CHRISTOPHER J. BURKE, Magistrate Judge.
In these two related actions (referred to herein as the "Harmonix Action" and the "Ubisoft Action," respectively) filed by Plaintiff Princeton Digital Image Corporation ("Plaintiff' or "PDIC") against Defendants Konami Digital Entertainment Inc. ("Konami US"), Harmonix Music Systems, Inc. ("Harmonix"), Electronic Arts, Inc. ("EA"), Ubisoft Entertainment SA ("Ubisoft SA") and Ubisoft Inc. ("Ubisoft Inc." and together with Ubisoft SA, "Ubisoft"), PDIC alleges that each of the Defendants ("Defendants") directly and indirectly infringe United States Patent No. 5,513,129 (the "1129 patent").
The Court incorporates by reference herein the factual and procedural background about these cases and the patent-in-suit that was set out in the Court's December 2, 2016 Report and Recommendation regarding claim construction. (D.I. 183 at 2-8)
The Court also incorporates by reference herein the discussion of general principles of claim construction, as well as the legal standard relating to the definiteness requirement, which were set out in its December 2, 2016 Report and Recommendation. (Id. at 8-10, 22-24)
35 U.S.C. § 112, ¶ 6 ("Section 112, paragraph 6")
The "means-plus-function" technique of claim drafting is a "convenience" that allows a patentee to express a claim limitation in functional terms "without requiring the patentee to recite in the claims all possible structures" that could perform that function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (internal quotation marks and citation omitted). In exchange for getting the benefit of this drafting convenience, however, patentees must disclose, in the written description of the patent, a corresponding structure for performing the claimed function. Noah Sys, Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012); see also Elekta, 344 F.3d at 1211 ("`[T]he price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof.") (citation omitted). A patentee satisfies this requirement "only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (emphasis added) (quoting Elekta, 344 F.3d at 1210); see also Elekta, 344 F.3d at 1220 ("The public should not be required to guess as to the structure for which the patentee enjoys the right to exclude. The public instead is entitled to know precisely what kind of structure the patentee has selected for the claimed functions, when claims are written according to section 112, paragraph 6."). "If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention as required by . . . section 112, [paragraph 2], which renders the claim invalid for indefiniteness." Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks and citation omitted).
Construing a means-plus-function limitation is a two-step process. The first step is determining the claimed function of the limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015); Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The second step is identifying the corresponding structure disclosed in the specification and equivalents thereof. Williamson, 792 F.3d at 1351; Medtronic, Inc., 248 F.3d at 1311.
When a patentee claims a computer-implemented invention and invokes means-plus-function limitations, the United States Court of Appeals for the Federal Circuit has "consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor." Aristocrat Techs. Austl. Pty Ltd. v. Int I Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). This requirement seeks to avoid "pure functional claiming[,]" id., and mandates that the patent must disclose sufficient algorithmic structure
The Court takes up the remaining five disputed terms addressed herein in the order in which the parties addressed them at the most recent Markman hearing. The first four terms are means-plus-function terms; the fifth term is not.
The first term at issue, "means for supplying a first signal selected from a group consisting of a control signal having music and/or control information generated in response to a music signal, a prerecorded control track having music and/or control information corresponding to the music signal, and a control signal having music and/or control information generated in response to the prerecorded control track[,]" appears in claim 12, from which asserted claim 14 depends. The parties agree that this term (as well as the next three terms) should be construed as a means-plus-function term pursuant to Section 112, paragraph 6. (D.I. 121 at 10, 12, 15, 18; D.I. 130 at 10, 17, 20, 23) As to this term, the parties disagree about the scope of the claimed function, as well as the sufficiency of the structure disclosed in the specification.
Taking up function first, Plaintiff's proposed function for this term is "supplying a first signal." (D.I. 121 at 9) Defendants' proposed function is "supplying a first signal selected from a group consisting of [1] a control signal having music and/or control information generated in response to a music signal, [2] a prerecorded control track having music and/or control information corresponding to the music signal, [3] and a control signal having music and/or control information generated in response to the prerecorded control track." (D.I. 130 at 10)
Defendants first argue that the doctrine of issue preclusion (as well as the doctrine of judicial estoppel) ends the inquiry with respect to the proper function for this term. (D.I. 182 (hereinafter "2
PDIC's briefing did not respond to this argument. (See D.I. 121 at 9-11; D.I. 147 at 4-6) When confronted with this issue at the most recent Markman hearing, PDIC's counsel explained that it was now advocating for a different, broader function because "when we took over the case [from PDIC's former counsel], we look at the issues anew and we're proposing what we think is the right answer here [.]"
