Gabrielle Russon
Disney won a big victory in an ongoing patent fight this week over the Disney Genie service although the case is far from over, one expert said.
The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) — which has the ominous reputation as the “patent death squad” — ruled in favor of Disney on all but three claims after a pair of inventors accused Disney of patent infringement, according to the administrative patent judges’ final decision released this week.
Walt Disney Parks and Resorts “has established by a preponderance of the evidence that Challenged Claims 1, 3–5, 7, 8–10, 12–14, 16–19, 20, 21, 24, and 25 are unpatentable,” the judges wrote.
“This is good news for Disney, but the last page hasn’t been written yet,” said University of Florida Levin College of Law professor Derek Bambauer. “We have to see what both sides decide to do in terms of appealing.”
Through the Disney World app, visitors can access Disney Genie to get recommendations on what to do based on their personal preferences.
However, two former Disney employees claimed they developed the technology 25 years ago and held the patent for their software that spit out a personalized itinerary for theme park guests that took into account meal times and broken rides.
As Agile Journeys, the two former employees filed a 2022 lawsuit against Disney in U.S. District Court. Disney struck back in a counter suit and also argued Agile Journeys’ patent was invalid during the PTAB trial.
January’s proceedings at the PTAB was “sort of a trial run” for Disney to present its case in federal court for the lawsuits, said Bambauer who teaches about patent litigation and isn’t involved the case but reviewed the records at Florida Politics’ request.
Agile Journeys can appeal the PTAB’s ruling, he added.
And just because Disney was mostly successful at the PTAB doesn’t guarantee Disney will prevail in the civil lawsuit, Bambauer said, although he warns the Patent Trial and Appeal Board’s ruling is “pretty influential.”
It signals Disney has a strong argument and gives the Mouse confidence going forward in the civil case, he said.
“It’s also given Disney the chance to kind of look over what evidence Agile has to try out their own evidence, and now they have a final written decision to sort of guide them in their litigation strategy,” Bambauer said.
The federal lawsuit had been paused while the PTAB trial was ongoing.
“It is easier in many ways to attack a patent claim in this administrative trial than it is in the District Court,” he said. “If you look at the statistical outcomes from the administrative trials, the Patent Trial and Appeals Board invalidates a lot of patent claims. It’s been called the patent death squad by some.”
There is a higher burden of proof for Disney to win the civil lawsuit in U.S. District Court than at the PTAB, Bambauer said. However, the PTAB focused only on a narrower scope of the claims so Disney was limited in what evidence it could present.
So in front of a U.S. District Court Judge, Disney can present a bigger case when the theme park company argues it isn’t infringing on Agile Journeys’ patent and Disney can attack with more evidence than it did during PTAB trial, the UF professor said.
All of this means both good news — and bad news — for Disney as the dispute continues over what could be millions of dollars at stake, Bambauer said.
Disney and attorneys for Agile Journeys did not respond to a request for comment for this story.
