United States District Court, D. Delaware
REPORT AND RECOMMENDATION
Christopher J. Burke UNITED STATES MAGISTRATE JUDGE.
McRO, Inc., d/b/a Planet Blue ("McRO" or
"Plaintiff) filed the instant actions for patent
infringement against Defendants Bethesda Softworks, LLC and
Harmonix Music Systems, Inc. (collectively,
"Defendants"). McRO alleges infringement of United States
Patent Nos. 6, 307, 576 (the "'576 Patent") and
6, 611, 278 (the "'278 Patent") (collectively,
the "Asserted Patents" or
"patents-in-suit"). Presently before the Court is
the matter of claim construction. The Court recommends that
the District Court adopt the constructions set forth below
for the four terms/term sets discussed in this Report and
McRO is a company that "is actively involved in the
advertising industry as a computer graphic, visual effects,
and animation services company[.]" (D.L 1 at ¶ 1)
Defendants are companies active in the video game industry.
(See, e.g., Id. at ¶ 2)
The Asserted Patents
the '576 Patent and '278 Patent are entitled
"Method for Automatically Animating Lip Synchronization
and Facial Expression of Animated Characters[.]" (D.I.
1, exs. A & B)The '576 Patent issued on October 23,
2001 from U.S. Appl. No. 08/942, 987, which was filed on
October 2, 1997. The '278 Patent is a continuation of the
'576 Patent. It issued on August 26, 2003, from U.S.
Appl. No. 09/960, 831, which was filed on September 21, 2001.
patents-in-suit describe and claim methods for controlling
and automatically animating lip synchronization and facial
expressions of three-dimensional animated characters. The
patents explain that prior methods in the field "have
long suffered from the need of providing an economical means
of animating lip synchronization and character expression in
the production of animated products due to the extremely
laborious and lengthy protocols of such prior traditional and
computer animation techniques." ('576 Patent, col.
These prior methods involved "manual techniques commonly
using a 'morph target' approach." (Id.,
col. 1:46-47) "Morph targets" are models matching
reference points of mouth positions to certain
sets of phonemes. (See id., col. 1:47-5l) These
morph targets are used in conjunction with a reference model
of a neutral mouth position. (See id.) "Each
morph target has the same topology as the neutral model, the
same number of vertices, and each vertex on each model
logically corresponds to a vertex on each other model."
(Id., col. 1:5l-54)
"deltas, " or changes, of each morph target
relative to the neutral model are computed as a vector from
each vertex on the reference to each vertex on each morph
target to produce a "delta set" for each morph
target. (Id., col. 1:58-6l) In producing animation
products, the animator may apply a value between 0 and 1
(called a "morph weight"), which is assigned to
each delta set. (Id., col. 1:63-65) The morph weight
determines what percentage the animated mouth moves from the
neutral position to the corresponding morph target. For
example, if the morph target is the phoneme "oh, "
and the morph weight is 0.5, the neutral mouth position's
geometry is modified halfway between neutral and the
"oh" morph target. (Id., col. 2:19-22) An
animator can also blend morph targets; for example, if the
"oh" morph weight is 0.3 and the "ee"
morph weight is 0.7, the neutral mouth geometry is modified
to have some of the "oh" model characteristics and
more of the "ee" model characteristics.
(Id., col. 2:23-27)
patents explain that the prior art applied this process using
a "keyframe" approach, where the animator had to
manually set "the appropriate weights at certain
important times ('keyframes') and a program
interpolate[d] each of the channels at each frame."
(Id., col. 2:31-34) This process "is very
tedious and time consuming, as well as inaccurate due to the
large number of keyframes necessary to depict speech."
(Id., col. 2:35-37)
claimed invention attempts to solve these problems "by
providing an integrated method embodied in computer software
for use with a computer for the rapid, efficient lip
synchronization and manipulation of character facial
expressions, thereby allowing for rapid, creative, and
expressive animation products to be produced in a very cost
effective manner." (Id., col. 2:39-44) It does
so by utilizing "a set of rules that determine the
systems output comprising a stream or streams of morph weight
sets when a sequence of timed phonemes or other timed data is
encountered." (Id., col. 3:4-7) The claimed
methodology "allows for automatically animating lip
synchronization and facial expression of three dimensional
characters in the creation of a wide variety of animation
products" and the method and apparatuses described by
the patents "are operably integrated with computer
software and hardware." (Id., col. 3:12-18)
November 21, 2012, Plaintiff filed 11 related cases
(including the instant two cases)in this District. (See D.I. 1)
Plaintiff filed two additional related cases on June 6, 2013
and October 25, 2013. All 13 of these cases were assigned to
Chief Judge Leonard P. Stark, and all were referred to the
Court by Chief Judge Stark for all purposes up to and
including the resolution of case-dispositive motions.
