Princeton Digital Image Corporation v. Harmonix Music Systems Inc. et al

Filing 193

REPORT AND RECOMMENDATION regarding claim construction. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 7/3/2017. Signed by Judge Christopher J. Burke on 6/16/2017. Associated Cases: 1:12-cv-01461-LPS-CJB, 1:13-cv-00335-LPS-CJB(mlc)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

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.,
Defendan,ts.

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Civil Action No. 12-1461-LPS-CJB

Civil Action No. 13-335-LPS-CJB

REPORT AND RECOMMENDATION

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
Definiteness

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)

B.

Principles for Construction of Means-Plus-Function Limitations

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

For simplicity's sake, the Court will refer herein to the "D.I." number in the
earlier-filed Harmonix Action, unless otherwise indicated.
2

The parties set out a total of seven terms for the Court to construe at the most
recent Markman hearing in this case. (See D .I. 164 at 1) The first two terms were the "virtual
reality"-related claim terms, while the remaining terms involve or are related to means-plusfunction limitations. On December 2, 2016, the Court issued a Report and Recommendation
regarding claim construction for the two "virtual reality" terms. (Harmonix Action, D .I. 183;
Ubisoft Action, D.I. 123) This Report and Recommendation addresses the remaining terms.
3

The Court here refers to the version of Section 112 as it existed prior to the
passage of the Leahy-Smith America Invents Act ("AIA"). Although the structure of Section 112
changed after the AIA's passage, those changes are applicable only to any patent application filed
on or after September 16, 2012. See Alcon Research Ltd v. Barr Labs., Inc., 745 F.3d 1180,
2

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, 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

1183 n.1 (Fed. Cir. 2014). Because the application at issue here was filed before that date, the
Court refers to the pre-AIA version of Section 112.
3

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-plusfunction 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. Aust/. Pty Ltd v. Int'/ 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 structure5 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

4

Section 112, paragraph 2 provides that "[t]he specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention." 35 U.S.C. § 112, if 2.
5

An algorithm is "'a step-by-step procedure for accomplishing a given result[.]'"
Alfred E. Mann Found for Sci. Research v. Cochlear Corp., 841 F.3d 1334, 1342 (Fed. Cir.
2016) (citation omitted).
4

(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 generalpurpose 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.,
841F.3d1334, 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"

5

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). "lt is
improper to narrow the scope of the function beyond the claim language[,]" and "[i]t is equally

6

When the Court refers below to "element 1," "element 2" and "element 3" of the
term, it is referring to those elements delineated here by the numerals contained in brackets.
6

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 SA ("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)

7

Citations to the Exhibits of the JCCC will be to the page numbers generated by
the ECF system.
While PDIC repeatedly asserted with respect to other claim construction issues
that "the basic principle is that the claim should be construed the same for invalidity and for

7

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'! 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 'Orea! 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

infringement[,]" (2nd Tr. at 132; see also id. at 45; D.I. 147 at 3 n.9 (citing Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("[T]he claims must be
interpreted and given the same meaning for purposes of both validity and infringement
analyses."))), it is not clear why it believes this principle is inapplicable to the issue of this term's
proper function.
9

The law of the regional circuit governs the general procedural question of whether
issue preclusion applies. Soverain Software LLC v. Victoria's Secret Direct Brand Mgmt., LLC,
778 F.3d 1311, 1314 (Fed. Cir. 2015). When substantive patent law issues are implicated in the
issue preclusion analysis, however, Federal Circuit law applies. Id.
8

determining whether the patent disclosed sufficient structure. (2nd Tr. at 138; see also id at 15354 (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 cl;:timedfunction. 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

9

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. 13 0 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

