If patent holders want to exclude others from using their invention, then they need to keep an eye on the marketplace to spot infringers. Because the metaverse opens up a new, virtual and potentially endless space where infringement can occur, "virtual patent infringement" may be the next domain for enforcement. This post shakes free of the real world to dive into the metaverse and its potential for building virtual machines and algorithms that could, in theory, infringe patent rights. Before we get there, however, we should define the metaverse and discuss computing's history with virtualization.
I. What Is the Metaverse?
I have discussed the metaverse in an earlier post and presented on its implications to IP law, but broadly speaking, the "metaverse" is a collection of technologies that virtualizes spaces and things. As examples, a 3D world that you can explore in virtual reality (VR) is part of the metaverse (a virtual space), but so are the in-world objects you collect there (virtual things). Cryptocurrencies are a form of virtual money that some consider part of the metaverse, as are the non-fungible tokens (NFTs) that sit next to the cryptocurrency on blockchains. Some may expand the term still further to include any virtual experience, including interacting with social media or meeting colleagues over Zoom.
II. Virtual Machines
Computers often virtualize objects in the real world as they perform calculations. For example, a calendar program is a virtual version of a traditional paper planner. One object that computers regularly virtualize, however, is less apparent: Computers can virtualize themselves as "virtual machines."
Virtual machines are software that emulates a physical machine, and the concept of them is nearly as old as modern computing. When computers were very large things, it would have been impossible to do what we regularly do now: Supply all users with their own computer. One solution to the problem was to divide computing time among users, where each of the user's programs received some set amount of time to run on the large machine in the basement. Another solution was to virtualize a less-powerful version of the physical computer in software. The physical computer would launch several virtual machines that modeled all components of the physical hardware in software, including processors and memory. Users could each use "dumb" terminals that had a little processing power themselves, but mostly acted as an interface to the virtual machines over a network. To the user at the terminal, the virtual machine with which they were interacting appeared to be exactly the same (albeit a little slower) than the physical beast in the basement.
Today, virtualization of physical computers is everywhere. Most web servers you encounter online are virtualized versions of physical machines because they are easier to maintain and can be created so rapidly to handle an influx of traffic to a site. If you own a Nintendo Switch and subscribe to its online service, you get virtualized versions of its older consoles so you can play games from the 1980s onward. Software allows you to run a virtualized Windows PC on a Macintosh.
Currently, patent infringement issues in these virtualized scenarios often do not meaningfully differ from issues relating to physical machines because, to the end user, the experience of interfacing with virtual machines is really no different than interfacing with physical machines. The metaverse, however, offers a new space with its own set of rules that could yield interesting virtualization examples in the future.
III. Virtualization in the Metaverse
In the real world, we have built physical computers only because the available resources and physical laws allowed us to. In a universe without silicon and electromagnetism, we would have had to figure out another way to make usable logic gates for processing. We are looking forward to using properties of quantum mechanics to build a new class of physical computers – quantum computers – but we are only able to research them because the universe happens to give us particles that behave in a way that we can use them for calculations.
And the same holds true in the metaverse: You can use only the resources and physical laws you have to develop virtual machines. The metaverse's virtual worlds are filled with a wide variety of 3D materials, and scripting features allow users to modify and move those 3D materials. Also, as I discussed in an earlier post, these virtual worlds are also subject to any physical laws that the developer wants. As examples, a virtual world could have the Moon's reduced gravity (0.167 G) or prohibit any use of the color red.
With those resources and "laws" in mind, people have already begun to marshal what is available in the metaverse to create virtual machines. "Redstone computers" in Minecraft are an example of these virtual machines. Redstone computers are made from redstone blocks and dust, as well as various materials available in Minecraft (e.g., switches, torches and generic blocks). By linking these materials together as a series of logic gates, a player can use the physics of the game to manipulate the materials to compute information. (A great tutorial on how to build these virtual machines is here, and it indirectly explains the design of modern computers.)
And just like the small logic gates on a computer processor, the design scales to create massive machines in virtual space. One breathtaking example is the "Chungus 2" virtual machine. Chungus 2 operates as an 8-bit processor with 256 bytes of RAM and a 1 Hz CPU clock. The virtual machine can play early Atari-like video games and really needs to be seen to be believed. All aspects of this virtual machine exist in the "physical" space of the Minecraft world, so the machine is an enormous collection of that world's building blocks that stretches as high as a real-world skyscraper. Exploring Chungus 2 is like walking over the microscopic space of a computer: You can view its constituent parts (memory, processing, etc.) actually move and change as they function.
