Patenting the Virtual World: Webkinz

There's few situations more embarrassing than when your six-year old son figures out that you were playing his video game the night before.  Okay, maybe when your wife stumbles upon you after midnight playing your son's video game...  Alas, I admit to suffering both of these shames last summer when I became fascinated with my children's Webkinz.

For those of you with kids between 5ish and 10ish(?), I don't have to explain.  For the rest of you, Webkinz are Beanie Babies meets Tamagotchi meets facebook (kind of).  In the "real world", you spend a few bucks and get a cute cat/hippo/gorilla/kangaroo/pterodactyl/etc. animal to cuddle.  Inside the toy's package is a code that is then entered into a website to unlock a "virtual" version of your animal.  In the virtual world, you feed and take care of your pet, and earn "kinzcash" by playing games.  The cash can be spent on things like room decorations, food, or gifts that you can "send" to your networked friends.  It's pretty wholesome stuff, not expensive, and the commercialization factor, while present, isn't off the charts (though there is temptation to buy "real" clothing accessories, which come with their own codes, to then see those garments magically appear on the virtual version).  And there is one small, though real 'hook' to your wallet: your registration on the site is good for a year, extendible by... buying and registering another Webkinz.  But for under $10, it's well worth it.

Of course, what I found most intriguing was that there are several patent numbers that appear on the Webkinz website.  Last week, Howard Ganz, creator of Webkinz and grandson of the family-owned company's founder, was granted his sixth Webkinz patent.

U.S. Patent No. 7,604,525 System and method for toy adoption and marketing Assignee: Ganz (Woodbridge, Ontario, Canada) Filed: January 22, 2009 Issued: October 20, 2009 9. A method that provides a virtual world presentation comprising: registering a toy; using a computer system for providing a website associated with the toy, said website having a user account associated with said registering of the toy; in response to and subsequent to said registering, using the computer system for displaying a virtual replica of the toy representing said toy on said website, wherein said virtual replica of said toy is manipulated by a user accessing the website via the user account; in response to said and subsequent to said registering, using the computer system for granting access to the user by way of the user account to at least a subset of features on the website in connection with the virtual replica of the toy; and in response to said and subsequent to said registering, using the computer system to facilitate caring for the virtual replica of the toy presented in the virtual world presentation, wherein said caring for the virtual replica of the toy comprises, and maintaining both of a health and happiness of the replica of the toy via a plurality of maintenance activities, which include all of feeding the toy, shopping for the toy, and playing with the toy, and taking the virtual replica of the toy to a virtual health and welfare facility, wherein playing with the toy comprises participating in an activity on the website in combination with another virtual replica of another toy appearing on the website that is controlled by another user via another user computer over a communication network, wherein an appearance of the virtual replica of the toy is animated using video components for the animation, said animation being used during participation in the activity on the website in combination with the another virtual replica of another toy.

Commentary:  There was an Examiner's Amendment that deleted a clause in the last element, leaving a difficult parsing job (the [, and] before "maintaining" probably should have gone).  We can ignore that for now, in light of all the other good things to discuss here.

• Accelerated Examination.  Ganz's first patent was from an application filed in 2004.  That same application has served as the parent for all of his patents.  Of course, the AE program wasn't around until 2006, and Ganz has now taken full advantage in this continuation patent.  Notably, this patent has five earlier-filed sibling applications that are still pending.  And Ganz unsuccessfuly tried AE on a couple of these, getting petitions denied.  This time they got it right.
  

• Bilski Guidelines. In June 2009, the examiner hit Ganz with a 101 rejection: "As explained in the Interim Guidelines in view of In re Bilski, the first step in determining whether a claim recites patent eligible subject matter is to determine whether the claim falls within one of the four statutory categories..."  That sounds fine, and it is certainly in line with the current Guidelines published in August 2009. (In fact, this same Examiner just rejected a related Ganz application under 101--in October 2009--with exactly the same language.)  But to my knowledge, in June there were no post-Bilski 101 guidelines other than John Love's January 7, 2009 memo, which was silent as to particular steps, and only referred examiners back to MPEP 2106 for specifics.  Was there another, unpublicized set of Interim Guidelines adopted before August?  My guess is that the August guidelines were available and in use for a couple months before going public.

• Machine? Transformation? Both?  To overcome the 101 rejection, Ganz amended the claims, partly as marked above, with several references to computer systems and stressing the linkage between real and virtual worlds (e.g., there was an element reciting a "virtual adoption process" that was subsequently removed by the examiner).  Ganz argued this satisfied not only Bilski's machine prong, but its transformation prong, as well, following Bilski's nod to Abele: "A transformation of raw data into a particular visual depiction of a physical object on a display is sufficient" to satisfy the transformation test, argued Ganz.  

That's not so clear here however. The visual depiction in Webkinz is really a generic animation of "a" Webkinz toy, and not necessary your Webkinz toy.  That is, the same graphic used on the website to display your Gecko is also used for the thousand other kids' Geckos out there.  That's quite different from the x-ray data of Abele, which really was derived from an actual physical article.  So does this virtual image really "particularly" depict a physical object?  It's unclear.  And we don't know if this argument succeeded for Ganz: the examiner allowed the claims without any 101 discussion.

• Scott C. Harris? Yes, the same Scott Harris of Fish/Google fame and who argued the In re Ferguson paradigm non-shifting case appears to have been involved here.  You won't find his signature on any of the papers, but the Examiner notes an August interview with Harris in the Notice of Allowance, where Harris authorized an Examiner's Amendment.  Sure enough, PAIR reveals that Harris is now associated as an attorney of record on this application, working with the Cleveland-based Pearne & Gordon firm.

• Claim strategies.  It's worth looking at the claims in the other Ganz patents.  For example, the parent, U.S. Patent No. 7,534,157, claims the physical toy as an apparatus, but all the elements are directed to the computer ("A toy for utilizing a computer system for providing a virtual world to a user of said toy, the computer system comprising:...").  Sister Patent No. 7,425,169 includes method claims from the perspective of the end user's actions ("A method comprising: first using a first registration code obtained from purchasing a first toy, to access a website;...").  Other patents in the portfolio cover variations on the method claims. Having different claiming approaches like these allows for a wide scope of overlapping claim coverage, and for potential infringement under both direct and indirect theories.

[UPDATE 10/26/09: See comment below on the "transformation" question in light of last week's Ex parte Gardiner decision.]