ECE 477 Digital Systems Senior Design Project Fall 2006

Homework 9: Patent Liability Analysis

Due: Friday, September 29, at NOON

Team Code Name: __Smart RFID Poker Team______Group No. 5___

Team Member Completing This Homework: _Daniel Moore______

e-mail Address of Team Member: _dtmoore______@ purdue.edu

Evaluation:

Component/Criterion / Score / Multiplier / Points

Introduction and Summary

/ 0 1 2 3 4 5 6 7 8 9 10 / X 1
Results of Patent/Product Search / 0 1 2 3 4 5 6 7 8 9 10 / X 4
Analysis of Patent Liability / 0 1 2 3 4 5 6 7 8 9 10 / X 2
Action Recommended / 0 1 2 3 4 5 6 7 8 9 10 / X 1
List of References / 0 1 2 3 4 5 6 7 8 9 10 / X 1
Technical Writing Style / 0 1 2 3 4 5 6 7 8 9 10 / X 1
TOTAL

Comments:

1.0  Introduction

The Smart RFID Poker Table will utilize a variety of different innovative approaches to accomplish the task of tracking game play on the table. It is a little overwhelming how many patents exist today. That is why everything in the design will be highly examined to see if it is going to be infringing on a patent. For the purposes of this paper the term “literal infringement” shall mean “making, using, offering to sell, selling, or importing into the US any patented invention, without authority, during the term of the patent” and the term “doctrine of equivalents” shall mean “even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention”[6,5]. The Smart RFID Poker Table will use an i2c (inter-integrated circuit) bus to implement communications between the micro processor on the main board and all of the module boards. The i2c protocol was patented by Philips about 20 years ago and expired August 2004. Another concern was using a patented TCP/IP stack to create a webserver on the NE64 so that it can transfer data to a computer. The plan is to use the Opentcp stack that came with the chip. Since Freescale distributes this software as free from their website and there is no license listing on their sourceforge page it should be okay to use[1]. The last and main concern is the techniques used for communicating and tracking the RFID chips. This paper will address any concerns found with this and the solutions to these problems.

2.0  Results of Patent and Product Search

When searching for relevant patents and products for prior history or art that would essentially provide the same functionality of the design, a couple different pieces of information where found. In total there where 3 patents found that the Smart RFID Poker Table could violate.

The first patent "Gaming chips with electronic circuits scanned by antennas in gaming chip placement areas for tracking the movement of gaming chips within a casino apparatus and method", number 5651548 and filed May 19, 1995 addresses putting transponders in gaming chips that would be read by different antennas placed around a casino[2]. There essentially would be an antenna placed at each gaming table that would interrogate what chips are at its table and communicate to a central database. The tracking of the chips works by all of the tables communicating to one another and keeping track of where all of the poker chips are. Since the chip has moved tables the location is updated and therefore the chip is tracked. The important areas of this patent are the multiple antennas being placed around a casino to track the chips and the ability to communicate back to a central database. The antennas being put all around the casino and being used to track the chips is important because this is how the Smart RFID Poker Table will work, only on a much larger scale. The Smart RFID Poker Table will have multiple antennas placed around the table that will be used to track the chips around the table. The second area of importance is the fact that each of the placed readers will be able to communicate back to a central database which keeps track of all of the chips. This is also an area of concern because the Smart RFID Poker Table will also have a central database which will reside in the main microcontroller to keep track of all of the poker chips.

The next identified patent is "Gaming table tracking system and method", number 5735742 and it was filed September 20, 1995 this patent calls for putting a transponder in each of the poker chips so that they can be queried anywhere in the casino. The chips also have a writable portion of memory where the current location can be stored for security purposes. If a chip is detected somewhere it is not supposed to be for example on a table when the on-chip history shows it to be in the vault, the value of that chip will be nullified[3]. The important areas to look at in this patent are when it says, “A gaming chip, comprising a body and a transponder carried within the body, said transponder being encoded with permanent read-only identification” and “at least one antenna associated with said gaming tables, for scanning gaming chips at said tables”[3]. The first quote from the patent is important because it specifically says that the transponder is carried within the body of the gaming chip and that it has a permanent read-only identification which is again exactly what the Smart RFID Poker table will incorporate into its design. The second quote is important because it specifically mentions at least one antenna being placed at each table which definitely leaves open the possibility of putting more than one antenna at each table. Since the Smart RFID Poker table will have more than one antenna at the table this could potentially be a problem.