The Federal Circuit has recently explained that "administrative decisions by the [PTAB] can ground issue preclusion in district court when the ordinary elements of issue preclusion are met[.]" SkyHawke Techs., LLC v. Deca Intl Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016). Issue preclusion (often referred to as the doctrine of "collateral estoppel") applies when "(1) the identical issue was previously adjudicated; (2) the issue was actually litigated; (3) the previous determination was necessary to the decision; and (4) the party being precluded from relitigating the issue was fully represented in the prior action." Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS, 2015 WL 1905871, at *1 (D. Del. Apr. 23, 2015) (quoting Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006)).
Here, the Court agrees with Defendants that issue preclusion applies. The first prong of the test is met, for example, because the PTAB previously adjudicated the issue as to what is the proper function of this term. PDIC argues to the contrary, asserting that issue preclusion is not implicated here because: (1) the PTAB could not decide indefiniteness, an issue that is relevant to the construction of the term; and (2) when the PTAB construed this term (to require the function now suggested by Defendants), it then went on only to consider elements 1 and 2 in determining whether the patent disclosed sufficient structure. (2
The remaining prongs of the test for issue preclusion are also met. The PTAB adopted this function using the same standard of claim construction as is applicable here, (JCCC, ex. 4 at 392), and its Final Written Decision constituted a final and valid judgment (one that was not appealed by PDIC), (see 2
For these reasons, the Court adopts Defendants' proposed function.
With the claimed function for this term now established to be "supplying a first signal selected from a group consisting of [1] a control signal having music and/or control information generated in response to a music signal, [2] a prerecorded control track having music and/or control information corresponding to the music signal, [3] and a control signal having music and/or control information generated in response to the prerecorded control track[,]" the parties next dispute whether the patent discloses sufficient structure. Defendants assert, and Plaintiff does not dispute, that the patent must disclose an algorithm or other sufficient structure for each of the alternative claimed functions described above. (D.I. 130 at 14 & n.17 (citing Noah Sys., Inc., 675 F.3d at 1318-19)) And the corresponding structures must disclose how the different types of signals are both generated and supplied. (See D.I. 130 at 14-17; D.I. 147 at 5-6) Defendants claim that the specification does not sufficiently disclose structure corresponding to Function [3]. (See, e.g., 2
As a general matter, the '129 patent explains that "music cannot directly interact with the virtual environment"; accordingly, the Acoustic Etch component of the invention "receives music (in some electronic, acoustic, or optical form) and generates control signals therefrom which are used by a VR [virtual reality] system to influence activity in the virtual world." ('129 patent, col. 4:63-67) And as Defendants note, with respect to the generation of control signals, the specification discusses the three alternative functions as separate and distinct: "the music signal of Fig. 3 has been delayed . . . in order to accomplish processing initiated in response to the control track [i.e., Function 2—prerecorded] (or control signals generated from the control track [i.e., Function 3—generated from prerecorded control track], or control signals generated from analyzed music) [i.e., Function 1—real-time][.]" (D.I. 130 at 14 (quoting '129 patent, col. 9:48-55) (emphasis added))
The specification discloses that with respect to Function [la], "supplying a . . . control signal having music . . . generated in response to a music signal", the control signals are "extracted from the music directly"—i.e., live or in real time. ('129 patent, col. 5:1-10; see also id, col. 8:33-41 ("An analog-to-digital conversion circuit within Acoustic Etch unit 3 receives and digitizes a music signal from source 1. . . . Analyzer 5 within Acoustic Etch unit 3 receives the digitized output of circuit 4, and generates control signals by processing the music signal (or both the music signal and the control tracks).")) In the Ubisoft IPR proceeding, the PTAB's construction did not specify an algorithm, and simply associated the following structure with this function: "(1) a source of music and/or a control track, such as a four-track audio tape, videogame cartridge or compact disc (CD); and (2) a processor programmed to generate control signals from the input music and/or control track and send the control signals to the VR processor." (JCCC, ex. 4 at 398 (emphasis added)) As for the specific programming required for directly extracting control signals from music, the specification explains that the music is analyzed for spectral components to determine the rhythm or beat of the music:
('129 patent, col. 11:31-37; see also id. at 5:1-10 ("[T]he Acoustic Etch can employ a simple algorithm . . . to extract a rhythm signal indicative of the beat of some frequency band of the music . . . or of some other parameter of a frequency band of the music. The rhythm signal is sent to the VR system which in turn generates control signals. . . .")) Defendants therefore propose that the corresponding structure clearly linked to Function [1a] is recited at '129 patent, cols. 5:1-10 & 11:31-37, (D.I. 130 at 15; D.I. 163 at 5-6), and PDIC does not dispute this structure, (see D.I. 147 at 5).
