In 2010, Shawn and Dustin Huffer created a new stickless fighting game controller, the hitbox, that had some genuinely original ideas: the “up” button was placed at the thumb, the buttons were smaller than usual, the layout was condensed in a way that allowed both thumbs to activate the “up” button, and so on. Through their company Hit Box LLC, the Huffers applied for a patent on the hitbox soon after (note: I represented Hit Box as its attorney with respect to some licensing issues in 2011 and briefly consulted with them again in 2017). In the 11 years since, thanks in part to advertising and community efforts by Hit Box, stickless controllers and especially hitboxes have gone from rarities to regulars in the FGC.

Although Hit Box’s brand has long had the lion’s share of the market, it’s never been the only stickless around. Others range from near copies of the hitbox to older WASD-style layouts to newer takes, like the ErgoBox, with its super-ergonomic vertical layout; the splitbox, with its separable halves; and the snack box micro, with its tiny form factor and custom-made buttons.

That last one is by Junk Food Custom Arcades, LLC, which also has a buttons-only version of its traditional snack box build called the snack box v2. And as you may have heard, it recently filed a lawsuit against Hit Box. Let’s talk about what the lawsuit says and what the future might hold.

THE LETTER

On November 9, 2021, Hit Box’s attorney sent a cease-and-desist letter to Junk Food, which Junk Food included in the public complaint it filed with the court.

In short, the C&D requests that Junk Food stop selling its snack box micro and snack box v2 buttons-only version. It says that Hit Box has a patent related to its hitbox design and that Junk Food’s designs infringe on its rights in that patent. It demands that Junk Food stop advertising, selling, and marketing its allegedly infringing products. This is all standard for letters like this one.

The letter also notes its awareness that Junk Food was “a premier sponsor with the intention to unilaterally display, market, sell, and otherwise distribute the Infringing Products at the upcoming CEO Fighting Game Championship from December 3-5, 2021 in Orlando, Florida” and says that this could cause “potential irreparable harm to Hit Box due to JFA’s sales of the Infringing Products at a premier gaming event.” It therefore demands that Junk Food “Inform the upcoming CEO Fighting Game Championships that JFA will not display, market, sell, and otherwise distribute the Infringing Products at the CEO event.”

Of course, disputes like this often start with more informal talks before elevating to an explicit C&D letter. I don’t have any first-hand information here, but based on my own experiences on both sides of similar issues, I wouldn’t be surprised if Hit Box asked Junk Food to pay a license to use the patented hitbox layout, and if Junk Food refused, and if they had a back-and-forth, and if Hit Box ultimately responded with this C&D.

In any case, the next public step we know about is that on December 3, Junk Food tweeted that it wouldn’t attend CEO and that it “had nothing to do with Covid or anyone on staff at CEO.”

THE LAWSUIT

And then, on December 6, Junk Food filed this lawsuit.

Junk Food’s lawsuit includes two allegations that are most relevant for us. First, it alleges that Hit Box’s patent is invalid. Second, it alleges that even if the patent is legit, that Junk Food didn’t infringe it anyway because it contains some distinctive design choices that differentiate it enough from the hitbox. If the court agrees with the first point, Hit Box’s patent on the hitbox would be destroyed; if the court disagrees, then Junk Food would move on to the second point. And if the court agrees with the second point, then Junk Food could continue making its products, but Hit Box would still retain its patent rights and would be able to prevent uses that infringe more directly.

So in short, the crux of the case comes down to whether Hit Box’s patent is valid and, if it is valid, whether Junk Food infringed Hit Box’s rights in it. And to be able to talk about that, we have to talk about the patent itself.

THE PATENT

Here’s what I know about patent applications: they have to describe the thing that’s been created and they have to distinguish it from previous inventions, also known as “prior art.” I also know that I’m no expert in patent law. So, I spoke with an actual patent lawyer about the patent at issue here, US Patent No. 10,022,623.