The last patent that causes concern is a patent for a manufacturing process of implanting an electronic transponder into a token or chip. This patent is "Token with an electronic chip and methods for manufacturing the same", the patent number is 6581747 and it was file April 7, 2000. This patent covers flat bodies of plastic material that have two parallel sides where one can be opened to access a cavity where an RFID chip can be placed[4]. The important points of this patent are the manufacturing process that the patent describes and the specifics of the produced gaming token. The patent states “a token or plaque comprising: a flat body made of a plastic material, the flat body comprising at least two parallel faces and a cavity which opens”[4]. The Smart RFID Poker Table would definitely have poker chips with an RFID tag embedded in them so this could be a violation of this patent. The patent also states that the token or plaque “is one of a gaming token and a gaming plaque”[4]. This means that the patent covers the use of these tokens as gaming devices which is what the Smart RFID Poker Table would use them for.

3.0  Analysis of Patent Liability

The liabilities identified for the first patent mentioned above are that it mentions having multiple antennas along with specified chip location areas where a specified antenna would read the chip. Another big concern is the mounting of the antenna beneath the table where the antenna would be carried along with the table. The only difference between the project and what this patent describes is the fact that the patent also describes a system for a whole casino where all the tables would be able to communicate with each other as well. This design definitely infringes literally on this patent.

The second patent that was looked into also involves putting an RFID transponder into a poker chip and being able to track the chips around a casino. This design differs from the Smart RFID Poker Table for the fact that it doesn't necessarily call for multiple antennas and each tag as a writable memory section where a chip history can be stored. Because of these differences in the tracking of the chip there shouldn’t be any infringement upon this patent.

The third patent that was analyzed was for a process of manufacturing a poker chip with an embedded RFID tag in it. This patent is very broad and calls for just a plastic object with two parallel sides and a hollow mid section where a RFID tag is stored in the chip. Since this is exactly how the Smart RFID Poker Table’s chips will be made there will most likely be a patent infringement from this. However the violation will probably be under the doctrine of equivalents since there could be a different way to accomplish this goal.

4.0  Action Recommended

The actions that will be required to insure that there is no violation of the first patent that was analyzed will most likely be obtaining a license to use this technique to track the poker chips. The problem is that the named patent intends to employ the exact same technique that the Smart RFID Poker Table would use to track the tags, via multiple antennas placed around a certain area. There is a chance that this could be avoided all together for the simple reason that the Smart RFID Poker Table design is a lot more specific and includes only multiple antennas around a single table instead of a whole casino. Since the design is not necessarily meant for a whole casino it might be okay. The second thing that needs to be looked at is if storing the information in a centralized database violates this patent. One solution is if there is going to be a need to obtain a license for the tracking part, than licensing the database algorithm could be included in that. Also another thing to look into is if there would be a way to store the information differently, for example using a different type of data structure. A patent lawyer would have to examine these cases and decide whether or not the Smart RFID Poker Table would violate these.

The second case in which an action would be taken is on the third patent analyzed, the manufacturing of the poker chips with the embedded tags. Since the patent in question would be violated under the doctrine of equivalents, it would definitely be necessary to obtain a license to use this process. However, it seems that this is a fairly obvious solution to anyone that you would have to make the plastic poker chip hollow in order to put a RFID tag in it. This patent is very specific about one of the sides of the poker chip being able to open and give access to the center, so there is also a possibility of changing the technique so that you are unable to open the chip and not violate this patent.

5.0  Summary

This patent analysis has taken a look at all of the patents that where found to be similar to the design. Two of the patents where processes for tracking tokens around casinos and game tables where as the third patent was on a manufacturing technique of putting an RFID chip into a gaming chip. There was found to be a potential literal liability problem with the first patent (5651548) about tracking the tags around a casino using multiple antennas and also with the third patent (6581747) about the manufacturing of gaming chips with an embedded RFID tag. The first violation will have to be fixed by obtaining a license to employ this tracking method, but the second violation can be corrected by changing the way in which gaming chips are manufactured.


List of References

[1] "Freescale openTCP," [Online document], [cited 2006 Sept 28], Available HTTP:

http://sourceforge.net/projects/Freescaleotcp

[2] French; John, Piehl; William, "Gaming chips with electronic circuits scanned by antennas in gaming chip placement areas for tracking the movement of gaming chips within a casino apparatus and method," U.S. Patent 5651548, September 20, 1995.

[3] French; John, "Gaming table tracking system and method," U.S. Patent 5941769, August 24, 1999.

[4] Charlier; Gerard, Philippe; Eric Luc, "Token with an electronic chip and methods for manufacturing the same," U.S. Patent 6609710, August 26, 2003.

[5] Wikipedia, “Doctrine of equivalents,” [Online document], [cited 2006 Oct 11], Available HTTP:

http://en.wikipedia.org/wiki/Doctrine_of_equivalents

[6] Wikipedia, “Literal_infringement,” [Online document], [cited 2006 Oct 11], Available HTTP:

http://en.wikipedia.org/wiki/Literal_infringement

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