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 Patent US 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.

The first independent claim:

Claim 1. A method for playing a game by a plurality of players, the method comprising:

• providing an apparatus;
• providing a projectile;
• positioning the apparatus upon a playing surface, the apparatus including:
  • first and second sets of poles, each of said first and second poles having first and second opposite ends;
  • providing means for adjusting the pole between a full length position and a shortened length position;
  • and providing means for connecting the second end of each of said poles in the first set of poles to one of the ends of at least two of said poles in the second set of poles;
  • positioning each of said poles in the first set in a vertical orientation with the first end thereof resting on the playing surface;
  • positioning each of said poles in the second set in a horizontal orientation; wherein:
  • each of said poles in the first set of poles is in a perpendicular orientation with respect to the poles in the second set of poles;
  • (i) extending each of said poles in the first and second sets of poles in the full length position; wherein: the first and second set of poles forming at least four interior playboxes of substantially equal volume;
    • defining the four interior playboxes by:
      • (i) a plane extending from each said pole in the first set of poles to intersect with each adjacent said pole in the first set of poles;
      • (ii) a plane extending from each pole in the second set of poles to intersect with, and be perpendicular to the playing surface; and
      • (iii) a plane extending from each said pole in the second set of poles to intersect with another said pole in the second set of poles that is parallel thereto; and
      • (iv) the playing surface; wherein the plurality of players play the game upon the playing surface within the apparatus by:
        • (a) placing a player in each of the at least four playboxes upon the playing surface, wherein:
          • each said playbox is contiguous and substantially equal in size to all other said playboxes;
          • a barrier is positioned at the top of and between any two contiguous said playboxes;
        • (b) a first player of one of said plurality of players, projecting said projectile by either striking or pushing up and out from the player’s playbox down into one of a second player of the plurality of player’s playbox over the barrier there between;
        • (c) the second player of the plurality of player’s projecting the projectile up and out from the player’s play box and down into any other of said play boxes over the barrier there between;
        • (d) repeating (b) and (c), for respective said plurality of players and said play boxes, until a first condition occurs in which the projectile contacts the playing surface;
        • (e) the player who allows the projectile to contact the playing surface is out,
        • (f) the remaining players of the plurality of players rotate position and a new player enters one of said play boxes;
        • (g) the first player to receive a designated point value wins the game and a new game may then be started.

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.