Sony forced to stop selling Dual Shock controllers?

Haven't seen a source for this other than Japan Today, which seems a little weird, but reportedly a US District Court has ordered Sony to pay Immersion Corp. $90.7 million for infringing several patents related to computer-controlled vibrating motors (which Sony uses in their Dual Shock PlayStation and PlayStation 2 controllers). What's weirder still about this news is that as far as we can tell Sony already lost this case back in October when a federal jury ruled that Sony owed Immersion $82 million. Making it even more painful for Sony this time around (if this news is true, that is), the judge presiding over the case has also issued an injunction forbidding Sony from selling Dual Shock controllers, as well as "40 game software products" (or "games", as we know them), here in the States. It's Sunday, so we haven't been able to confirm the details of this case with Sony, but we'll give them a ring tomorrow and find out what's going on.

[Thanks, Droford]

[Sean @ Dec 19th 2005 12:12AM]

Computer controlled vibrating motors... another example of generic and far reaching patents gone awry? What constitutes a computer controlled vibrating motor? My car's motor vibrates and has computer control, does that mean Ford has to stop selling cars? What happened to the days when patents were specific as to their use? The PS2 can be argued as to its validity of being called a computer, but more over vibrating motors or gyroscopes have been around with consoles since the days of Nintendo's robot.

I'd question this piece of news, but if its accurate I imagine an appeal is on the way.

[Chris Benard @ Dec 19th 2005 12:12AM]

This is ridiculous, I cannot believe that there isn't prior art. Someone needs to start one of those prior art watches, like the EFF does periodically. I typically hate Sony, due to their lack of using standards, but it's hard not to stand behind them on this one.

Our patent system needs to be severly reformed. Quick! Stop selling back massagers, they are a vibrating motor that's computer controlled!!!

Check out my homepage.

[Trythis @ Dec 19th 2005 12:12AM]

HAHAH good, i hate sony and their playstations.

[WoollyMittens @ Dec 19th 2005 12:12AM]

Hurray for USA patent madness. You guys go ahead and litigate yourself into ruination while the rest of the world innovates.

[FYI @ Dec 19th 2005 12:12AM]

Text of two court filings: Judgment and Injunction. Note that the injunction has been stayed pending appeal.

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

IMMERSION CORPORATION, Plaintiff, v. SONY COMPUTER ENTERTAINMENT AMERICA, INC., SONY COMPUTER ENTERTAINMENT, INC., and MICROSOFT CORPORATION,
Defendants.

No. C 02-0710 CW

JUDGMENT

This action came on for trial before the Court, the Honorable Claudia Wilken, United States District Judge, presiding, and the issues having been duly tried and the Jury having duly rendered its verdict as to the claims presented to it, and the Court having entered its findings as to the defense of inequitable conduct,

IT IS HEREBY ORDERED:

That judgment is entered in favor of Plaintiff Immersion Corp. (Immersion) against Defendants Sony Computer Entertainment America, Inc., (SCEA) and Sony Computer Entertainment, Inc., (SCEI) (collectively Sony) on Immersion's claims of infringement of U.S. Patent Nos. 6,424,333 and 6,275,213. Judgment is also entered in Immersion's favor on Sony's counter-claims for declaratory judgment of non-infringement. Immersion shall recover of Defendants SCEA and SCEI jointly and severally the amount of $82,000,000.00. This sum shall be paid directly to Immersion forthwith; no escrow account is required. In accordance with the portion of the Court's January 10, 2005 order awarding Immersion pre-judgment interest at the prime rate, Immersion shall recover of Defendants pre-judgment
interest in the amount of $8,703,608.00.1 Immersion shall recover its costs from Sony.

In a separate order, the Court also issues a permanent injunction against Sony, stayed pending appeal to the Federal Circuit, and a compulsory license fee for the duration of the
stay.

IT IS SO ORDERED.

Dated: 3/24/05

CLAUDIA WILKEN
United States District Judge


IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

IMMERSION CORPORATION, Plaintiff, v. SONY COMPUTER ENTERTAINMENT AMERICA, INC., SONY COMPUTER ENTERTAINMENT, INC., and MICROSOFT CORPORATION,
Defendants.