With respect to Function [lb], "supplying . . . a control signal having . . . control information generated in response to a music signal," Defendants first argued that the specification did not clearly link a corresponding structure to this function, (D.I. 130 at 16), but then ultimately accepted PDIC's position that "the structure for Function 1(b) [is recited in the '129 patent, cols.] 10:66-11:1 and 11:17-43[,]" (D.I. 163 at 6). The recited "control information" could be, for example, "the rhythm or beat of the music" or the "overall level of the music," ('129 patent, col. 11:34-41), and the Acoustic Etch component of the invention "extracts control information from the input music[,]" (id., cols. 10:66-11:1; see also id., col. 11:21-23 (explaining that the Acoustic Etch "takes in music and processor 5 processes it to produce control information" which is then "passed on to the VR computer")).
Function [2], "supplying . . . a prerecorded control track having music and/or control information corresponding to the music signal," is described in the patent as an "alternative (or in addition) to extracting signals from music itself[.]" (Id., col. 5:11-16 ("the invention can supply to the VR system one or more prerecorded control tracks corresponding to the music")) The specification explains that these prerecorded control tracks can be "generated automatically (e.g., by electronic signal processing circuitry) in response to a music signal and then recorded, or can be generated in response to manually asserted commands from a person (while the person listens to such music signal) and then recorded." (Id., col. 5:21-26) Defendants assert that "[t]he algorithm for performing this function is disclosed at [the '129 patent, cols.] 12:63-13:10, 13:60-14:22, and 16:43-17:12[,]" (D.I. 130 at 16), and PDIC does not disagree, (D.I. 147 at 4-6; D.I. 163 at 5-6).
The parties do dispute, however, whether the '129 patent discloses corresponding structure to perform Function [3]: "supplying . . . a control signal having music and/or control information generated in response to the prerecorded control track[.]" Generally, the patent explains with respect to this function that "the invention can . . . generate control signals from prerecorded control tracks and then supply such control signals to the VR system for processing." ('129 patent, col. 5:13-16; see also id., col. 6:1-6 ("[A]n operator can record a control track which is emotionally linked with a song. The VR system could then easily convert the control track into a variety of control signals, and can produce more repeatable and interesting results than could be achieved by processing the music directly")) The patent notes that "the control track is optionally prerecorded on the same medium as the music signal corresponding thereto [and] Acoustic Etch unit 3 can, in effect, extract the control track from the medium and pass it (or a control signal generated therefrom) to VR processor 7." (Id., col. 8:52-57) Defendants argue, citing in part to the declaration of their expert, Dr. Vijay K. Madisetti, that the specification contains no disclosure—"even at a high level"—describing how control signals are generated from a prerecorded control track, and that claim 14 is therefore indefinite. (D.I. 130 at 16; D.I. 163 at 6-7; D.I. 131 (hereinafter, "Madisetti Decl.") at ¶¶ 57-58)
For its part, PDIC explains that "[t]he only difference between [Function 3] and [F]unction [2] (generating and supplying a prerecorded control track having music and/or control information corresponding to the music signal) is the intermediate step of generating a control signal containing the music and/or control information from the prerecorded control track." (D.I. 147 at 6 (emphasis added)) PDIC asserts that the patent sufficiently describes how this step is accomplished, as the same structure that corresponds to Function [2] also "describes the intermediate step of playing back the control track to produce `control signals' 200X and 200Y that include the data previously encoded in the control track." (Id. (citing '129 patent, cols. 12:65-66, 13:60-65)) The Court agrees with PDIC that the specification contains sufficient corresponding structure for Function [3].