(See, e.g., D.I. 17)
related cases all alleged infringement of the '576 and
'278 Patents. McRO alleges that Defendants infringed
these patents by "employing] automated
lip-synchronization methods and processes to create and
develop [ ] computer and/or video games" that are
"purchased by consumers in the United States[.]"
(See, e.g., D.I. 1 at ¶¶ 11-12) While
Plaintiff filed amended complaints in certain of the actions
and not others, each of the then-Defendants had filed Answers
to the operative complaint in their respective cases as of
June 2, 2014. (See, e.g., D.I. 51, Civil Action No.
January 17, 2014, however, the Defendants in the related
cases filed a motion to stay ("Motion to Stay")
these actions in light of (1) requested inter partes
review ("IPR") proceedings regarding the
asserted patents that were not yet instituted by the Patent
Trial and Appeals Board ("PTAB") and (2) imminent
claim construction proceedings involving the same patents in
related cases (the "California Actions") in the
United States District Court for the Central District of
California (the "Central District of California").
(D.I. 23) The Court denied the Motion to Stay via a
Memorandum Order on May 1, 2014, without prejudice to
Defendants' ability to renew the motion after the PTAB
issued a decision on whether to initiate the IPR proceedings.
(D.I. 45) However, on October 16, 2014, the parties
stipulated to a stay. (D.I. 79) On November 10, 2014, the
Court further ordered that the case would remain stayed
pending the appeal of a decision in the related matters in
the Central District of California that had dismissed those
cases pursuant to 35 U.S.C. § 101 ("Section
September 13, 2016, the United States Court of Appeals for
the Federal Circuit reversed the decision of the Central
District of California, holding that the asserted claims are
not ineligible under Section 101. See McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016). That same day, Plaintiff requested that the Court
lift the stay in the instant actions. (D.I. 83) The stay was
lifted on September 16, 2016.
parties filed simultaneous opening claim construction briefs
on January 18, 2017, and simultaneous responsive briefs on
February 8, 2017. (D.I. 105, 106, 111, 112) The Court held a
Markman hearing on February 21, 2017. (D.I/141
STANDARD OF REVIEW
well-understood that "[a] claim in a patent provides the
metes and bounds of the right which the patent confers on the
patentee to exclude others from making, using, or selling the
protected invention." Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.
Cir. 1989). Claim construction is a generally a question of
law, although subsidiary fact finding is sometimes necessary.
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct.
831, 837-38 (2015).
Court should typically assign claim terms their
'"ordinary and customary meaning[, ]'"
which is "the meaning that the term[s] would have to a
person of ordinary skill in the art in question at the time
of the invention, i.e., as of the effective filing date of
the patent application." Phillips v. AWH Corp.,
415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations omitted).
However, when determining the ordinary meaning of claim
terms, the Court should not extract and isolate those terms
from the context of the patent, but rather should endeavor to
reflect their "meaning to the ordinary artisan after
reading the entire patent." Id. at 1321;
see also Eon Corp. IP Holdings v. Silver Spring Networks,
Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016).
proceeding with claim construction, the Court should look
first and foremost to the language of the claims themselves,
because "[i]t is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude."
Phillips, 415 F.3d at 1312 (internal quotation marks
and citations omitted). For example, the context in which a
term is used in a claim may be "highly
instructive." Id. at 1314. In addition,
"[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable" in discerning the
meaning of a particular claim term. Id. This is
"[b]ecause claim terms are normally used consistently
throughout the patent, [and so] the usage of a term in one
claim can often illuminate the meaning of the same term in
other claims." Id. Moreover, "[differences
among claims can also be a useful guide[, ]" as when,
for example, "the presence of a dependent claim that
adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent
claim." Id. at 1314-15.
addition to the words of the claims, the Court should. look
to other intrinsic evidence. For example, the Court should
analyze the patent specification, which "may reveal a
special definition given to a claim term . . . that differs
from the meaning [that term] would otherwise possess."
Id. at 1316. In that case, "the inventor's
lexicography governs." Id. Even if the
specification does not contain a special definition of the
term at issue, it "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed
term." Id. at 1315 (internal quotation marks
and citation omitted). That said, however, the specification
"is not a substitute for, nor can it be used to rewrite,
the chosen claim language." SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). In addition to the specification, a court should also
consider the patent's prosecution history, if it is in
evidence, because it "can often inform the meaning of
the claim language by demonstrating how the inventor
understood the invention and whether the inventor limited the
invention in the course of prosecution[.]"
