Why did my patent on game rules not prevent these subsequent design patents?

Question

I invented a game whereby I took the game called 4-Square and raised it 7 feet in the air and so you play it like a 4-way volleyball game ... 4-Square in the air.

I obtained U.S. Patent No. 7,608,000, entitled A System for Playing a game. From the abstract:

A multiplayer game, having rules with aspects of the games of Four Square and Volleyball, is played with an apparatus that can optionally be respectively disassembled and set up.

Claim 1 [is really long and not easily conducive to clear formatting, but if someone else wants to, go for it. -JSH]

I recently found a game being sold called 9 Square in the Air. It's a copy of my game using 9 squares instead of 4. My patent discloses multiple alternative embodiments of my base design, including embodiments with more than four squares.

9 Square has two design patents, D656,995, issued April 3, 2012, and D650,445, issued December 13, 2011.

How was this guy able to get a patent? Do I have any recourse?

Answer 1

How was this guy able to get a patent?

First, it's important to consider that while you have a utility patent, the two 9 Square patents are design patents, which protect the ornamental design of an article of manufacture (i.e. what the thing looks like). The applicant cited your patent as relevant prior art to the Patent Office during prosecution, so the examiner must have found the ornamental design of the 9 Square patent applications to be novel and non-obvious over the drawings in your patent. Unfortunately, both 9 Square patents issued with no office actions, so we can't really guess as to what the examiner was thinking.

Do I have any recourse?

Depends on what you want to accomplish. If you want to try to show that their patents should be invalidated in view of your patent, the most obvious option is to file request for supplemental examination, but that's a fairly expensive process - if it's just for spite, it's probably not worth it.

If you think your patent entitles you to exclude them from making their product, you could send a demand letter or sue for patent infringement, but that's an even more expensive process and I doubt the sales of either 4 Square in the Air or 9 Square in the Air justify the expense.

Personally, just based on a quick look at your claims, I wouldn't want to try and enforce them. For example, all of your claims require "providing a projectile." If 9 Square only sells the grid and not a ball, then they're not literally infringing any of your claims. Your claims also require "positioning the apparatus" and its unlikely 9 Square comes to their customer's houses to set up the grid.

Your best bet, imho, is old fashioned free market capitalism - take the money you might otherwise spend on a lawyer, come up with a catchy name (4 Square in the Air is already pretty good) and market the crap out of your product.