The plain language of the functions reflects that "[t]he only difference [between Function [2] and Function [3]] is that for [Function 2] the music and control information is still in the prerecorded control track. And for [Function [3]], the music or control information has been generated from or extracted from the prerecorded control track." (2
('129 patent, cols. 12:40-42, 13:55-67; see also D.I. 147 at 6; PDIC's Claim Construction Presentation, Slide 47; 2nd at 156) Then tape IF converters extract serial data streams from the control track signals, which are inputted to a microprocessor unit which processes the data and supplies it to the VR system. ('129 patent, cols. 13:65-14:7; see also id., cols. 16:43-17:12 ("Fig. 6 describes the playback phase of the invention. . . . [The audio tape 180T (which has control tracks)] is loaded into a four-track tape playing unit. . . . This unit plays the tape and produces 4 audio signals, two of which are standard signals meant to be listened to, while the two others contain control track data that will be processed and sent to VR system 250[.]")) In view of these disclosures, the Court does not agree with Defendants' position that the patent "doesn't disclose playing back a control track to produce . . . additional control signals[.]" (2
The parties' disputes with respect to these two terms are identical, (see, e.g., D.I. 121 at 18; D.I. 130 at 23; 2
The functions for these means-plus-function terms are not in dispute. With respect to the term "means for receiving the first signal and influencing action within a virtual environment in response to said first signal," (found in claim 12, from which asserted claim 14 depends), the parties agree that the function is "receiving the first signal and influencing action within a virtual environment in response to said first signal." (D.I. 121 at 11-12; D.I. 130 at 17) With respect to the term "means for producing the virtual environment in response to said prerecorded control track," (found in claim 16 from which asserted claims 19 and 20 depend), the parties agree that the function is "producing the virtual environment in response to said prerecorded control track." (D.I. 121 at 18; D.I. 130 at 23)
With respect to the associated structures for these terms, the parties agree on a few overarching principles. First, the parties agree that claims 14, 19 and 20 "describe generating a virtual environment based on a signal or control track containing `music and/or control information' and that, therefore, in order to generate the virtual environment, the claimed functions utilize (1) music information; (2) control information; or (3) music information and control information. (D.I. 147 at 7; see also D.I. 163 at 8; 2
The parties do not agree, however, on the content of that algorithm. The parties' competing proposals for the structures associated with these terms is set out in the chart below:
(D.I. 121 at 12, 18 (emphasis added); D.I. 130 at 17, 23 (emphasis added)) The crux of the parties' dispute is: (1) whether, as Defendants argue, the corresponding structures require the processor to be programmed to perform a spectral analysis of music information, and to influence action within the virtual environment upon detecting a certain threshold of energy at a specific frequency band of the music information, or (2) whether, as PDIC argues, software such as a graphics library is a sufficient recitation of the associated structure. (See DI 121 at 13-14; D.I. 147 at 6-7; 2
In support of their proposal, Defendants assert that the specification discloses only one algorithm for performing the claimed function, (D.I. 130 at 18; D.I. 163 at 8), as reflected in the below portion of the specification:
('129 patent, col. 18:57-67) PDIC concedes that performing spectral analysis is indeed disclosed in the specification as a means of producing the virtual environment generated from music information. (See D.I. 121 at 13-14; PDIC's Claim Construction Presentation, Slide 53) PDIC asserts, however, that Defendants' proposed algorithm is not required to perform the claimed function, because the virtual environment may be generated based on a signal or control track containing control information (instead of, or in addition to, music information). (D.I. 121 at 14; D.I. 147 at 7) According to PDIC, Defendants' proposed algorithm "is not relevant when the virtual environment is generated based on control information alone." (D.I. 147 at 7; see also PDIC's Claim Construction Presentation, Slide 53; 2
Defendants counter by suggesting that there would be nothing inappropriate in requiring this limitation—asserting that there is not a "sharp distinction" between music and control information in this context. (D.I. 163 at 8) In other words, Defendants claim that the spectral analysis at issue can in fact be performed on control information, because: (1) "[t]he claims state that control information `correspond[s] to a music signal'; and (2) "the specification teaches generating control information by processing music information." (Id. (citing '129 patent, col. 11:21-22); Defendants' Claim Construction Presentation, Slide 88) For two reasons, however, the Court is not persuaded.
The first reason has to do with the issue of redundancy. It is true that control information may be generated by processing music, as Defendants note. One way to actually generate control information is to analyze the music in terms of its spectral components. (2
('129 patent, col. 11:20-43 (emphasis added)) In earlier describing a preferred embodiment of the invention, the specification notes that the Acoustic Etch unit: (1) "receives and digitizes a music signal" from a music source; (2) a processor/analyzer in that component receives it and processes it (along with optional prerecorded control tracks that accompany the music signal); and then (3) outputs those control signals to the VR processor which generates the virtual environment. (Id., col. 8:33-50) Alternatively, the music signal (or the control tracks, or both the music signal and control tracks) can be supplied directly to the VR processor to, inter alia, "control generation of the virtual environment in response to the control tracks or music[.]" (Id., col. 8:45-51) In scenarios where spectral analysis is performed at that earlier step (when the music is processed by the Acoustic Etch unit to create control information that is then passed on to the VR processor), it would seem redundant to again perform spectral analysis on the control information a second time in order to influence action in the virtual environment. (2
Second, as PDIC notes, the patent talks exclusively of performing spectral analysis on music information, and it makes clear that control information does not always have to include information that is related to music. (2
Accordingly, the Court concludes that while spectral analysis is a required step of the algorithm when the VR system receives music information that has not previously undergone spectral analysis, it is not required when the system receives control information that was generated from music information that has previously been subjected to spectral analysis, or when the system receives only control information and there is no music information that needs to be analyzed.