10

PDIC asserts that "the Defendants are estopped from asserting [that this term
requires as corresponding structure specific algorithms for the three separate functions] based on
their arguments to the contrary in the IPR proceedings[,]" citing to the PTAB's determination in
the Ubisoft IPR Final Written Decision that the structure required for this term was '"a source of
music and/or a control track"' and "'a processor programmed to generate control signals from
the input music and/or control track and send the control signals to the VR processor.'" (D.I. 147
at 4 & n.11 (quoting JCCC, ex. 4 at 398) (emphasis in original)) The Court finds that the
doctrine of issue preclusion/collateral estoppel does not constrain it here. For one thing, Konami,
Harmonix and EA were not parties to the Ubisoft IPR proceeding, and therefore cannot even
arguably be estopped. (D.I. 163 at 5 n.5 (citing In re Trans Texas Holdings Corp., 498 F.3d
1290, 1297 (Fed. Cir. 2007)) Moreover, the parties now agree on the corresponding structure for
Functions [1] and [2], and only dispute whether the specification discloses corresponding
structure for Function [3], which was not at issue in the Ubisoft IPR proceeding. (JCCC, ex. 4 at
396; D.I. 163 at 5 n.5; 2nd Tr. at 148)
10

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
ihe 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 I-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
"extraeted 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
11

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 tum 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 [1 b], "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 l(b) [is recited in the
'129 patent, cols.] 10:66-11:1and11:17-43[,]" (D.1. 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

12

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 theri 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, 13:6014:22, 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
13

. 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"-<lescribing 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 Deel.")

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
I

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." (2nd Tr. at 135) Function 3 is
an alternative process from Functions 1 and 2, as noted above, one requiring an extra step from
14

that described in Function 2-"a control signal [... ] generated" from the prerecorded control
track. (Id. at 151; see also id. at 148 (Ubisoft' s counsel noting that "Function 2 is prerecorded,
Function 3 is generated in response to the prerecorded control track. So it's clearly something
that happens on top of the prerecording.")) As for where the patent discloses the st~cture that
performs this extra step, the specification explains that:
Fig. 5 is a diagram of a system for creating an audio tape with
control tracks, for use in the playback system shown in Fig. 6 ....
Recorded cassette tape 180T thus has two tracks containing audio
signals ... (which are typically music signals), and two other
tracks containing control tracks corresponding to the audio signals.
Fig. 6 represents the system used to play back and experience the
[4-Track Audio and Virtual Control Track Tape ] 180T (which has
control tracks). A four-track audio tape player 200 outputs four
audio signals: left and right audio signals 200R and 200L, and
control track signals 200X and 200Y consisting of data encoded as
audio signals.
('129 patent, cols. 12:40-42, 13:55-67; see also D.I. 147 at 6; PDIC's Claim Construction
Presentation, Slide 47; 2nd Tr. 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 l 80T (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[.]" (2nd Tr. at 15152; see also id. (Ubisoft's counsel arguing that the specification ''just says you can play back
15

something that has control tracks, not that you can play back a control track to produce
something else or how you would do that")) Accordingly, the Court agrees with PDIC that the
specification discloses corresponding structure linked to Function [3], which 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. 11

B.

.

"means for receiving the first signal and influencing action within a virtual
environment in response to said first signal" (claim 14) and "means for
producing the virtual environment in response to said prerecorded control
track" (claims 19, 20)

The parties' disputes with respect to these two terms are identical, (see, e.g., D.I. 121 at
18; D.I. 130 at 23; 2nd Tr. at 158-59), and so the Court will take the terms up together.
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. 13 0 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) 12

11

While this is the same basic corresponding structure that supports Function [2], it
is not disputed that one structure can perform multiple functions if the patent clearly links the
structure to those functions. (2nd Tr. at 136, 152-53); see also, e.g., Medtronic, Inc., 248 F.3d at
1313; StrikeForce Techs. Inc. v. PhoneFactor Inc., Civil Action No. 13-490-RGA, 2015 WL
5708577, at *2 (D. Del. Sept. 29, 2015).
12

PDIC notes that the "only difference between these two terms is that in claims 19
and 20 the virtual environment must be produced in response to a prerecorded control track
16

