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McRQ, Inc. v. Bethesda Softworks, LLC

United States District Court, D. Delaware

June 8, 2017

McRQ, INC, d/b/a PLANET BLUE, Plaintiff,
BETHESDA SOFTWORKS, LLC, Defendant. McRO, INC, d/b/a PLANET BLUE, Plaintiff,


          Christopher J. Burke UNITED STATES MAGISTRATE JUDGE.

         Plaintiff 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").[1] 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 Recommendation.[2]


         A. The Parties

         Plaintiff 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)

         B. The Asserted Patents

         Both 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)[3]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.

         The 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. l:17-22)[4] 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 phonemes[5] or 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)

         The "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)

         The 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)

         The 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)

         C. Procedural Posture

         On November 21, 2012, Plaintiff filed 11 related cases (including the instant two cases)[6]in this District.[7] (See D.I. 1) Plaintiff filed two additional related cases on June 6, 2013 and October 25, 2013.[8] 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)

         The 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. 12-1513-LPS-CJB)

         On 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 101").

         On 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.

         The 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 (hereinafter, "Tr."))


         It is 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).

         The 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).

         In 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.

         In 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.

         Extrinsic 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).

         In 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).


         All of 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, respectively:

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
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)

         1. A 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 parameters; and
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 animated characters.

('576 Patent, col. 11:27-47) Below the Court addresses the four disputed terms/term sets in the order in which they were argued.

         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"/"first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence"

         This 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[9] 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.)

         The 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 ("TAPT").[10]

         1. Must the "first set of rules" include "correspondence rules" and "transition rules"?

         The 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 requirement.

         The 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.

         For 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 rules.'" ...

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