No. C 02-0710 CW

ORDER ENTERING PERMANENT INJUNCTION AND GRANTING DEFENDANTS' MOTION TO STAY INJUNCTION PENDING APPEAL

For the reasons set forth in its January 10, 2005 Order, and having entered judgment in favor of Plaintiff Immersion Corp. (Immersion), the Court hereby PERMANENTLY ENJOINS Defendants Sony Computer Entertainment America, Inc., (SCEA) and Sony Computer Entertainment, Inc., (SCEI) (collectively Sony) from manufacturing, using, and/or selling in, or importing into, the United States the infringing Sony Playstation system, including its Playstation consoles, Dualshock controllers, and those games found by the jury to infringe. [FN1: The jury found that the following games, in conjunction with the Playstation consoles and Dualshock controllers, infringed either the '213 patent, the '333 patent or both patents: A Bug�s Life; Amplitude; Ape Escape; Atlantis: The Lost Empire; Bloody Roar 2; Cool Boarders 3; Cool Boarders 4; Cool Boarders 2001; Crash Bash; Crash Team Racing; Drakan: The Ancients� Gate; Emperor�s New Groove; Extermination; FantaVision; Final Fantasy X; Formula One 2001; The Getaway; Gran Turismo; Gran Turismo 2; Gran Turismo 3; Grand Theft Auto: Vice City; Grand Theft Auto 3; Grind Session; ICO; Jak & Daxter; Kinetica; Kingdom Hearts; Legend of the Dragoon; The Mark of Kri; Medal of Honor Frontline; Medievil 2; Metal Gear Solid 2; Monster�s, Inc.; Sly Cooper and the Thievius Racoonus; SOCOM Navy Seals; Speed Punks; Spyro: Ripto�s Rage; Spyro: Year of the Dragon; Stuart Little 2; Syphon Filter 2; Syphon Filter 3; Tony Hawk�s Pro Skater 3; Twisted Metal: Black; Twisted Metal 4; Twisted Metal: Small Brawl; Treasure Planet; and War of the Monsters.] As described in the January 10 Order, no recall is required of products already sold, but Sony will pay a license fee on all products already placed in the stream of commerce.

The Court GRANTS Sony's counter-motion for a stay (Docket No. 1370) of the injunction pending appeal, pursuant to Federal Rule of Civil Procedure 62(c). In making this determination, the Court considers the strength of Sony's showing that it is likely to succeed on the merits of its appeal, whether Sony will be irreparably injured absent a stay, whether the stay will substantially injure Immersion, and where the public interest lies. Standard Havens Products, Inc., v. Gencor Indus., Inc., 897 F.2d 511, 512 (Fed. Cir. 1990), quoting Hilton v. Braunskill, 481 U.S. 770, 776, (1987). The Court finds that on balance, these factors weigh in favor of granting a stay. None of the authority cited by Immersion suggests that a stay of the injunction pending appeal would be an abuse of discretion. As long as the injunction is stayed, the compulsory license remains in effect.

Sony has filed with the Court a "supplemental submission" of updated sales data for the year 2004. Sony's evidence shows that the games found by the jury to infringe now represent a smaller proportion of overall game sales; for instance, none of the top ten best-selling games for 2004 were accused. See Mehta Decl., Ex. D, TRSTS Report for December 2004. On the other hand, Immersion has provided the Court with supplemental evidence from its expert, Dr. Colgate, showing that Sony has continued to release games that contain the complex vibration found by the jury to infringe. See Colgate Decl. �� 5-6. As Sony notes, "the video game industry is driven by trends," and "games go in and out of style in months." Sony Supplemental Submission Re: Updated Sales Data Relevant to Motions for Injunction and Stay at 2. Absent evidence from Sony that it has redesigned its products so as to avoid the systems and methods found by the jury to infringe, the Court declines to revise the scope of its injunction based on the introduction of new games and the decline in popularity of the accused games.

IT IS SO ORDERED.

Dated: 3/24/05

CLAUDIA WILKEN
United States District Judge

[Modge2k @ Dec 19th 2005 12:12AM]

"PS2 can be argued as to its validity of being called a computer" Sony argued and won a case that the PS2 was a computer in order to get a tax break in Europe see http://www.theregister.co.uk/2000/11/07/sony_adds_basic_to_playstation/ and http://www.megagames.com/news/html/console/sonyclaimsps2isacomputer.shtml were the courts ruled in Sony's favour in 2003 I'd be fairly certain it doesn't set a precedent in a US court, but I'd imagine if Sony claim the PS2 is a computer in one market but not in the other courts on one side of the Atlantic or the other are going to cry foul. Hell if Sony win in the US courts claiming the PS2 isn't a computer, maybe Immersion could go and try and claim a patent in Europe if (when) software patents become law there. Fun fun fun. Oh how I was I was an IP lawyer.