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; 2nd Tr. at 160) Second, the parties
agree that the specification disdoses that the claimed functions are performed by "VR System
250" in Figure 6. (D.I. 121at12-13; D.I. 130at18; see also '129 patent, col. 17:13 ("The VR
system receives three signals[.]"); id, col. 18:9-10 ("The VR program then creates, destroys,
moves or modifies the virtual environment, or virtual objects therein.")) And third, the parties
agree that a microprocessor cannot perform the functions of "influencing action within a virtual
environment" and ''producing the virtual environment" without special-purpose programming,
and that the corresponding structure must therefore include an algorithm for performing the
claimed functions. (D.I. 121at13; D.I. 130 at 18; 2nd Tr. at 168)
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:

rather than in response to one of the other potential sources of the first control signal recited in
claim 14." (D.I. 121 at 18 n.35)
17

Term

PDIC's Construction

Defendants' Construction

"means for
receiving the
first signal
and
influencing
action within
a virtual
environment
in response to
said first
signal"

"a processor programmed with software
(such as a graphics library) 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
optionally to generate and/or play music or
sounds, and structural equivalents thereof'

"a processor programmed to
[1] receive the first signal, [2]
perform spectral analysis of
digitized music information
and [3] 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"

"means for
producing the
virtual
environment
in response to
said
prerecorded
control track"

"a processor programmed with software
(such as a graphics library) 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 optionally to generate
and/or play music or sounds, and structural
equivalents thereof'

"a processor programmed to
[ 1] perform spectral analysis
of digitized music information
and [2] 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"

(D.I. 121at12, 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 D.I. 121 at 13-14; D.I.
147 at 6-7; 2nd Tr. at 159-60)
. In support of their proposal, Defendants assert that the specification discloses only one
18

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:
A model of object 300A (which is shown at later times at positions
300B, 300C, and so on) is loaded into the VR program directly
from the control track. After the VR program has loaded the
model, the control track instructs the VR program to display the
object upon detecting a certain threshold of energy at a specific
frequency band of the music information. The VR program
performs a spectral analysis of the digitized music information
(e.g., digital data 246 in FIG. 6) and tests the specified frequency
band for energy level. Upon detecting the threshold level, the VR
program creates (displays) the object at a given X, Y, and Z
location.
('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; 2nd Tr. at 160) That is, with the claims stating
that the virtual environment may be generated based only on control information, PDIC contends
that it would be incorrect to read in a limitation that requires a spectral analysis of digitized
music information all of the time. (2nd Tr. at 162) 13 PDIC argues this is so because the patent

13

PDIC also again argues that Defendants are barred from asserting their proposed
construction because during the IPR proceedings, "they argued to the Board ... that these terms
should be construed in a manner that does not require spectral analysis or analyzing music
19

explains that: (1) control information can be produced by spectral analysis, and once this has
been done once, it would be redundant to do it again as Defendants' proposal would require; and
(2) in some instances, control information will not contain information relating to music. (See,

e.g., 2nd Tr. at 175)
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 ofredundancy. 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. (2nd Tr. at 175; PDIC's
Claim Construction Presentation, Slide 56) As the specification explains, the Acoustic Etch
component:
takes in music and processor 5 processes it to produce control
information. The control information is then passed on.to the VR
computer which is actually rendering the virtual environment. ...

frequencies, and the Board adopted this construction." (D .I. 147 at 7 & n.15 (citing J CCC, ex. 4
at 400-01)) The Court does not agree that it is precluded from considering Defendants' argument
here on estoppel grounds, because, at a minimum, three of the five Defendants here were not
parties to the Ubisoft IPR (or related parties), and therefore cannot even arguably be estopped.
(D.I. 163 at 7)
20