That leaves the question of whether the specification discloses sufficient structure for the latter scenarios. The Court concludes that it does.
As to PDIC's own proposal for the corresponding structure for these terms, it points to the disclosure in the specification stating that, in a preferred embodiment, the VR system "comprises a Silicon Graphics Crimson computer outfitted with Reality Engine graphics, a serial port card, and the GL software library and the Fakespace, Inc. VLIB Virtual Reality software package[,]" ('129 patent, col. 17:23-27), for creating, destroying, moving, and/or modifying virtual objects in the virtual environment, and generating or playing music or sounds, (id., col. 18:9-14 ("The VR program then creates, destroys, moves or modifies the virtual environment, or virtual objects therein. This can be done using standard VR library software calls, and is preferable based upon all of the forms of data read by the system (including the control track information and corresponding music information) as described above"); see also D.I. 121 at 13) PDIC also cites to an earlier description in the specification that explains that the VR "graphics system 250 . . . can be, for example, a Silicon Graphics Crimson Computer with Reality Engine graphics, serial port board, and VLIB software available from Fakespace, Inc. (of Menlo Park, Calif.)." ('129 patent, col. 14:7-10 (cited in D.I. 121 at 13 n.25)) A few paragraphs later, the specification notes that "FIG. 10 is a block level description of the software which is preferably run on VR system 250[1" (Id., col. 14:36-37 (cited in D.I. 121 at 13 n.25)) Figure 10, in turn, indicates that the software, inter alia, will (1) read control track information; (2) read digitized audio and input information; and (3) create; destroy; move and modify objects. (Id., FIG. 10)
Defendants contend that PDIC's proposed structure fails because: (1) by covering software "such as" a graphics library, it does not impose any limitation on the claim; and (2) it depends upon "generic off the-shelf software [which] is insufficient to provide structure for a means-plus-function limitation." (D.I. 130 at 19; 2
For these reasons, the Court finds that: (1) the structure for the function "receiving the first signal and influencing action within a virtual environment in response to said first signal" is "a processor programmed with GL software library and the Fakespace, Inc. VLIB Virtual Reality software package for receiving the first signal and influencing action within a virtual environment in response to said first signal by processing the signal to create, destroy, move, and/or modify the display of the virtual environment or virtual objects in the virtual environment (and where spectral analysis has not yet been performed on any music information, such processor shall be programmed to receive the first signal, perform spectral analysis of digitized music information and create, destroy, move or modify the virtual environment or virtual objects therein upon detecting a certain threshold of energy at a specific frequency band of the music information), and optionally to generate and/or play music or sounds, and structural equivalents thereof"; and (2) the structure for the function "producing the virtual environment in response to said prerecorded control track" is "a processor programmed with GL software library and the Fakespace, Inc. VLIB Virtual Reality software package for producing the virtual environment in response to said prerecorded control track by processing music information and/or control information derived from the prerecorded control track to create, destroy, move and/or modify the display of the virtual environment or virtual objects in the virtual environment (and where spectral analysis has not yet been performed on any music information, such processor shall be programmed to perform spectral analysis of digitized music information and create, destroy, move or modify the virtual environment or virtual objects therein upon detecting a certain threshold of energy at a specific frequency band of the music information), and optionally to generate and/or play music or sounds, and structural equivalents thereof." See Viatech Techs., Inc. v. Microsoft Corp., Civil Action No. 14-1226-RGA, 2016 WL 3398025, at *11 (D. Del. June 14, 2016) ("A means-plus-function claim encompasses all structure in the specification corresponding to that element and equivalent structures.") (quoting Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999)).
The next term at issue, "means for prerecording a control track having music and/or control information corresponding to a music signal[,]" appears in claim 16, from which asserted claims 19 and 20 depend. With respect to this means-plus-function term, the parties disagree about the scope of the claimed function, as well as the sufficiency of the structure disclosed in the specification.
