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Princeton Digital Image Corp. v. Konami Digital Entertainment Inc.

United States District Court, D. Delaware

June 16, 2017

PRINCETON DIGITAL IMAGE CORPORATION, Plaintiff,
v.
KONAMI DIGITAL ENTERTAINMENT INC., HARMONIX MUSIC SYSTEMS, INC. and ELECTRONIC ARTS, INC., Defendants. PRINCETON DIGITAL IMAGE CORPORATION, Plaintiff,
v.
UBISOFT ENTERTAINMENT SA and UBISOFT, INC., Defendants.

          REPORT AND RECOMMENDATION

          CHRISTOPHER J. BURKE UNITED STATES 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 '"129 patent").[1] Presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the constructions set out below for the five terms discussed in this Report and Recommendation.[2]

         I. BACKGROUND

         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)

         II. STANDARD OF REVIEW

         A. General Claim Construction Principles and Legal Principles Regarding Defmiteness

         The Court also incorporates by reference herein the discussion of general principles of claim construction, as well as the legal standard relating to the defmiteness requirement, which were set out in its December 2, 2016 Report and Recommendation. (Id. at 8-10, 22-24)

         B. Principles for Construction of Means-Plus-Function Limitations

         35 U.S.C. § 112, ¶ 6 ("Section 112, paragraph 6")[3] provided as follows:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

         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, 3AA 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, 3AA F.3d at 1210); see also Elekta, 3AA 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 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).[4]

         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'l 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[5] or some other description explaining how the computer performs the claimed function, see Id. at 1332-37; Blackboard, Inc, 574 F.3d at 1383-85; Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (explaining that a patentee is permitted "to express that algorithm in any understandable terms including as a mathematical formula, in prose, [], or as a flow chart, or in any other manner that provides sufficient structure") (internal citation omitted). The Federal Circuit has identified a "narrow exception" to this requirement; no algorithm need be disclosed "when the function 'can be achieved by any general purpose computer without special programming.'" Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364-65 (Fed. Cir. 2012) (quoting In re Katz Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011)). For example, "a general-purpose computer is sufficient structure if the function of a term such as 'means for processing' requires no more than merely 'processing, ' which any general-purpose computer may do without special programming." Id. at 1365. The Federal Circuit has emphasized that "[i]t is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed." Id.; see also Alfred E. Mann Found, for Sci. Research v. Cochlear Corp., 841 F.3d 1334, 1342 (Fed. Cir. 2016).

         III. DISCUSSION

         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.

         A. "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 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.

         1. Function

         Taking up function first, Plaintiffs 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)[6] In identifying the claimed function, the Court "must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only those limitations." Cardiac Pacemakers, Inc. v. St. Jude Med, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). "It is improper to narrow the scope of the function beyond the claim language[, ]" and "[i]t is equally improper to broaden the scope of the claimed function by ignoring clear limitations in the claim language." Id.

         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 "2nd Tr.") at 142; D.I. 130 at 12; D.I. 163 at 4; D.I. 180 at 1) During prior inter partes review ("IPR") proceedings involving Plaintiff and Ubisoft S A ("the Ubisoft IPR proceeding" or "the Ubisoft IPR"), in which the '129 patent was at issue, PDIC did not argue that the function for this term is "supplying a first signal." Instead, it advocated for the very function that it now opposes. (See D.I. 118, Joint Claim Construction Chart ("JCCC"), ex. 4 at 212, 354, 396 & n.9;[7] 2nd Tr. at 137 (PDIC's counsel acknowledging that during the IPR proceeding, it "identified the full term as [the] function"); id. at 141) The United States Patent and Trademark Office's Patent Trial and Appeal Board (or "PTAB") agreed, construing the function of this term to encompass the full scope of the claim term (referencing the three separate elements), just as Defendants currently propose. (JCCC, ex. 4 at 396 & n.9)

         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[.]"[8] (2nd Tr. at 137)

         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 Int'l 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)).[9]

         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. (2nd Tr. at 138; see also Id. at 153-54 (PDIC's counsel arguing that because the PTAB did not consider whether the specification identified a structure for element 3, "the issue was not fully litigated in the IPR proceeding")) These two points, however, relate to the identification of the corresponding structure for the term, which is a separate and distinct inquiry that is addressed after a court has determined what is the claimed function. See, e.g., Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000); Microsoft Corp. v. Commonwealth Sci. & Indus. Research Org., 572 F.Supp.2d 786, 802 (E.D. Tex. 2008) ("Courts evaluate corresponding structure only after construing the recited function."). And as Ubisoft's counsel points out, (2nd Tr. at 142), the function was construed in the prior proceeding, even though issues of indefiniteness/insufficient structure were not applicable in that proceeding.

         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 2nd Tr. at 143). The claim construction regarding the function for this term was essential to the judgment, as it was part and parcel of the PTAB's determination. (See, e.g., JCCC, ex. 4 at 395-96 (stating that "[s]everal terms [including this one] relevant to this decision are means-plus-function claim terms")) Finally, PDIC was fully represented in the IPR proceeding.

         For these reasons, the Court adopts Defendants' proposed function.

         2. Structure

         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., 2nd Tr. at 134; D.I. 163 at 5-7)[10] Before turning to that issue, the Court will first briefly set out the parties' agreements with respect to the structures corresponding to Functions [1] and [2], as they are relevant to the dispute regarding Function [3].

         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:

In this case, means are provided (for example within processor 5 [of the Acoustic Etch unit]) for filtering the incoming music, so that processor 5 can analyze the music in terms of its spectral components. By examining the level of a particular frequency range processor 5 can make a determination as to the rhythm or beat of the music. The beat of the music is passed on to the VR system which can then perform operations such as displaying virtual hands clapping in time to the 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 [la] 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. 11:34-4l), 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 l6:43-l7:l2[, ]" (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 200 Y that include the data previously encoded in the control ...


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