic. That makes it a possibility that by the time this patent issued, it had already become pretty useless for the purposes of a Palworld lawsuit.
- On February 11, 2025, the USPTO also granted U.S. Patent No. 12,220,638. This one, too, may never have been infringed by Palworld, especially in light of the recent modification of a game mechanic.
On March 11, 2025, the USPTO granted Nintendo and The Pokémon Company’s U.S. Patent No. 12,246,255:
The patent application that led to the ‘255 patent was filed in September 2022, more than a year before Palworld’s launch. But Nintendo made amendments to the claims throughout the process, also after Palworld had been launched. Finally, the patent issued this year.
It’s about the smooth switching from a flying object to an object that rides on the ground. As we previously reported (January 26, 2025 games fray article), a games-savvy Japanese patent attorney believes Palworld doesn’t implement the smooth switching mechanic that Nintendo has patented.
U.S. Patent Application No. 18/652,883 also relates to smooth switching of riding objects. 22 of the 23 patent claims were rejected (February 8, 2025 games fray article). Instead of just taking the one that the examiner was prepared to grant, a patent attorney representing Nintendo requested an interview with the examiner.
That interview was largerly a success for Nintendo because they apparently reached an informal agreement with the examiner that they would make certain changes and the application would then, finally, go through:
- In independent claims 1, 8 and 9, Nintendo inserted the following additional requirement: “wherein the player character is configured to capture the first character based on interaction with the first character in the virtual space, and the captured first character becomes obtained by the player character.”
- Numerous dependent claims (among them claims 2 and 3) incorporate the independent claims by reference, so Nintendo did not have to repeat the additional claim limitation.
- Nintendo dropped claim 4 and 15.
- Nintendo made limited changes to claim 22, which depends on claim 1.
- Nintendo added a new claim 24, which specifies the “interaction” with the character to be captured as a battle or as catching the character.
These are the modified claims Nintendo proposed on March 4, 2025:
In addition to persuading the examiner and amending its claims, Nintendo had to do something else. On March 20, 2025, Nintendo filed what is called a terminal disclaimer:
What does this mean and what is it about?
The patent examiner apparently felt that this patent application was too close to U.S. Patent No. 12,246,255 (which we showed further above and which also covers the smooth switching of riding objects). But double patenting is not allowed: in a given jurisdiction, you can only get one patent for an invention. Otherwise (at least) one of them must be invalid.
In the U.S., the problem of two patent applications by the same inventor or company being potentially redundant is often addressed by means of a terminal disclaimer like the one shown above, which Nintendo filed two weeks ago. The applicant promises to the USPTO that the two patents will be kept together. Otherwise it could sell one and let a third party assert it, which would mean double jeopardy for those accused of implementing the patented invention. If the two patents at least belong to the same owner, someone getting sued can address the problem within the scope of the same litigation. It would be much more difficult to resolve conflicts between two patents belonging to two different patent holders.
A terminal disclaimer also has implications for when a patent will expire. The simplified version is that the USPTO requires applicants to limit the maximum term of the second patent to that of the first. The purpose is to avoid that companies file a second patent application only to practically extend their protection beyond the limit of normally 20 years.
Here’s what the USPTO’s website now says about the status of the ‘883 application:
“Allowed — Notice of Allowance Not Yet Mailed 04/01/2025”
That means the examiner decided on Tuesday that the application would go through in its amended form and in light of the terminal disclaimer Nintendo and The Pokemón Company provided. It just takes a little bit of paperwork now for the formal Notice of Allowance to issue. And even the Notice of Allowance does not mean that a new patent is born: only when the patent has been published in the USPTO’s patent register does it actually exist and can it be enforced. That will still take a couple of months.
games fray considers it fairly likely (though we obviously can’t say with certainty) that Nintendo will now prepare a U.S. patent infringement complaint and file it shortly after the formal publication of that new patent resulting from the ‘883 application. That means the U.S. part of the Nintendo v. Pocketpair patent assertion campaign could kick off in the late spring or sometime in the summer.
There is also the possibility, however, that Nintendo and The Pokemón Company realize that this patent spat was never a good idea (maybe also based on the defenses Pocketpair has recently raised in the Japanese lawsuit). There are patent disputes where it is clear what the patent holder stands to gain. In this case, Nintendo comes across as a bully, and Palworld is not going to disappear.
If Nintendo and The Pokémon Company refrain from bringing a U.S. lawsuit despite having secured yet another patent for which they applied after Palworld was launched, then there is hope that maybe the whole story could come to an end in the near term. But Nintendo made rather belligerent statements last year, which is why war appears more likely than peace. For the time being. All patent lawsuits come to an end though.
games fray, together with its patent-specialized sibling website ip fray, will continue to follow this litigation.