[swarmster @ Dec 19th 2005 12:12AM]

"the Court hereby PERMANENTLY ENJOINS [Sony] from manufacturing, using, and/or selling in, or importing into, the United States the infringing Sony Playstation system, including its Playstation consoles, Dualshock controllers, and those games found by the jury to infringe."


So it's not just the controllers and games it can't sell, but the Playstation itself. Wow.

[js @ Dec 19th 2005 12:12AM]

Indeed the injunction has been stayed pending appeal. As for now Sony can still sell these infringing products.

However this also includes the Playstation consoles (not just the dual shock and the 47 games listed in the order posted by FYI. If Sony loses the appeal and/or the stay is removed then indeed Sony will have to immediately remove stop selling PS products in the US. Many more games infringe but for technical or procedural reasons were not included in trial and the court order.

As for people who claim that this is a frivolous patent case, keep in mind that Immersion is the inventor of touchsense technology that uses two vibrating motors working independently and with differing frequency and amplitude profiles to produce complex vibro-tactile sensations. For example you can feel rough or smooth textures, the sensation of crushing an aluminum can, or the feel of someone snoring. This technology was invented and patented and cost Immersion much time and money to obtain, develop, and perfect.

The real crime here is that Immersion had to spend about 1/3 of its annual budget, virtually burning all its cash raised in the primary equity market to defend and properly excercise its property rights. In addition to licensing its technology, Immersion makes a wide variety of touch enabled products and applications ranging from advanced arcade joysticks and touch enabling applications for PC and MAC based computer games to medical simulation devices that give students and professionals the feel in addition to the look and sound of intricate medical procedures.

[Jeff @ Dec 19th 2005 12:12AM]

"This is ridiculous, I cannot believe that there isn't prior art. Someone needs to start one of those prior art watches"

Yeah, the prior art in this case being owned by Immersion. They did this before the dual shock (and the analog pad before that) was even a glint in Sony's eye.

Come on, people - just because somebody wins a patent case doesn't mean they're wrong. Patents exist for a good reason and, while they are often abused, this is a case where Immersion *did* come up with this idea first, did patent it first, and then several big name companies either stole their idea outright or did not bother checking with the patent office first before releasing their products.

Immersion should have won, and they did. This is not their first win, either, so this is not some sort of fluke. The courts have consistently ruled in their favor. It is odd that Sony's got an injunction now against them, but the royalty thing is not new.

If you want to argue against patents, at least know what you're arguing and why. The problem is not patents themselves (at least not when it comes to hardware), the problem is in the vetting done by the USPTO when awarding them. Patents, properly used, are one of the main reasons why the US is *still the richest economy in the world* (take that, all you people who love to talk about how the "rest of the world innovates"). The USPTO needs to do its job quite a bit better than it has been lately, but Immersion's patent is a legitimate patent.

[thisisshit @ Dec 19th 2005 12:12AM]

computer controlled vibrating motors, eh?

i guess the days of vibrating cell phones is gone too, eh?
the patent system stifles innovation, and this is just another prime example.

[thisisshit @ Dec 19th 2005 12:12AM]

computer controlled vibrating motors, eh?

i guess the days of vibrating cell phones is gone too, eh?
the patent system stifles innovation, and this is just another prime example.

[thisisshit @ Dec 19th 2005 12:12AM]

*days are gone.
sorry

[Russell Copus @ Dec 19th 2005 12:12AM]

Sony should just stop selling the Playstation to the US and cut its lossess. Then maybe Immersion can join forces with Microsoft so that you can only buy Xbox's in the US. Hopefully all the yanks will be happy then.

[eek @ Dec 19th 2005 12:12AM]

why are the games included?
i also noticed that gt3 is included but 4 is not, it the lack of mutch controller vibration in gt4 a symptom of this case?

[jaaron @ Dec 19th 2005 12:12AM]

"Immersion's claims of infringement of U.S. Patent Nos. 6,424,333 and 6,275,213."

Wait a second... The earlier of these two was filed May 1, 2000. That was the same year the PS2 came out (March for Japan, October for US) and the PS1 had a Dual Shock controller long before that. I am surprised these patents can even apply.

[fruitbane @ Dec 19th 2005 12:12AM]

Wow, I suspect Immersion is doing some anonymous "advertising," because on every major site that discusses this verdict there's always a post from a user who's only ever made one post that's very well-worded and praises Immersion from on high about their sensitive vibration technology.

Immersion technology may well be a darned cool thing, but this kind of pandering is absolutely sickening. Its just like the whole Microsoft "grass roots" campain from a few years ago, where all the letters sent were penned, essentially, by Microsoft.

