Jenner & Block

Jenner & Block Secures Significant Win for Viacom, Inc. Over Patent Related to Rock Band Video Game Lawsuit

In an important victory for Firm clients Viacom, Inc., its subsidiary Harmonix Music Systems Inc., and video game distributor Electronic Arts, Inc., the United States District Court for the District of Nevada dismissed patent infringement claims against them relating to the Rock Band video game.

In dismissing the Complaint of the inventor and his prosecuting attorney in the issuance of the patent, Judge James C. Mahan accepted the affirmative defense put forth by the Jenner & Block team on behalf of the defendants.  Specifically, they alleged that the plaintiffs intentionally deceived the U.S. Patent and Trademark Office by withholding information from the Examiner assigned to their patent application that they knew to be material to the issuance of the sought-after patents, notwithstanding the duties of candor, good faith and honesty they owed to the USPTO.

The Court sustained the defendants’ affirmative defenses, granted the defendants’ counterclaims seeking a declaration that inequitable conduct occurred in the prosecution of the relevant patents, held the patents unenforceable and dismissed the plaintiffs’ Complaint with prejudice.

In issuing his decision, Judge Mahan stated, “In entering these findings, the Court is mindful that the Federal Circuit has criticized the frequent assertion by defendants in patent cases of baseless allegations of inequitable conduct and has instructed the District Courts to adhere strictly to the Federal Circuit’s requirements for findings of inequitable conduct, including the clear and convincing burden of proof placed on defendants.  Applying the Federal Circuit’s standards, Defendants have satisfied their burden here.”

The Firm’s team was led by Partner Richard F. Ziegler and included Partner Patrick L. Patras and Associate Benjamin J. Bradford.  The case is 1st Media, LLC v. Electronic Arts, Inc., et al.  The Jenner team worked closely with counsel for co-defendant Sony Computer Entertainment America in obtaining this trial ruling.