One embodiment of the internal algorithms that can be
implemented by processor 5 ... of Acoustic Etch unit 3" are those
related to simple filtering and analysis. In this case, means are
provided (for example, within processor 5) 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 overall level of the music
could be used to determine how many pairs of clapping hands there
are at any particular time. As the music rises and falls in overall
level, the VR processor could create and destroy virtual objects.
('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. (2nd Tr. at 175; PDIC's
Claim Construction Presentation, Slide 56; see also, e.g., '129 patent, col. 11 :49-56 ("Processing
of a control track (or a control signal generated therefrom, rather than from a corresponding ,
music signal) within the VR processor is more powerful than analysis of music in the Acoustic

Etch followed by processing of the resulting control signal in the VR processor[.]") (emphasis
21

added))
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. (2nd Tr. at 175-76; PDIC' s Claim Construction Presentation
at Slides 55-56) For instance, the specification notes in a list of "objects and advantages of
various embodiments of the present invention" that one such object/advantage is "to provide a
control track which can contain information (such as images of a performer's face, for example)
other than information extracted from corresponding music." ('129 patent, cols. 6:41-42, 7: 1-4;
see also, e.g., id., col. 16:8-29 (noting that control information may be produced manually by a

human operator and that such information "may take on many forms and can (in many
applications) practically be generated only by a human operator"); id., col. 17:57-59 ("The VR
program initially reads the control track information, which may precede the music information
on a prerecorded tape")) And this is PDIC's main point in arguing that Defendants' proposed
structure would inappropriately narrow the claims-"if [the VR system receives] a signal that
includes only control information and there's no music information to read, then you skip [the
spectral analysis] step and you draw things from the virtual environment based only on the
control information." (2nd Tr. at 161; see also id. at 175-76)
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
22

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 J>ark,
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[.]" (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
23

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.1. 130 at 19; 2nd Tr. at 170-71; Defendants' Claim
Construction Presentation, Slides 89-91) The Court agrees with Defendants' first argument-by
including non-limiting language "software such as . .. ," PDIC's proposal is really no algorithm
at all. See, e.g., EasyWeb Innovations, LLC v. Twitter, Inc., No 11-CV-4550 (JFB)(SIL), 2016
WL 1253674, at *14 (E.D.N.Y. Mar. 30, 2016) (disregarding similar exemplary language in
plaintiffs proposed structure because "[m]eans-plus-function claims are limited to the particular
structures the specification describes as performing the recited function (and their statutory
equivalents), even if a person of ordinary skill in the art would know what other structures could
be employed to perform the function"). As for Defendants' second argument, while it is true that
the Federal Circuit has held that reciting "software" alone is not sufficient to disclose structure,
see, e.g., Finisar Corp., 523 F.3d at 1340-41, the Federal Circuit has also explained that special
programming does not necessarily "denote a level of complexity[,]" and has rejected the notion
that "special programming" cannot encompass commercially available off-the-shelf-software,
EON Corp. IP Holdings, LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015); see
also, e.g., Elekta AB, 344 F.3d at 1214 ("[H]ere there would be no need for a disclosure of the
specific program code if software were linked to the converting function and one skilled in the
art would know the kind of program to use."); Thought, Inc. v. Oracle Corp., Case No. 12-cv05601-WHO, 2014 WL 5408179, at *20 (N.D. Cal. Oct. 22, 2014) ("[T]he Federal Circuit has
recognized that when a specification discloses a specific type of software that is 'linked' to (in
other words can be used to perform) the function, that is sufficient.") (citing Elekta, 344 F.3d at
24

1212, 1214). 14 Here, the specification describes the function at issue as being performed by "GL
software library and the Fakespace, Inc. VLIB Virtual Reality software package." ('129 patent,
cols. 17:23-18:14; see also id., col. 14:6-10) The specification indicates that the software will
read the control track information, read digitized audio and input information, perform a spectral
analysis of digitized music information that has not already been analyzed in this way, and then
create, destroy, move or modify virtual objects. (Id., cols. 17:23-18:67 & FIG. 10)
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

