McRo Inc. v. Bethesda Softworks LLC

Filing 149

REPORT AND RECOMMENDATION re 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 Objecti ons (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 6/26/2017. Signed by Judge Christopher J. Burke on 6/8/17. Associated Cases: 1:12-cv-01509-LPS-CJB, 1:12-cv-01510-LPS-CJB (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
McRQ, INC, d/b/a PLANET BLUE,

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Plaintiff,

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v.

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BETHESDA SOFTWORKS, LLC,
Defendant.
McRO, INC, d/b/a PLANET BLUE,
Plaintiff,
v.
HARMONIX MUSIC SYSTEMS, INC.,
Defendant.

Civil Action No. 12-1509-LPS-CJB

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Civil Action No. 12-1510-LPS-CJB

REPORT AND RECOMMENDATION
Plaintiff McRO, Inc., d/b/a Planet Blue ("McRO" or "Plaintiff') filed the instant actions
for patent infringement against Defendants Bethesda Softworks, LLC and Harmonix Music
Systems, Inc. (collectively, "Defendants"). 1 McRO alleges infringement of United States Patent
Nos. 6,307,576 (the '"576 Patent") and 6,611,278 (the '"278 Patent") (cqllectively, the "Asserted
Patents" or "patents-in-suit"). Presently before the Court is the matter of claim construction.
The Court recommends that the District Court adopt the constructions set forth below for the four

The Complaints and claim construction briefs in these actions are substantially
identical. For convenience, the Court will cite herein to the docket in Civil Action No. 12-1509LPS-CJB, unless otherwise noted.

terms/term sets discussed in this Report and Recommendation. 2
I.

BACKGROUND

A.

The Parties

Plaintiff McRO is a company that "is actively involved in the advertising industry as a
computer graphic, visual effects, and animation services company[.]" (D .I. 1 at if 1) Defendants .
are companies active in the video game industry. (See, e.g., id. at if 2)

B.

The Asserted Patents

Both the '576 Patent and '278 Patent are entitled "Method for Automatically Animating
Lip Synchronization and Facial Expression of Animated Characters[.]" (D.It' 1, exs. A & B) 3
The '576 Patent issued on October 23, 2001 from U.S. Appl. No. 08/942,987, which was filed on

2

The parties originally submitted six terms or sets of terms for claim construction,
(see, e.g., D.L 100, ex. l; D.I. 114), for which they provided argument in their claim construction
briefing. Prior to the Markman hearing, the parties agreed to the following constructions of two
previously disputed claim terms/term sets:
1.

"lip synchronization and facial expression control"/"lip and
facial expression synchronized" does not require
construction, other than the parties' agreement that the
"'final stream of output morph weight sets' ('576 Patent
Claim 1) and the 'output morph weight set stream' ('278
Patent Claim 1) are applied to the animated characters
without further changes."

2.

"final stream of output morph weight sets" means "[a] series
of interpolated morph weight sets which are applied to a
sequence of animated characters."

(D.1. 115)
3

The Asserted Patents appear on the docket in this action more than once,
including in the above-cited locations. Hereinafter, citations to the patents will simply be to the
"'576 Patent" and the '"278 Patent."

2

October 2, 1997. The '278 Patent is a continuation of the '576 Patent. It issued on August 26,
2003, from U.S. Appl. No. 09/960,831, which was filed on September 21, 2001.
The patents-in-suit describe and claim methods for controlling and automatically
animating lip synchronization and facial expressions of three-dimensional animated characters.
The patents explain that prior methods in the field "have long suffered from the need of
providing an economical means of animating lip synchronization and character expression in the
production of animated products due to the extremely laborious and lengthy protocols of such
prior traditional and computer animation techniques." ('576 Patent, col. 1: 17-22) 4 , These prior
methods involved "manual techniques commonly using a 'morph target' approach." (Id., col.
1:46-47) "Morph targets" are models matching reference points of mouth positions to certain
phonemes5 or sets of phonemes. (See id., col. 1:47-51) These morph targets are used in
conjunction with a reference model of a neutral mouth position. (See id.) "Each morph target
has the same topology as the neutral model, the same number of vertices, and each vertex on
each model logically corresponds to a vertex on each other model." (Id., col. 1:51-54)
The "deltas," or changes, of each morph target relative to the neutral model are computed
as a vector from each vertex on the reference to each vertex on each morph target to produce a
"delta set" for each morph target. (Id., col. 1:58-61) In producing animation products, the
animator may apply a value between 0 and 1 (called a "morph weight"), which is assigned to
each delta set. (Id., col. 1:63-65) The morph weight determines what percentage the animated

4

The Asserted Patents share identical specifications; thus, the Court will cite
exclusively to the '576 Patent in this section.
5

A phoneme "is defined as the smallest unit of speech, and corresponds to a single
sound." ('576 Patent, col. 1:35-36)
3

mouth moves from the neutral position to the corresponding morph target. For example, if the
morph target is the phoneme "oh," and the morph weight is 0.5, the neutral mouth position's
geometry is modified halfway between neutral and the "oh" morph target. (Id., col. 2: 19-22) An
animator can also blend morph targets; for example, if the "oh" morph weight is 0.3 and the "ee"
morph weight is 0.7, the neutral mouth geometry is modified to have some of the "oh" model
characteristics and more of the "ee" model characteristics. (Id., col. 2:23-27)
The patents explain that the prior art applied this process using a "keyframe" approach,
where the animator had to manually set "the appropriate weights at certain important times
('keyframes') and a program interpolate[d] each of the channels at each frame." (Id., col. 2:3134) This process "is very tedious and time consuming, as well as inaccurate due to the large
number of keyframes necessary to depict speech." (Id., col. 2:35-37)
The claimed invention attempts to solve these problems "by providing an integrated
method embodied in computer software for use with a computer for the rapid, efficient lip
synchronization and manipulation of character facial expressions, thereby allowing for rapid,
creative, and expressive animation products to be produced in a very cost effective manner."
(Id., col. 2:39-44) It does so by utilizing "a set of rules that determine the systems output

comprising a stream or streams of morph weight sets when a sequence of timed phonemes or
other timed data is encountered." (Id., col. 3 :4-7) The claimed methodology "allows for
automatically animating lip synchronization and facial expression of three dimensional characters
in the creation of a wide variety of animation products" and the method and apparatuses
described by the patents "are operably integrated with computer software and hardware." (Id.,
col. 3:12-18)
4

C.