Taking up function first, Plaintiff's proposed function for this term is "prerecording a control track." (D.I. 121 at 14) Defendants' proposed function is "[a] prerecording a control track having music corresponding to a music signal, [b] prerecording a control track having control information corresponding to a music signal, or [c] prerecording a control track having both music and control information corresponding to a music signal[.]" (D.I. 130 at 14) The dispute here is the same type of dispute as the parties had with respect to identifying the proper function for the first term discussed above. That is, PDIC asserts that the language "music and/or control information corresponding to a music signal" should not be included in the function because it is structural language that describes alternative structures for the control track, (see, e.g., PDIC's Claim Construction Presentation, Slide 60; 2
The "analysis . . . is [therefore] very similar[,]" to that undergone with respect to the first term above, (2
For the same reasons discussed above with respect to the first term, then, issue preclusion applies. Thus, the Court agrees that the function of this term should be construed as Defendants propose: "[a] prerecording a control track having music corresponding to a music signal, [b] prerecording a control track having control information corresponding to a music signal, or [c] prerecording a control track having both music and control information corresponding to a music signal."
The parties next dispute whether there is requisite structure disclosed in the specification for Function [a] (prerecording a control track having music). (See, e.g., D.I. 121 at 14, 16; Defendants' Claim Construction Presentation, Slide 98)
Defendants argue that the term is indefinite because the specification does not disclose prerecording a control track having music/audio, and therefore does not disclose corresponding structure for this function. (D.I. 130 at 20-21) In support of their argument, Defendants rely heavily on the PTAB's observation that the specification "appears to make no mention of the function of prerecording a control track having only audio and instead appears to distinguish prerecorded control tracks from prerecorded audio[.]" (JCCC, ex. 3 at 396-97 (emphasis in original); see also id., ex. 4 at 402 (the PTAB reiterating in the Final Written Decision in the Ubisoft IPR that "the Specification does not describe prerecording a control track having audio") (emphasis in original))
For its part, PDIC asserts that the PTAB got it wrong, as the specification does disclose a prerecorded control track that has both audio information and control information on it, and that disclosure is sufficient structure for Function [a]. (D.I. 121 at 16 & n.32; D.I. 147 at 8-9 & n.19; 2
('129 patent, col. 20:10-20 (emphasis added))
Defendants seem to acknowledge that the patent discloses "generating a prerecorded control track having audio or music signals [that also has] control information corresponding to an audio signal." (D.I. 130 at 21; see also Madisetti Decl. at ¶ 63 ("[T]he '129 patent does not describe generating a prerecorded control track having audio or music signals without also having control information corresponding to an audio signal."))
The parties' other dispute as to structure for this means-plus function term relates to Function [b] (prerecording a control track having control information corresponding to a music signal). Defendants argue that the structure identified by the PTAB during the IPR proceedings, if adopted, must be modified to reflect statements made by PDIC during those proceedings in the course of distinguishing prior art. That is, Defendants point to PDIC's prior statements to the effect that the corresponding structure should be limited to microprocessors that generate the control track based on the content of a sound recording itself, and not based merely on time, positions or locations within a sound recording. (D.I. 121 at 17; D.I. 130 at 21-22)
By way of background as to this dispute, in its Petition for IPR review in the Ubisoft IPR proceeding, Ubisoft argued that a prior art reference known as Williams, which "discloses a process for prerecording a sound recording and animation images together with the software for synchronizing the actions and sounds on a memory device[,]" anticipated and/or rendered certain claims of the '129 patent obvious. (JCCC, ex. 4 at 47-69) In response, PDIC had posited that Williams did not disclose "prerecording a control track having audio and/or control information corresponding to an audio signal" because Williams discloses that "different actions such as . . . face changes, arm movements, a bird flying, or a candlestick appearing out of nowhere . . . can be associated with the time, positions or locations in the sound recording either manually or automatically." (Id. at 124-25 (internal quotation marks and citation omitted)) Therefore, PDIC argued, "the control information in Williams corresponds to time, position or location, not to an audio signal as required by the claims. That is, once the timer starts, the graphics are displayed irrespective of the audio content." (Id. at 125) Ultimately, the PTAB agreed with PDIC and declined to institute review with respect to Williams:
(Id. at 170-71, 174-75)
The Court agrees with Defendants that the substance of Plaintiff's prior argument in the IPR should bind it here. In the Court's view, this is most accurately expressed as application of the doctrine of prosecution history disclaimer. (See Tr. at 185 (Defendants' counsel pointing out that PDIC's statements distinguishing Williams from the claimed invention during the Ubisoft IPR "are now part of the intrinsic record and part of the prosecution history")) The Federal Circuit has recently held that "statements made by a patent owner during an IPR proceeding [including in a preliminary response filed prior to an institution decision] can be considered during claim construction and relied upon to support a finding of prosecution disclaimer." Aylus Networks, Inc. v. Apple, Inc., 856 F.3d 1353, 1361-62 (Fed. Cir. 2017). The doctrine of prosecution history disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Id. at 1359 (citation omitted). The Federal Circuit explained that its extension of the doctrine to IPR proceedings "will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers." Id. at 1360. Here, it is clear that before the PTAB, PDIC argued that the claim limitation "prerecording a control track having audio and/or control information corresponding to an audio signal" required that control information must correspond not to time, position, or locations in a sound recording, but simply to the audio signal itself. Here, in contrast, it argues that the claim term should not be limited to a structure that generates a control track based on the content of a sound recording itself, and instead could amount to a structure that generates a control track based merely on time, positions or locations within a sound recording.