*sigh* If Immersion's so darned paranoid about the hostile feelings this case is sowing against them why don't they do a little PROPER PR instead of having lackies post in forums like these. Shouldn't those posts they've seeded contain official disclaimers or something?

[js @ Dec 19th 2005 12:12AM]

The '213 patent was applied for in 1995. As far as the '333 patent, it is possible that the more advanced haptic features covered by it were not initially exhibited initially.

[js @ Dec 19th 2005 12:12AM]

Fruitbane: I am a private individual with no connection to Immersion although I do have some IMMR in my brokerage account and I believe in the technology which will I believe will soon be in many cell phones and other consumer applications. I am the only person responsible for this message. No one else knew that I would post and seriously doubt anyone at Immersion knows or will know at anytime soon about my post.

I was just hoping to add some useful and accurate information. I have watched Immersion unfairly criticed before on these forums and said nothing. This time I wanted to correct some misperceptions and initially wanted to reply to correct the impression that Sony would have to get out of the US market immediately (or sign up with Immersion).

You posted a message making unfair and totally incorrect assumptions. Your message is therefore inappropriate and there is indeed nothing inappropriate in my message.

[Ricky @ Dec 19th 2005 12:12AM]

I bet if this happened to Microsoft, every one of you would be celebrating. Why? Because it would be wrong for a huge company to steal the hard work and innovation of a smaller company. Heck, it would be wrong if it went the other way.

Anyhow, I'm not sure who to agree with on this one. Seems too easy to just say poor Sony. I mean, what if they really did copy a design without properly licensing the technology? Not saying they did, just raising the what if. And, if true, Sony deserves to be punished.

[Terrace @ Dec 19th 2005 12:12AM]

Hey, Fruitbane (15), do you work for Sony? I've seen your exact same post on other sites, even before anyone comes out to defend Immersion in the manner you claim they do. Sounds like you're the one doing the seeding.

[Lee @ Dec 19th 2005 12:12AM]

Of course SNE cheated -- they lost the jury trial! Immersion won! Pretty much end of story.... SNE of course is appealing, but this won't change the jury's decision.

The protection of patents makes innovation an economical proposition for a small company to engage in. The system works!

[patentsrgood @ Dec 19th 2005 12:12AM]

The comment that patents somehow stifle innovation is crazy.

If patents are not protected, then everyone protects their inventions either by not publishing the invention and keeping it as secret as possible, or not bothering to invent knowing that they can't make any money from it because others will simply take the invention.

If there were no patents, this would give mega-corps a huge advantage and technical innovation would be a fraction of what it is now.

Immersion created the type of vibration techology used in dual shock controllers and even demonstrated it for Sony. Sony decided to use the technology from Immersion but not to pay for it.

Now the bill is coming due.

[Pav @ Dec 19th 2005 12:12AM]

Here's the dates that the applications were filed for the patents.

6,424,333 April 18, 2001
6,275,213 May 1, 2000

Didn't Dual Shock exist before then? Wouldn't the N64, Gamecube, and Xbox fall under this, too? Actually, to my mind, the way the patent reads (no, I really don't have anything better to do on Easter), even a cell phone that vibrates can be considered in this. What about pagers? Of course, I suppose it could depend on the definition of "computer."

I actually have one of those immersion mice from Logitech. It was always an interesting gimmick (kinda fun in Black & White).

[js @ Dec 19th 2005 12:12AM]

PAV: Regarding the '213 patent, the date you gave was when it was resubmitted. The initial submission was much earlier (in 1995, I believe).

Cell phones (except the ones that will soon be powered by Immersion technology) do not violate the '333 patent. If they simply vibrate on an incoming call they don't even violate any claims in the '213 patent and furthermore they no doubt constitute prior art.

There may be a few phones now that arguably may violate the '213 patent. However, Immersion went after Sony because of the great degree to which they employed advanced vibro-tactile technology and their refusal to respect Immersion's intellectual property rights in doing so.

[dionysus @ Dec 19th 2005 12:12AM]

Does this mean that Nintendo's vibrating controller for Game Cube also is a potential legal issue? what about Xbox?

Anyone have any facts on that?

[js @ Dec 19th 2005 12:12AM]

Msft settled out of court with Immersion in 2003 for considerations up to $26M.

Nintendo probably does not violate the more advanced vibrotactile functions covered in the '333 patent.

Arguably it may violate some claims of the '213 patent.

Immersion went after Sony (and before that MSFT) because of the eggregious nature of the infringement.