14

Defendants' briefing cites to Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302 (Fed.
Cir. 2012) as standing for the proposition that a patentee cannot point to off-the-shelf software as
performing a claimed function to provide requisite structure. (D.I. 130 at 19 n.20) But what
actually happened in Noah Sys. is that the patentee had "attempt[ed] to import its 'off the shelf
software' reference" from other portions of the specifications as sufficient structure, and the
Court rejected "Noah's efforts to find structure in the portion of a specification linked to a
different claim element[.]" Noah Sys., 675 F.3d at 1317. And thus, the Noah Sys. Court did not
"reject the idea that software products specifically identified in the specification could not satisfy
the disclosed structure requirement." Thought, Inc., 2014 WL 5408179, at *21.
25

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)).

C.

"means for prerecording a control track having music and/or control
information corresponding to a music signal"

The next term at issue,

"m~ans

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.

1.

Function
26

Taking up function first, Plaintiffs 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; 2nd Tr. at 177), and Defendants argue
that the recited function encompasses all of this language, (see, e.g., Defendants' Claim
Construction Presentation, Slide 96; 2nd Tr. ·at 180-81 ).
The "analysis ... is [therefore] very similar[,]" to that undergone with respect to the first
term above, (2nd Tr. at 177), and so is the result. In the Harmonix IPR, a very similar claim
limitation (that simply replaces the term "music" in the term at issue with "audio") from claim 22
was at issue: "means for prerecording a control track having audio and/or control information
corresponding to an audio signal." (JCCC, ex. 3 at 394-95) PDIC argued that the function of
this term in claim 22 was "prerecording a control track having audio and/or control information
corresponding to an audio signal[.]" (Id., ex. 4 at 217-18; see also Defendants' Claim
Construction Presentation, Slide 97) The PTAB agreed and construed the function of this term to
encompass the full claim term. (JCCC, ex. 3 at 394-95; see also D.I. 130 at 20 & n.22) In the
Ubisoft IPR, PDIC offered the same construction including the full function with respect to claim

27

22, and explained that "[t]he function of the claim limitation in claim 16 is the same except that
the term 'audio' is replaced with 'music,' a particular type of audio[,]" (JCCC, ex. 4 at 217-18),
and the PTAB agreed, (id at 401).
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 corre.sponding 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."

2.

Structure

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")

28

(emphasis in original)) 15
For its part, PDICasserts that the PTAB got it wrong, as the specification does disclose a
prerecorded control tra~k 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;
2nct Tr. at 179; PDIC's Claim Construction Presentation, Slide 63) The Court agrees with PDIC
that the specification does indeed disclose prerecording a control track that includes music/audio
information:
The recording medium for the inventive prerecorded control tracks
does not need to be a four-track audio tape. In fact, the compact
disk (CD) and Digital Audio Tape (DAT) formats already offer
control track capabilities. In addition to these capabilities, these
and other formats can be modified to contaill more control track
information. For example, the prerecorded control track(s) need
not be recorded as a separate track. In order to retrofit to existing
consumer audio equipment, the control track information could be
stored in a subsonic or supersonic fashion on the existing audio
information.
('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 Deel.

15

at~

63 ("[T]he '129 patent does not

In support of its statement in this regard, the PTAB then cited to three portions of
the specification that seem to distinguish between "music" and "prerecorded control tracks."
(JCCC, ex. 4 at 402 (citing '129 patent, col. 4:41-45 ("The system includes means for interfacing
between the computer software which controls production of the virtual world, and live or
prerecorded music (and/or prerecorded control tracks)"); id, col. 5:11-20 ("As an alternative (or
in addition [to)] extracting signals from music itself ... [,] one or more prerecorded control
tracks corresponding to the music [can be supplied]"); id, col. 9:61-63 ("Acoustic Etch unit 3"
of FIG. 4 can receive digital prerecorded music and/or control track or analog prerecorded music
and/or control track"))
29

describe generating a prerecorded control track having audio or music signals without also
having control information corresponding to an audio signal.")) 16 Indeed, Defendants and Dr.
Madisetti acknowledge that the specification describes control tracks and audio signals as being
recorded side-by.:side on the same medium. (D.I. 130 at 21; Madisetti Deel.

