If you are a game developer, IP attorney, or interested in video game law, consider the ongoing patent battle involving the popular games Pokémon and Palworld. (Yes, gameplay mechanics have long been patented.) In 2024, Nintendo and The Pokémon Company initiated litigation in Japan, claiming that Palworld infringes on three of Nintendo’s Japanese patents covering core Pokémon game mechanics. To bolster its U.S. patent position, Nintendo also expanded its U.S. patent portfolio with four new patents and applications mirroring the disputed Japanese patents, all fast-tracked in the U.S. for examination. The ongoing legal battles reveal important global strategic options when combining ongoing litigation and patent prosecution.
In September 2024 Nintendo and The Pokémon Company filed a lawsuit in Japan against Pocketpair alleging that Pocketpair’s Palworld infringes three of Nintendo’s Japanese patents. The three patents1 are directed to game mechanics for the perpetually popular Pokémon series. Given that Pokémon is the highest grossing media franchise in the world with an estimated lifetime revenue of $147 billion, it is no surprise that Nintendo is taking steps to aggressively protect its’ intellectual property. Although the dispute between Nintendo and Pocketpair has not yet crossed the Pacific, U.S. litigation appears imminent. Based upon recently published2 applications, Nintendo is bolstering its U.S. patent portfolio with new patents and applications directed to the same subject matter in dispute in Japan.
Since December of 2024, Nintendo has acquired four new United States Patents: U.S. Patent No.12,246,255 (“the ’255 Patent”); U.S. Patent No.12,179,111 (“the ’111 Patent”); U.S. Patent No. 12,220,638 (“the ’638 Patent”); and U.S. Patent No. 12,409,387 (“the ’387 Patent”). Each of these patents claims priority to one of the asserted patents in the infringement action filed in Japan. Nintendo also filed each of these patents as a “Track One” application, seeking expedited examination by the Patent Office. Notably, Nintendo has filed two continuation applications, U.S. Application Serial No. 19/305,937, claiming priority to the ’387 Patent, and U.S. Patent Application Serial No. 19/ 306, 010, claiming priority to the ’111 Patent. These actions will permit Nintendo to bolster a future patent action against Pocketpair in the U.S.
Comparing Video Games of Pokémon and Palworld
In March 2025, Nintendo released a trailer of the next installment of the Pokémon franchise; namely, Pokémon® Legends Z-A, set to release in late 2025. Comparing gameplay from the announcement trailer of Pokémon Legends Z-A to Palworld gameplay explains at least some of Nintendo’s earnestness in seeking the U.S. patents. In particular, Nintendo appears to be introducing new catch mechanics that require players to aim and throw a poké ball to catch a pokémon. In the past conventional gameplay, no aiming was required to throw a poké ball and catch a pokémon.
Does Palworld employ similar catch mechanics? Gameplay images below demonstrates both Pokémon Z-A and Palworld’s overlapping use of: (A) a player character, (B) a creature for capture, (C) a reticle for aiming, (D) a catch success indicator, (E) a capture item, and (F) confirmation the creature was caught.
The above images reveal some similarities between the catch mechanics of Pokémon and Palworld. Is this similarity sufficient to establish patent infringement? As U.S. Courts have repeatedly held, a precise analysis of a patent claim and the characteristics of the accused infringement is required. See ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1582 (Fed. Cir. 1988) (“Infringement requires that every limitation of the patent claim must be found in the accused device either literally or equivalently.”); see also NexStep, Inc. v. Comcast Cable Commc'ns, LLC, 119 F.4th 1355, 1378 (Fed. Cir. 2024) (reiterating that for infringement under the doctrine of equivalents, a patentee is required to “produce ‘evidence to establish what the function, way, and result of both the claimed device and the accused device are, and why those functions, ways, and results are substantially the same.’”) (citing Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327, n. 5 (Fed. Cir. 1991)). Patent infringement requires each limitation of a claim read on the device or method of the alleged infringer. See ZMI Corp., 844 F.2d at 1582. Meaning, no matter how similar Pokémon and Palworld appear in their gameplay, the claims of the patents control whether an infringement has actually occurred.
