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NMRA files DCC-sound Patent Challenge against Real Rail Effects, Inc.

The NMRA, in cooperation with several manufacturers, on November 20, 2007 filed a patent examination request with the United States Patent & Trademark Office. The examination request concerns a patent application filed by Real Rail Effects, Inc. on August 11, 1994, a reissue application filed on May 5, 1997 and a patent issued on December 29, 1998, and a pending application filed on August 3, 2004.

In its patent, Real Rail Effects claims to have invented an "integrated sound/motor/special effects control: in short a decoder with sound. If the patent were allowed to stand, then all other manufacturers of sound-related DCC products would be forced to pay royalties to Real Rail Effects. This increase in costs would be passed along to the consumer, thus raising the price of all DCC sound-related products to the model railroad hobbyist.

The NMRA and the manufacturers who are cooperating with the NMRA on this patent challenge contend that Real Rail Effects is not entitled to the patent because the invention of sound with DCC occurred before June, 1992, well before the time claimed by Real Rail Effects, and sound with DCC was already in use by other manufacturers at the time the patent was filed.

Earlier this year, Real Rail Effects sued three manufacturers: QS Industries, Inc.; American Hobby Distributors, Inc., doing business as QSI Solutions; and Atlas Model Railroad Company, Inc. In the lawsuit, Real Rail Effects alleges that the three manufacturers infringed on its patent in the manufacture of DCC products that integrate sound. Real Rail Effects also sent letters to numerous other manufacturers, including Bachmann, Overland, and Intermountain Railway Company, requesting that they cease and desist or pay royalties.

Robert J. Amsler, Jr., General Counsel for the NMRA, at the direction of the Board of Directors, spearheaded a cooperative legal challenge and retained Daniel G. Radler and Jeremy Westlake, patent attorneys in Milwaukee. These attorneys have worked hard with knowledgeable NMRA members and model railroad manufacturers to identify key technologies published prior to the claimed date by Real Rail Effects for use in the challenge. The NMRA believes that it and the manufacturers are in a good position to challenge the patent of Real Rail Effects.

The exact process is an ex parte (with only one party to the dispute present) reexamination request. The NMRA intends to use a number of prior art references not submitted by Real Rail Effects to the USP&TO office, as well as some that were buried in the mounds of paperwork presented to the original patent examiner.

These references include an article by Mr. Rutger Friberg, which was published in December, 1992, eight months prior to the effective date of Real Rail Effects' patent. In addition, Mr. Steve Dominguez filed an affidavit, called a declaration, discussing a handout distributed by Soundtraxx at a train show prior to the patent date. Other key individuals in the challenge are Mr. Stan Ames and Mr. Brian Barnt, key NMRA DCC resources at the time of the patent claim date, and Mr. Andy Sperandeo, Executive Editor of Model Railroader.

The NMRA is deeply indebted to these individuals and the supporting manufacturers in supporting this effort. The NMRA intends to use this art to show that the information existed prior to the effective date of the Real Rail Effects patent, and thus the claims upon which the patent is based were "obvious" (meaning that the patent was not based upon a new idea, but rather was something anyone could have come up with by just examining what others in the field were already doing).

The NMRA undertook this patent challenge because we are dedicated to the idea of keeping DCC open to all in the hobby. This challenge is necessary for the NMRA to continue to fulfill one of its key missions, promoting and ensuring the interoperability of railroad equipment and hobby technologies.

We will provide further updates as events progress.