at~

63 (citing '129

patent, cols. 8:36-38, 13:56-59, 15:1-17, 16:5-7)) As PDIC notes, then, Defendants' "argument
that the claims are indefinite is based on the false and unsupported premise that this same structure cannot also correspond to function [a] (prerecording a control track having music)."
(D.I. 147 at 9) The specification's disclosure of prerecording a control track that has music and
control information is adequate disclosure of a prerecording a control track that has only music.
(2nd Tr. at 186 ("With respect to this concept that an algorithm of recording two things together
doesn't support recording either one of them separately, I think that's just not true as a matter of
common sense. IfI know how to record one thing, then I know how to record it. And it doesn't
matter that I also know how to record something else.")) 17 Accordingly, as PDIC suggests, the
corresponding structure linked to Function [a] (as well as to Function [c]) is recited at '129

16

This disclosure corresponds to Function [c]-prerecording a control track having
both music and control information corresponding to a music signal. And therefore, these
statements by Defendants and Dr. Madisetti conflict with the PTAB's statement that there is
likewise no disclosed corresponding structure for Function [c], as that function requires a control
track having audio and control information. (JCCC, ex. 3 at 398 n. 6)
17

In support of their argument that the patent does not disclose sufficient structure
for Function [a], Defendants point out that the specification states that "music cannot directly
interact with the virtual environment[,]" (D.I. 163 at 9 (quoting '129 patent, col. 4:62-63)), and
then asserts that this reality "goes directly against an argument that there may be some other
disclosure in the patent that may get us there[,]" (2nd Tr. at 182). The Court is not persuaded that
·this statement from the patent means that there can be no structure for Function [a]. This is
because the patent explains that the VR processor receives music information, performs a
spectral analysis on it, and then displays virtual objects upon detecting a certain threshold of
energy at a specific frequency band of the music information. ('129 patent, cols. 17:50-18:67)
30

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. (D.I. 147 at 8-9)
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
31

irrespective of the audio content." (Id. at 125) Ultimately, the PTAB agreed with PDIC and
declined to institute review with respect to Williams:
We are persuaded by Patent Owner's argument that Williams
discloses control information that corresponds to time, position, or
location, rather than to an audio or music signal because Williams
determines the locations in a sound recording where predetermined
actions are to be displayed and then associates actions with the
time positions or locations, rather than based on the content of the
sound recording itself. . . . Petitioner contends that independent
claim[] 16 ... would have been obvious over Thalmann and
Williams. . . . Petitioner relies on Williams to satisfy the limitation
relating to prerecording a control track having audio and/or control
information corresponding to an audio signal. ... For the same
reasons described above in connection with the challenge based on
anticipation by Williams, we are not persuaded that Williams
teaches a control track having audio and/or control information
corresponding to an audio signal. Consequently, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood
that the subject matter of independent claim[] ... 16 and dependent
claim[] 19 is rendered obvious over Thalmann and Williams.
(Id. at 170-71, 174-75)

The Court agrees with Defendants that the substance of Plaintiffs 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

32

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. 18 Plaintiff should be bound by its earlier interpretation of this claim limitation. 19

18

As noted above, PDIC asserted during the IPR proceedings that the function and
structure for the claim limitation "prerecording a control track having audio and/or control
information corresponding to an audio signal" is "the same" as for the claim limitation
"prerecording a control track having music and/or control information corresponding to a music
signal" that is found in claim 16. (JCCC, ex. 4 at 217-18)
19

