Underlined terms, unless they specifically reference another article, point to our own dictionary definitions.
Context:
- Nintendo received a U.S. patent last year on what amounts to summoning in a subcharacter and let it fight in one of two battle modes, one of which is automatic while the other involves full control by the player. We were first to criticize it publicly (September 9, 2025 games fray article), and various lawyers agreed.
- Less than two months later, the head of the United States Patent and Trademark Office (USPTO), Director John A. Squires, ordered an ex parte reexamination (EPR) of this patent (November 4, 2025 games fray article). That means a patent examiner working for the USPTO’s Central Reexamination Unit (CRU) was going to reevaluate whether that patent should have been granted in the first place. The fact that the USPTO Director took this initiative was described as “striking” and “extremely rare” by member of the Japanese patent community (November 7, 2025 ip fray article).
What’s new:
- Like most patent holders in the same situation, Nintendo let the deadline for a response slip. The examiner therefore started the reexamination process and put out a non-final Office action last week, rejecting all claims of the patent in question (U.S. Patent No. 12,403,397 on a “storage medium, information processing system, information processing apparatus, and game processing method”: Google Patents link). The term “rejection” may appear counterintuitive because this is about revoking a patent has already been granted, but it is the terminology they use.
- It did not require the USPTO to look at (much less play) a single game to arrive at this conclusion. It is all based on combinations of two or three prior art references in the form of published U.S. patent applications. Two of those earlier patent applications were filed by Nintendo itself, and one each by Konami and Bandai Namco. We show them all further below.
Direct impact:
- As mentioned above, the rejection is non-final (and even when such rejections are labeled as “final”, the process is far from over, given that there can be, at minimum, an appeal to the Federal Circuit).
- Nintendo has two months to respond, but that period can be extended if Nintendo asks for it (and Nintendo doesn’t even have to state a reason). That is normally not the case in EPRs, but an exception for EPRs triggered either by the patent holder itself or, as is the case here, the Director of the USPTO. Thereafter, the patent examiner will issue the next decision, taking into account Nintendo’s arguments.
- By not looking at real-world games, the USPTO is making this somewhat complicated. For 18 of the 26 patent claims, they have to combine two different prior art references to argue that the claimed inventions are obvious, and for the remaining 8 patent claims they even have to combine three to get there.
- As explained further below, that creates an opportunity for Nintendo to argue that a person having ordinary skill in the art (i.e., a game developer in this case) would not necessarily combine those different prior art references when looking for answers.
- But as we also explain further below, what ups the ante for Nintendo is that for each of the 26 claims the USPTO has two alternative theories, any single one of which would be enough to take the patent down.
Wider ramifications: It has been quiet for many months about Nintendo’s Japanese patent lawsuit against Palworld maker Pocketpair (October 29, 2025 games fray article). And meanwhile, other games with Pokémon-style elements have been launched or demoed. But we are still keeping an eye on that one, and it is only a question of time to find out about the state of play in the Tokyo District Court. Also, we have generally been very busy with patent litigation topics, almost all of which we cover on our ip fray website.
Here’s the 104-page order rejecting (which in this case means “declaring ripe for revocation”) Nintendo’s controversial patent:
How the 26 claimed versions of the “invention” were found to be obvious
The patent has 26 patent claims, and if even a single patent claim survived, Nintendo could sue someone over it. Not all claims would be equally useful in infringement litigation as some have a narrower scope than others. But any single claim is potentially useful, and Nintendo will try to salvage as many of them as possible.
Overview of prior art references
Here’s a list of the four prior art references, named in the order by the first-listed inventor of each (we provide all documents further below):
- “Taura”: This is one of Nintendo‘s own patent applications. It was filed in December 2019 and published (document link) in August 2020 under publication number US 2020/0254335 A1. This one is part of every single invalidity theory in the preliminary decision. It covers most of what the “summon-and-fight-in-1-of-2-modes” patent is about, but not everything, which is why the patent examiner then combines it with one or or two of the other references.
- “Yabe” and “Motokura”: If one or the other of these two is combined with Taura, claims 1, 2, 5-7, 10-14, 17-19, and 22-26 of the patent are invalid, but eight other claims survive unless one throws a third prior art reference into the mix.
- Yabe is a January 2002 patent application (document link) by Konami that was published in August 2002 under publication number US 2002/0119811 A1.
- Motokura is an August 2020 patent application (document link) by Nintendo that was published in March 2022 under publication number US 2022/0062760 A1.
- “Shimomoto”: This September 2019 patent application (document link) by Bandai Namco was published in March 2020 under publication number US 2020/0086216 A1 and provides the “missing link” wiht respect to the remaining eight patent claims.
Why Nintendo’s own formerly published applications count
When it comes to validty, patent law focuses on when something is filed with the patent office versus what was already publicly available or generally known at that time. That also includes patent applications, at least (in the U.S.) when they have been published (which takes up to 18 months form filing).
In that regard, patent law is different from e.g. trademark law.
Table of all combinations
| Claims 1, 2, 5-7, 10-14, 17-19, 22-26 | Claims 3, 4, 8, 9, 15, 16, 20 and 21 | |
| Invalidaty theory 1 | Taura + Yabe | Taura + Yabe + Shimomoto |
| Invalidaty theory 2 | Taura + Motokura | Taura + Motokura + Shimomoto |
The reason why consecutive claim numbers are sometimes stated as A-B and sometimes separated by commas is that A-B shows claims are more closely related (an independent claim plus some that depend on it) than the comma-separated ones.