The Court will therefore recommend that the structure for Function [b] be construed as follows: (i) a first media player unit (e.g., four-track tape player, CD or DAT playback device), a microprocessor for generating a control track from the received data from the media player unit (based on the content of a sound recording itself, and not based merely on time, positions or locations within a sound recording), and a media recorder (see D.I. 130 at 22 (citing '129 patent, cols. 13:11-31, 20:10-13)); or (ii) one or more input devices for inputting signals, a microprocessor for generating a control track from the received signals (based on the content of a sound recording itself, and not based merely on time, positions or locations within a sound recording), and a media recorder (id. (citing '129 patent, cols. 13:32-48, 20:10-13)).
Dependent claim 20 requires that "said control track is time shifted relative to the music signal to compensate for delays in said virtual reality computer system." ('129 patent, col. 30:45-47) The patent notes that an object of the invention is "to provide a VR system which delays audio (in response to which control signals are generated) in order to compensate for the lag introduced by other components of the VR system[.]" (Id., col. 6:41-42, 50-53; see also id., Abstract) The patent later explains that "preferred embodiments of the invention will implement one of two delay compensation techniques": (1) causing the music signal to be "delayed (phase shifted)" while the control track is being processed by the VR system; or (2) causing the control track to be "phase shifted in advance" at the time it is prerecorded. (Id., cols. 9:41-10:65; see also D.I. 121 at 19; D.I. 130 at 24)
Defendants propose that this term be construed to mean "a pre-selected delay between music and control track[s] is implemented at the time when both the control tracks and the music are prerecorded[.]" (D.I. 130 at 23) PDIC proposes that the term be construed to mean "control track is time shifted relative to the music signal when the control track is recorded and/or processed." (D.I. 121 at 19) The crux of the dispute, then, is whether the term encompasses only the second of the above-referenced two delay compensation techniques (as Defendants argue), or whether (as PDIC argues) both forms of delay compensation techniques are examples of "where the control track is phase shifted relative to the music signal[.]" (Id. at 19-20; D.I. 130 at 23-24)
Looking first to the claim language itself, the Court notes that it "requires that the control track is shifted, not the music signal." (D.I. 163 at 10 (certain emphasis in original); see also '129 patent, col. 30:45-46) Additionally, claim 20 depends from claim 16, which claims a VR computer system wherein a "prerecorded control track" is generated and the virtual environment is produced in response to that prerecorded control track. ('129 patent, col. 30:22-28) Thus, in claim 20, the "said control track" that is time shifted is the "prerecorded control track." (Id., col. 30:45-47; see also 2
The Court next turns to claim 14, to which Defendants point in support of their argument. Claim 14 depends from independent claim 12, and it recites "[t]he apparatus of claim 12, wherein said music signal is delayed in time to compensate for delays in other parts of the virtual reality computer system." ('129 patent, col. 30:16-18 (emphasis added)) The term at issue cannot be construed "in a vacuum, but rather in the context of the intrinsic evidence" including "the other claims [and] the specification[.]" Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003); see also (2
In arguing for a broader construction, PDIC asserts that the "patent states that both forms of delay are examples of `where the control track is phase shifted relative to the music signal'"; therefore, it argues, the term should be construed such that the control track could be time shifted when it is recorded (i.e., in advance), or when it is processed (i.e., meaning the music signal will be delayed while the control track is being processed). (D.I. 121 at 19; see also 2
('129 patent, col. 10:20-33) Thus, in distinguishing these two delay compensation techniques, this passage articulates reasons why shifting the control track at the time when both the control tracks and the music are prerecorded does make a real difference—it requires less equipment and it can be cheaper. It makes sense, then, that the claims would use different wording to refer to these two different techniques.
For these reasons, the Court finds that the claim language, surrounding claims, and specification corroborate the notion that dependent claim 20 covers the delay compensation technique whereby the prerecorded control track is time shifted at the time it is prerecorded. The language of Defendants' proposal comes directly from the specification when it describes this embodiment: "a pre-selected delay between the music and control tracks is implemented at the time when both the control tracks and the music are prerecorded." ('129 patent, col. 10:22-25) The Court therefore recommends that Defendants' proposal be adopted for this term.