The patent’s title is “Ergonomically Correct Game Controller,” and its abstract says that it covers “A hand operated game controller for controlling a game console. Multiple push buttons are arranged on the surface of the game controller. The push buttons are placed in an arrangement that approximately matches the natural position of the fingers of the user’s hands. As the user press the buttons, control signals are sent from the buttons to the game console via wiring.” It then shows drawings of not just the classic hitbox layout but quite a few alternatives as well, including WASD layouts. In its descriptions, it says “It should be understood that the specific placement of buttons can be modified as desired. The important consideration is that the buttons are placed so that the fingers of the hand can naturally reach the buttons with minimum effort… It should be noted that the exact positioning, size and amount of buttons can be modified. It is preferable however, that the position of the buttons are such that they conform to the natural contour and shape of the user’s hand.” As for its description of prior art and what problems with previous inventions it purports to solve, it compares the hitbox to a Playstation pad, saying that the hitbox is a “better game controller.”

For Junk Food to win its claim that Hit Box’s patent is invalid, it would need to show that the patent shouldn’t have been granted because it was too generic, described something that already existed, or could have been obvious to anyone familiar with its field.

To start, they viewed the patent’s claims as much too broad. In their mind, the language of the patent could be applied to virtually any controller, bringing it close to a claim on the very idea of an ergonomic controller, which is a problem because while specific inventions developed from ideas are patentable, ideas themselves are not. This patent should have been limited, they felt, to some specific button placements and specific ergonomic claims.

The reason for only showing a Playstation pad and not a traditional fightstick or even previous buttons-only controllers, in my expert’s view, was to make the hitbox seem more novel than it really was. My patent expert even felt that the application could have been considered too similar to existing inventions or even obvious. After all, in one sense, it’s literally a fightstick controller but with more of the same type of buttons that were already on it.

In short, my patent expert doubts that Hit Box’s patent would stand up to a lawsuit.

Of course, none of this is to denigrate the many important contributions Hit Box has made to the evolution of fighting game controllers and to the FGC more broadly. But that historical importance may not be the same as whether its creations should be protectable by patent law.

But let’s say that the court disagrees with all this and finds that the patent is valid. What happens to Junk Food’s secondary claim that even if the patent is valid, they didn’t infringe on it? That’s a little murkier. My expert felt that Hit Box would be in a stronger position than Junk Food. Junk Food claims in its complaint that its snack box micro and snack box v2 don’t infringe because their button placements are different than in the hitbox and that its snack box micro also doesn’t infringe because it has custom buttons over mechanical key switches instead of traditional push buttons.

But if a court has already found validity in the patent, which makes both specific and general claims about button placements, it may be less likely to accept an argument about button placement as non-infringing. And while the type of buttons in the hitbox and snack box micro are different, they could arguably both be considered “push buttons” because, fundamentally, they are all buttons that the user can push.

So while Junk Food may have paths through on button layout and programmability, my patent expert thinks that if the patent is held valid, the odds of success on the second point lie with Hit Box.

MOVING FORWARD

This case is still in its earliest stage, just after Junk Food filed its complaint. If it continues, the next step will be for Hit Box to file its answer to that complaint, which is typically used to deny and explain away the allegations in the complaint and perhaps to file a counterclaim, which would consist of its own allegations against Junk Food. Eventually, the case would move to trial.

But that’s only if the case continues to move forward. Most disputes are settled outside of court; going through trial takes longer, costs more, and carries the risk of the court ruling for the other party. To speculate, if Hit Box is concerned that its patent may not hold up to scrutiny, it could seek to settle with Junk Food in a way that allows Junk Food to continue selling its products but also preserves Hit Box’s patent for use against other potential manufacturers. Alternatively, if Junk Food is concerned that Hit Box’s patent may hold up, it could seek to settle with Hit Box in a way that could cost it much less money than a full trial and a costly judgment.

As an attorney working in digital entertainment and ecommerce in the FGC and elsewhere, I don’t view this as a good guy vs bad guy situation. It’s no surprise that rights holders would want to enforce their rights or that upstarts would want to exert their own. My only hope here is that the result continues to allow for both innovation and successful enterprise within our cherished niche community.

This article is released under a Creative Commons Attribution CC BY License, meaning it can be shared, redistributed, or modified by anyone for any reason as long as any such use includes attribution to David Philip Graham of DPG at Law as well as links to the original article here and to dpgatlaw.com.