Nintendo’s Patents
Nintendo’s four recently issued U.S. patents fall into two families based on the game mechanics they claim.
As shown in the table above, the “catch” family includes the ’111 and ’638 patents. The catch patents are directed to methods for the player character to catch field characters, e.g., catch a pokémon, and deploy fighting characters, e.g., battle pokémon. The “ride” family includes the ’255 Patent and the ’387 Patent. The ride patents are directed to methods for the player character to automatically switch between rideable characters, e.g., between flying one pokémon and riding on another pokémon. Taking claim 1 of the ’638 patent as an example of the catch family, Pokémon fans—even those unfamiliar with the awkward language of patent claims—will recognize the claimed method as the process of catching a pokémon and using that pokémon to battle, a core aspect of the franchise. The table below separates each step and sub-step of the method of claim 1 of the ’638 patent and annotates each step in terms of a pokémon battle.
Do the game mechanics of Palworld fall within these claim limitations? This will be among the questions a U.S. Court may have to consider. And which version of Pocketpair will a Court be viewing? In November 2024, Pocketpair released Palworld v0.3.11. This update “[c]hanged the behaviour [sic] of summoning player-owned Pals so that they are always summoned near the player.” This modification could raise new questions in view of sub-step 4.2 of claim 1 of the ’638 patent which requires “the player character launching . . . a first virtual object representing the obtained first virtual character.” Does this alter potential arguments relating to the manner in which Pokémon may practice this claim limitation (e.g., the player throws a poké ball containing a caught-pokémon into a pokémon battle)? Does the action of “summoning player-owned Pals so that they are always summoned near the player” avoid overlap with this patent claim? How will a Court determine whether pals are released by throwing the capture item? These are among the questions to be addressed in future litigation.
Options Available to Accused Patent Infringer
All accused infringers have the option to challenge the validity of an asserted patent. Validity challenges in the U.S. can take several routes. An accused infringer may elect to file a Declaratory Judgment action in District Court seeking a finding of both non-infringement and invalidity of an asserted patent. Alternatively, the USPTO provides opportunities for an accused infringer to challenge the validity of the patents through one of several post grant proceedings. These proceedings include filing an Inter Partes Review (IPR), a Post Grant Review (PGR), or an Ex Parte Reexamination (EPR). PGR proceedings have time limitations on filing – 9-months from issuance. For example, a patent issuing in December 2024, a deadline of September 2025 may apply.
Options Available to Patentee
On the other hand, patentees can enforce their patent rights through several strategies. A patentee may start with sending a cease-and-desist letter to the alleged infringer requesting cessation of the allegedly infringing action. In response, a patentee and an alleged infringer may negotiate a licensing agreement to allow the alleged infringer to continue their action and the patentee to receive a royalty. Alternatively, the Patentee may file litigation seeking damages or an injunction for the infringement of their patent. For international infringements, the Patentee must enforce patent rights under the laws of each jurisdiction where patent protection exists.
In the U.S., patentees commonly maintain pending patent applications in their family of patents, which may alter the analysis of which patents are likely to be used in litigation. In such instances, the pendency of an application during litigation may introduce ambiguity for the alleged infringer, leaving them unsure of which potential additional patents and covered intellectual property that may be subsequently enforced against them. Such ambiguity presents difficult decisions for alleged infringers as it introduces the possibility that the pending application, if issued, may nullify an alleged infringer’s attempts to design-around the patents.
Conclusions
Since Nintendo and Pocketpair are both Japanese companies, onlookers should not be surprised if the controversy primarily plays out in the Japanese courts. While this dispute between Nintendo and Pocketpair has yet to officially reach the U.S., it looks to be building into a clash between entertainment giants. Both patent practitioners and those in the gaming industry are eager to watch how this dispute unfolds.
[1] JP754519; JP7493117; JP7528390.
[2] U.S. patent applications typically are published 18 months after their priority filing date. Additional patent applications that have yet to publish may be present.
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