HUGE blow to Nintendo: head of U.S. patent office takes RARE step to order reexamination of “summon subcharacter and let it fight in 1 of 2 modes” patent – games fray

Words that are underlined link to explanations in our IP Lingo dictionary unless the underlined passages explicitly refer to other articles.

This order by Director Squires is good news for the U.S. patent system and for that small company named Pocketpair that is forced to defend against Nintendo’s patent assertions. By extension, it validates games fray‘s concerns over the grant of this patent and the criticism voiced by others who subsequently voiced similar opinions.

Director Squires’s order is dated November 3, 2025 (Monday).

It relates to claims 1, 13, 25 and 26 of the patent. Those are the only independent claims. If they fall, which we believe will most likely happen, the remaining ones (which depend on those claims) will fall as well. This is a house of cards.

Normally, ex parte reexaminations result from a petition by a company that has to defend against a patent, has been threatened, or anticipates litigation. Here, however, there was no other company involved. The USPTO Director himself took the initiative.

If Nintendo sued anyone over that patent right now in a United States District Court, it is a given that the court would stay the proceedings pending the outcome of the reexamination.

In his Senate confirmation hearing Director Squires was asked about his criticism of the high rate of invalidation of granted U.S. patents in subsequent proceedings. He then made it clear that he wanted U.S. patents to be “born strong” so they have value. On the one hand, this means that he does not want strong patents to be wrongly invalidated just because of serial challenges. In a recent document, the USPTO explained that if a patent is valid in the opinion of 70% of those looking at it, it is objectively strong, but if it gets challenged over and over again, there will eventually be a panel that has the minority (30%) view. At the same time, Director Squires’s order to have Nintendo’s ‘397 patent reexamined shows that he wants to weed out objectively bad patents.

To be clear, Nintendo does obtain patents on genuine technical inventions, which are typically hardware patents. But it has also sought to abuse the patent system by monopolizing game rules.

Nintendo regularly has to try to invalidate other companies’ patents. For example, on December 2 and 3, 2025 the Unified Patent Court’s (UPC) Hamburg Local Division (LD) will hear two cases brought by a licensing firm over former BlackBerry patents. As the following screenshot shows, Nintendo brought revocation counterclaims against both of those patents:

Here’s Director Squires’s order that dooms Nintendo’s ‘397 patent:

Here are the two prior art references cited in the order. First, the 2002 Konami patent application (it was filed in Japan in 2001, then in the U.S. in 2002, and published in 2002 when the original Japanese application was 18 months old):

It is ironic, or one might even say that it adds insult to injury, that the second prior art reference is one of Nintendo’s own earlier patent applications (filed in 2019, published in 2020):

This is not the first time for a fray article to have led to procedural decisions. Last month, Mr Justice Richard Meade of the High Court of Justice for England & Wales summoned Amazon and publicly-traded U.S. research and licensing firm InterDigital to a hearing after reading about a foreign decision on ip fray (October 14, 2025 ip fray article), and at a subsequent UK hearing counsel for Amazon said that Presiding Judge Professor Dr. Peter Tochtermann of the Unified Patent Court’s Mannheim Local Division ordered the parties to comment on another ip fray report (item 5 of an October 30, 2025 ip fray article).

It is a feature of the patent system that applicants have to face their own prior publications as prior art. Now, some of you may (still) be asking yourselves why Nintendo then filed patent applications after Palworld’s release on Palworld game rules. We explained that in the first part of an “explain it to me like I’m five” article series on the case (January 23, 2025 games fray article). The difference between the 2019 Nintendo application and the patents they are using against Palworld is that all of the patents-in-suit claim back priority to December 2021, which is lawful provided that the original application sufficiently disclosed what later-sought patent claims cover. But the relevant applications, including the one that led to the ‘397 patent, do not claim back priority to Nintendo’s December 12, 2019 application shown above.

In any event, there’s also that Konami patent application that is more than 20 years old…

The order explicitly refers to the distinction between a main (player) and a subcharacter. An academic quoted by a tech news website proposed StarCraft as prior art, but at least the original StarCraft does not show that distinction: a player controls an army of units, but there is no particular player character who spawns subcharacters that will then engage in manual or automatic battle (item 2 of our September 20, 2025 article).

There may not be any further developments this calendar year relating to Nintendo’s lawsuit against Pocketpair or patents that are somewhat related to it. In 2026, however, some decisions will come down, particularly by Presiding Judge Motoyuki Nakashima who leads a patent division of the Tokyo District Court. It is ever more likely that Nintendo will lose.