IV. Virtual Patent Infringement
We are only beginning to see ingenuity applied to these virtual worlds' resources and physics to yield virtual machines. As virtual worlds become more sophisticated and run on ever-faster real-world computers, the possibility emerges that they will be used to create virtual machines that perform a variety of tasks. And users in the metaverse could be building things that might infringe real-world patent rights. Below, I examine a method and apparatus claim in view of potentially infringing virtual machines in the metaverse.
A. Method Claims
Method claims are readily applied to a virtual world. Method claims recite steps in a process, and all such steps must be performed to prove infringement. Virtual machines in the metaverse, like any other machine, are capable of performing specific steps. And one could prove infringement by showing that the virtual machine performs each step in a given claim.
As a simple (and certainly unpatentable-as-obvious) example, consider the following claim:
Any virtual machine running in the metaverse that performs these steps would arguably infringe the claim.
B. Apparatus Claims
The more interesting case involves apparatus claims. Unlike method claims, apparatus claims are directed to physical devices. Below is an example apparatus claim (that is also certainly unpatentable-as-obvious):
In the real world, one would examine a physical turnstile to see if all limitations of the claim are present to prove infringement. If so, then the manufacturer, seller or user of the turnstile could be infringing the claim.
Now consider a virtual turnstile in a virtual world used to count patrons as they enter a virtual stadium to watch a virtual concert. With the most common understanding of the term "apparatus," the virtual turnstile is not one at all. The virtual turnstile is instead a computer simulation of an apparatus. To prove infringement, among other things, the virtual turnstile would need to have "a post with a bottom portion fixed to the ground" – but there is no "post" or "ground" in a virtual world. As a result, there would arguably be no infringement.
This outcome could change in several ways. For example, a plaintiff could argue that while the virtual turnstile does not literally infringe the apparatus claim, it does infringe under the doctrine of equivalents. Under the doctrine of equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 21, 29 (1997). The doctrine has deep roots in American patent law, and an early decision involving rail cars identifies the same concerns that a patent holder would have when seeing her invention in virtual space:
" ... where the whole substance of the invention may be copied in a different form, it is the duty of the courts and juries to look through the form for the substance of the invention – for that which entitled the inventor to his patent, and which the patent was designed to secure; where that is found, there is an infringement; and it is not a defense, that it is embodied in a form not described, and in terms claimed by the patentee."
Infringement by equivalence "requires a showing that the difference between the claimed invention and the accused product [is] insubstantial." Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009). And one way of proving insubstantial difference is the "Function-Way-Result" test. Id. ("showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product"). Taking these factors out of order, the function (using a gate to capture entries) and result (recording entries) appear to be the same in both the virtual turnstile and the apparatus claim.
The difficult question is whether each operates in an equivalent way. Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1531 n.6 (Fed. Cir. 1987) ("a claimed invention and an accused device may perform substantially the same function and may achieve the same result will not make the latter an infringement under the doctrine of equivalents where [the accused device] performs the function and achieves the result in a substantially different way"). From the perspective of a user in the virtual world, the virtual turnstile is operating in exactly the same way as the apparatus claim, with the exception of being in a virtual environment. Users pass through the virtual turnstile, which moves the gate and records an entry. From a real-world perspective, however, the virtual turnstile could not be further from the claimed apparatus. This is because the virtual turnstile does not actually exist. Seen from the real world, the virtual turnstile is a series of ones and zeros representing a turnstile in memory, and the physics that move the gate are the operations of algorithms. Seen from a real-world angle, the virtual turnstile is a dramatic departure from the way the claimed apparatus works.
The answer to the whether the doctrine of equivalents helps the patent holder then turns on how one views the virtual space. Are we willing to credit virtual spaces as an equivalent forums for infringement of apparatus claims?
At least two avenues exist for courts to begin entertaining virtual infringement of apparatus claims: (1) a court could construe claim terms in a manner broad enough to cover virtual machines or (2) Congress could amend the Patent Act to extend patent protection to virtual worlds. These two outcomes sound frankly improbable today, but factors in the future may arise that make them more likely. Consider a new computer hardware architecture that allows for more efficient processing of data. A company had been awarded apparatus claims that cover this new architecture. While the company would be able to exclude anyone from building a physical version of its computer architecture, a virtual version would currently be beyond the reach of the Patent Act. Users in the virtual world could avail themselves of the invention's faster processing without any fear of infringement liability. That circumvention of the Patent Act would likely catch the attention of courts and Congress, who might seek to extend the Act's reach to virtual spaces. After all, "it is the duty of the courts and juries to look through the form for the substance of the invention – for that which entitled the inventor to his patent, and which the patent was designed to secure[.]" Winans, 56 U.S. at 342-43.
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