Phillips, 415 F.3d at 1317.
evidence, "including expert and inventor testimony,
dictionaries, and learned treatises[, ]" can also
"shed useful light on the relevant art[.]"
Id. (internal quotation marks and citations
omitted). Overall though, while extrinsic evidence may be
useful, it is "less significant than the intrinsic
record in determining the legally operative meaning of claim
language." Id. (internal quotation marks and
citations omitted); accord Markman v. Westview
Instruments, Inc., 52 F.3d 967, 980-81 (Fed. Cir. 1995).
utilizing these resources during claim construction, courts
should keep in mind that "[t]he construction that stays
true to the claim language and most naturally aligns with the
patent's description of the invention will be, in the
end, the correct construction." Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1250
(Fed. Cir. 1998).
the four disputed terms/term sets addressed herein appear in
independent claim 1 of the '278 Patent and independent
claim 1 of the '576 Patent. Those claims read,
1. A method for automatically animating lip synchronization
and facial expression of three-dimensional characters
obtaining a first set of rules that defines a morph weight
set stream as a function of phoneme sequence and times
associated with said phoneme sequence; obtaining a plurality
of sub-sequences of timed phonemes corresponding to a desired
audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said
first set of rules to each sub-sequence of said plurality of
sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input
sequence of animated characters to generate an output
sequence of animated characters with lip and facial
expression synchronized to said audio sequence.
('278 Patent, col. 11:43-58)
method for automatically animating lip synchronization and
facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and time
of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of
subsequences; generating an intermediate stream of output
morph weight sets and a plurality of transition parameters
between two adjacent morph weight sets by evaluating said
plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a
desired frame rate from said intermediate stream of output
morph weight sets and said plurality of transition
applying said final stream of output morph weight sets to a
sequence of animated characters to produce lip
synchronization and facial expression control of said
('576 Patent, col. 11:27-47) Below the Court addresses
the four disputed terms/term sets in the order in which they
"first set of rules that defines a morph weight set
stream as a function of phoneme sequence and
times associated with said phoneme sequence"/"first
set of rules that define output morph weight set stream as a
function of phoneme sequence and time of said phoneme
first disputed term set relates to the "first set of
rules" called out in claim 1 of the patents. Defendants
propose that this term set be construed as:
A set of at least correspondence rules and transition rules,
manually set up by a user, that define an output morph
weight set stream, where (1) the correspondence rules specify
a morph weight set for each incoming sub-sequence of multiple
sequential phonemes, and (2) the transition rules specify
time parameters of the transitions between the sub-sequences.
(D.I. 100, ex. 1 at 3) Alternatively, they argue that the
specification lacks sufficient written description for these
claim elements. (Id.) Plaintiff proposes that
"[a]s used in these phrases, the terms 'time'
and 'times' refer to one or more lengths of time,
i.e. durations. Otherwise, the language in these phrases
do[es] not require construction." (Id.)
parties' competing proposed constructions present three
primary disputes: (1) whether the construction should require
the "first set of rules" to include
"correspondence rules" and "transition
rules"; (2) whether the construction should specify that
the rules are "manually set up by a user"; and (3)
whether "time" and "times" must refer to
duration, or whether they can also refer to discrete moments
in time corresponding to the start of each phoneme in the
time-aligned phonetic transcription
Must the "first set of rules" include
"correspondence rules" and
first dispute centers on Defendants' proposed requirement
that the first set of rules must include at least two
categories of rules: correspondence rules and transition
rules. Plaintiff puts forward two strains of argument in
advancing its position against inclusion of such a
first strain of argument advanced by Plaintiff is that
"the 'rules' do not have to be classified as
'correspondence' and 'transition' rules[,
]" because the claims at issue do not literally require
as much and because the patent also makes reference to rules
relating to "phoneme context and duration other
than 'correspondence' and 'transition'
rules[.]" (D.I. 106 at 11 (emphasis added)) And this is
all true, as far as it goes.
example, as to the claims' literal language, independent
claim 1 in both patents does not explicitly require that
something called "correspondence rules" or
"transition rules" be a part of the "first set
of rules." (See '576 Patent, col. 11:27-47;
'278 Patent, col. 11:43-58) And as Plaintiff notes,
"[d]ependent claims 2 and 20 of the '278 Patent and
dependent claims 13 and 26 of the '576 Patent [do]
require that the first set of rules comprise
'correspondence rules' and 'transition