For the foregoing reasons, the Court recommends the following constructions:
1. For the term "means for supplying a first signal selected from a group consisting of a control signal having music and/or control information generated in response to a music signal, a prerecorded control track having music and/or control information corresponding to the music signal, and a control signal having music and/or control information generated in response to the prerecorded control track" the function is "supplying a first signal selected from a group consisting of [1] a control signal having music and/or control information generated in response to a music signal, [2] a prerecorded control track having music and/or control information corresponding to the music signal, [3] and a control signal having music and/or control information generated in response to the prerecorded control track." The corresponding structure for Function [la] ("supplying . . . a control signal having music . . . generated in response to a music signal") is recited at '129 patent, cols. 5:1-10 & 11:31-37. The corresponding structure for Function [lb] ("supplying . . . a control signal having . . . control information generated in response to a music signal") is recited at '129 patent, cols. 10:66-11:1 and 11:17-43. The corresponding structure for Function [2] ("supplying . . . a prerecorded control track having music and/or control information corresponding to the music signal") is recited at '129 patent, cols. 12:63-13:10, 13:60-14:22, and 16:43-17:12. The corresponding structure for Function [3] ("supplying . . . a control signal having music and/or control information generated in response to the prerecorded control track") is recited at '129 patent, cols. 12:63-13:10, 13:60-14:22, 16:43-17:12, 20:10-34 & Figs. 1, 2, 4, 6.
2. For the term "means for receiving the first signal and influencing action within a virtual environment in response to said first signal" the function is "receiving the first signal and influencing action within a virtual environment in response to said first signal." The corresponding structure for this term is "a processor programmed with GL software library and the Fakespace, Inc. VLIB Virtual Reality software package for receiving the first signal and influencing action within a virtual environment in response to said first signal by processing the signal to create, destroy, move, and/or modify the display of the virtual environment or virtual objects in the virtual environment (and where spectral analysis has not yet been performed on any music information, such processor shall be programmed to receive the first signal, perform spectral analysis of digitized music information and create, destroy, move or modify the virtual environment or virtual objects therein upon detecting a certain threshold of energy at a specific frequency band of the music information), and optionally to generate and/or play music or sounds, and structural equivalents thereof." For the term "means for producing the virtual environment in response to said prerecorded control track" the function is "producing the virtual environment in response to said prerecorded control track." The corresponding structure for this term is "a processor programmed with GL software library and the Fakespace, Inc. VLIB Virtual Reality software package for producing the virtual environment in response to said prerecorded control track by processing music information and/or control information derived from the prerecorded control track to create, destroy, move and/or modify the display of the virtual environment or virtual objects in the virtual environment (and where spectral analysis has not yet been performed on any music information, such processor shall be programmed to perform spectral analysis of digitized music information and create, destroy; move or modify the virtual environment or virtual objects therein upon detecting a certain threshold of energy at a specific frequency band of the music information), and optionally to generate and/or play music or sounds, and structural equivalents thereof."
3. For the term "means for prerecording a control track having music and/or control information corresponding to a music signal" the function is "[a] prerecording a control track having music corresponding to a music signal, [b] prerecording a control track having control information corresponding to a music signal, or [c] prerecording a control track having both music and control information corresponding to a music signal." The corresponding structure for Functions [a] and [c] is recited at '129 patent, cols. 7:30-32, 8:58-9:3, 12:38-42, 12:57-62, 13:50-59, 14:55-15:16, 20:10-20 & Figs. 2, 5. The corresponding structure for Function [b] is (i) a first media player unit (e.g., four-track tape player, CD or DAT playback device), a microprocessor for generating a control track from the received data from the media player unit (based on the content of a sound recording itself, and not based merely on time, positions or locations within a sound recording), and a media recorder (see D.I. 130 at 22 (citing '129 patent, cols. 13:11-31, 20:10-13)); or (ii) one or more input devices for inputting signals, a microprocessor for generating a control track from the received signals (based on the content of a sound recording itself, and not based merely on time, positions or locations within a sound recording), and a media recorder (id. (citing '129 patent, cols. 13:32-48, 20:10-13)).
4. "control track is time shifted relative to the music signal" means "a pre-selected delay between music and control track[s] is implemented at the time when both the control tracks and the music are prerecorded"
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R. Civ. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections within fourteen (14) days after being served with a copy of this Report and Recommendation. Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the loss of the right to de novo review in the district court. See Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1 (3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov.