Immersion isn't a patent holding company just trying to catch unwary violators. It just couldn't survive financially any longer with the likes of Sony taking their best ideas at the cutting edge of the touch component of the digital revolution while thumbing their noses back at Immersion.

It was at great risk that they took on these two giants and complete failure could have dealt a death blow to the company.

I suspect that Nintendo will have to sign a licensing agreement too.

Already this year Gemini, Griffin, and Joytech have signed licenging agreements with Immersion on the heels of the Sony litigation. There are court ordered mediation talks in the context of litigation between Immersion and Electrosource at this time.

On Immersion's conference calls, it has been mentioned that Immesion is in talks with other potential licensees. It is very probable then that talks between Immersion and Nintendo are currently under way.

[Mobile Light Force @ Dec 19th 2005 12:12AM]

Re: 22 & 23,
"Samsung Electronics Co. Ltd. plans to use new vibration technology in its mobile phones through a new licensing deal with Immersion Corp.
'Immersion is delighted to have Samsung as our first cell-phone licensee' said Vic Viegas, chief executive officer for Immersion. 'Most cell phones vibrate today with single force and speed -- like pagers. High fidelity haptics brings a wide range of frequencies, dynamics and crispness never before possible...'"

In any case, those disagreeing with the district court's ruling need to look at the actual patents (uspto.gov). They describe a specific architecture and mechanism that *somehow* found its way into Sony's Dual Shock controllers. Considering the specificity of the patents, it's difficult to understand how it could have sprung up independently in Sony products.

[norman @ Dec 19th 2005 12:12AM]

I'm confused, why can an American judge tell a Japanese corporation to pay up? Can't Sony just say fuck off I'm not paying you shit?

I clearly don't know about thee patent laws

[semi @ Dec 19th 2005 12:12AM]

90mil.. and an expensive license, all u gotta do is patent something simple and then sit back and enjoy,

patents should be null after some years, with no renewing.

[Andrew Green @ Dec 19th 2005 12:12AM]

I just saw this story on CNN, confirming that this is in fact true.

[Natiahs @ Dec 19th 2005 12:12AM]

The point some here are not understanding is that the patents do not apply to a device that simply vibrates, like a pager or a cellphone, but rather to devices that provide different types of tactile vibration feedback. That's why Samsung is partnering with Immersion for their new tactile phone vibration but didn't have to simply make their phones vibrate.

This case is a million miles away from other, frivolous cases where the patent holder isn't in the business of using those patents. Immersion is. Sony's probably going to wind up writing a $350 million dollar check to before this one's said and done.

[Will @ Dec 19th 2005 12:12AM]

Boycott Immersion! Broad-scope and generic patents are pathetic and only created as a pre-emptive step towards litigation. Weakening the consumer bases options is no way to endear itself to future customers. Boycott all Immersion products and let them know how you feel.

[temp @ Dec 19th 2005 12:12AM]

The more js posts, the more I'm convinced that he/she works for Immersion, in the legal or PR department.

[js @ Dec 19th 2005 12:12AM]

Temp: Let me first say that I call for Immersion and Sony to stop the catfight and work together. They need each other to succeed and together they can bring gaming to a new level. The next (or next after next) generation of gaming should see truly "immersive" environments where a player literally enters the digital landscape.


As to your speculation, really I have no connection to IMMR other than owning some stock (not much but enough for a private investor).

Just like there is no reason to assume that a poster who is critical of Immersion or defending Sony vigorously actually is employed by Sony for such purposes, you should not assume the same about me.

I chose the moniker "JS" because it is the one I use on other public message boards. Check out the Yahoo IMMR board. I post very often there. I have no hidden agenda and nothing to hide:

http://finance.messages.yahoo.com/bbs?.mm=FN&action=l&mid=&board=1600540456&sid=1600540456&tid=immr&start=27501

[Sean @ Dec 19th 2005 12:12AM]

Here is a good article from Businessweek about Immersion in 1995:

http://www.businessweek.com/1996/43/b349846.htm

[Kurthalomieu @ Dec 19th 2005 12:12AM]

The WORST part about this case that nobody has mentioned yet (or maybe I missed it) is the fact that Immersion aquired these pattents by $BUYING$ out another company, Virtual Technologies Inc. Yah, I know this is legal, but it is just the thought of them cashing in on someone else's work. Ironic, no?

Oh, and JS can't work for Immersion because otherwise he'd know that it wasn't Immersion who developed these patents.

[Audguy @ Dec 19th 2005 12:12AM]

Immersion is just in the money grabbing mode right now, for example, they would give you a free copy of their SDK to home users, and now they charge STUDENTS $100USD !!!