PDIC argues that it is Defendants who are estopped from arguing that the
structure corresponding to Function [b] should encompass PDIC's statements relating to
Williams, "based on the broader construction that they proposed, and that was adopted, in the
IPR proceedings." (D.I. 147 at 9) Again, at a minimum, because the non-UbisoftDefendants
were not associated with this proceeding, they could not even arguably be estopped here.
Morever, in the proceeding, it is true that no party's recited structure for this term included the
additional limitations that Defendants now seek. During the IPR, however, in arguing that prior
art references like Williams read on this claim limitation, Ubisoft's interpretation of this claim
was broader than it now proposes (i.e., then it was interpreting the limitation in the same way that
PDIC wants it interpreted now), (see, e.g., JCCC, ex. 4 at 48-49); but PDIC argued against that
broader interpretation (distinguishing Williams in the manner set out above), and the PTAB
agreed with PDIC in denying to institute review on Williams. Plaintiff thus had the last word on
this issue during the IPR proceeding, and prevailed, and so should not be permitted now to take a

33

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)).

D.

"control track is time shifted relative to the music signal"

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. 30:4547) 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

contrary position. The Court does not view Ubisoft's failure to explicitly include the language
Defendants now seek in their proposed structure for this claim term after the PTAB' s institution
decision was issued, as somehow trumping any argument that PDIC should be bound by its
earlier position.
34

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[.]" (DJ. 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 2nd Tr. at 188-89, 194)
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
35

1329, 1333 (Fed. Cir. 2003); see also (2nd Tr. at 195). With claim 14 covering the delay
compensation technique whereby the music signal is delayed, it makes sense that, as Defendants
argue, claim 20 covers the other delay compensation technique described in the patent, whereby
the control track is time shifted at the time when it is prerecorded. (D.I. 130 at 24; Defendants'
Claim Construction Presentation, Slides 111-13; 2nd Tr. at 188-90) While PDIC contends that
Defendants' proposal would improperly "limit this term to only one of the two exemplary
methods of delay," (D.I. 121 at 19), "[i]t is often the case that different claims are direCted to and
cover different disclosed embodiments[,]" Helmsderfer v. Bobrick Washroom Equip., Inc., 527
F.3d 1379, 1383 (Fed. Cir. 2008); see also Intamin Ltd v. Magnetar Techs., Corp., 483 F.3d
1328, 1337 (Fed. Cir. 2007) ("[A] claim need not cover all embodiments .... A patentee may
draft different claims to cover different embodiments.").

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. 121at19; see also 2nd Tr. at 191
(PDIC's counsel arguing that delay compensation techniques "can be done in advance or it can
be done later using del~ys vis-a-vis the music. It makes no difference .... The control track
shifted vis-a-vis the music versus the music being shifted vis-a-vis the control track ... makes no
difference")) But as Defendants note, the '129 patent does distinguish between "music signal is
delayed" as recited in claim 14 and "control track is time shifted" as in claim 20. (Defendants'
Claim Construction Presentation, Slide 113) The specification explains that:

36

With reference again to FIG. 3, in a'variation on the scheme
implemented by delay unit 4A (of Fig. 2) or delay circuit 13 of
FIG. 4) instead of delaying the music, a pre-selected delay between
music and control tracks is implemented at the time when both the
control tracks and the music are prerecorded. The control track is,
in effect, phase shifted in advance to account for lags expected to
be introduced by the analysis (i.e., the time required by analyzer 5
of FIG. 2 to generate control signals from music) and/or by VR
graphics system 7. The advantage of implementing this phase
shifting when prerecording the control track(s) is that it minimizes
the hardware required to implement the Acoustic Etch unit. There
is also no need to delay the music; which could be expensive.
('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.

IV.

CONCLUSION

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

37

of a control signal having music and/or control inforniation 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 sigrial 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 [1 b] ("supplying ... a control signal having ... control information generated in
response to a music signal") is recited at '129 patent, cols. 10:66-11:1and11:17-43. 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, 16:4317:12, 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

38

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

39

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, 13:5059, 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 medii:i. 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)(l)(B), Fed. R.
Civ. P. 72(b)(l), 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
40

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.

Dated: June 16, 2017

~~
Burd

Christopher J.
UNITED STATES MAGISTRATE JUDGE

41