Procedural Posture

On November 21, 2012, Plaintiff filed 11 related cases (including the instant two cases) 6
in this District. 7 (See D.I. 1) Plaintiff filed two additional related cases on June 6, 2013. and
October 25, 2013. 8 All 13 of these cases Were assigned to Chief Judge Leonard P. Stark, and all
were referred to the Court by Chief Judge Stark for all purposes up to and including the
resolution of case-dispositive motions. (See, e.g., D.I. 17)
The related cases all alleged infringement of the '576 and '278 Patents. McRO alleges
that Defendants infringed these patents by "employ[ing] automated lip-synchronization methods
and processes to create and develop []computer and/or video games" that are "purchased by
consumers in the United States[.]" (See, e.g., D.I. 1 at~~ 11-12) While Plaintiff filed amended
complaints in certain of the actions and not others, each of the then-Defendants had filed
Answers to the operative complaint in their respective cases as of June 2, 2014. (See, e.g., D.I.
51, Civil Action No. 12-1513-LPS-CJB)

6

On June 6, 2017, Plaintiff and current Defendant Bethesda Softworks, LLC
stipulated to a stay qf all deadlines for a period of 30 days. (D.I. 148) However, as of the writing
of this Report and Recommendation, the case remains pending, and so the Court will continue to
address Defendants in both of the instant actions collectively.
7

·The case numbers for the other nine cases filed on November 21, 2012 are: ·121508-LPS-CJB; 12-1511-LPS-CJB; 12-1512-LPS-CJB; 12-1513-LPS-CJB, 12-1514-LPS-CJB;
12-1515-LPS-CJB; 12-1517-LPS-CJB; 12-1518-LPS-CJB and 12-1519-LPS-CJB. ·Six of these
cases have since been transferred to the United States District Court for the Central District of
California. (See, e.g., D.I. 36, Civil Action No. 12-1508.::LPS-CJB) The other three cases (Civil
Action Nos. 12-1513-LPS-CJB, 12-1517-LPS-CJB and 12-1519-LPS-CJB) were active in this
District as of the time of claim construction proceedings, but have since been dismissed by joint
stipulation.
8

The case numbers for these two cases are 13-1017-LPS-CJB and 13-1756-LPSCJB, respectively. Both of these cases have been transferred to the United States District Court
for the Central District of California. (See, e.g., D.I. 29, Civil Action No. 13-1017-LPS-CJB)
5

On January 17, 2014, however, the Defendants in the related cases filed a motion to stay
("Motion to Stay") these actions in light of (1) requested inter partes review ("IPR") proceedings
regarding the asserted patents that were not yet instituted by the Patent Trial and Appeals Board
("PTAB") and (2) imminent claim construction proceedings involving the same patents in related
cases (the "California Actions") in the United States District Court for the Central District of
California (the "Central District of California"). (D.I. 23) The Court denied the Motion to Stay
via a Memorandum Order on May 1, 2014, without prejudice to Defendants' ability to renew the
motion after the PTAB issued a decision on whether to initiate the IPR proceedings. (D.I. 45)
However, on October 16, 2014, the parties stipulated to a stay. (D.I. 79) On November 10,
2014, the Court further ordered that the case would remain stayed pending the appeal of a
decision in the related matters in the Central District of California that had dismissed those cases
pursuant to 35 U.S.C. § -101 ("Section 101"). ·
On September 13, 2016, the United States Court of Appeals for the Federal Circuit
reversed the decision of the Central District of California, holding that the asserted claims are not
ineligible under Section 101. See ·McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1316 (Fed. Cir. 2016). That same day, Plaintiff requested that the Court lift the stay in the instant
· actions. (D.I. 83) The stay was lifted on September 16, 2016.
The parties filed simultaneous opening claim construction briefs on January 18, 2017, and
simultaneous responsive briefs on February 8, 2017. (D.I. 105, 106, 111, 112) The Court held a
Markman hearing on February 21, 2017. (D.I.' 141 (hereinafter, "Tr."))

II.

STANDARD OF REVIEW
It is well-understood that "[a] claim in a patent provides the metes and bounds of the right
6

which the patent confers on the patentee to exclude others from making, using, or selling the
protected invention." Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989). Claim construction is a generally a question of law, although subsidiary fact
finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837-38
(2015).
The Court should typically assign claim terms their "'ordinary and customary
meaning[,]"' which is "the meaning that the term[ s] would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing date of the patent
application." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations
omitted). However, when determining the ordinary meaning of claim terms, the Court should not
extract and isolate those terms from the context of the patent, but rather should endeavor to
reflect their "meaning to the ordinary artisan after reading the entire patent." Id at 1321; see also

Eon Corp. IP Holdings v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016).
In proceeding with claim construction, the Court should look first and foremost to the
language of the claims themselves, because "[i]t is a bedrock principle of patent law that the
claims of a patent define the invention to which the patentee is entitled the right to exclude."

Phillips, 415 F.3d at 1312 (internal quotation marks and citations omitted). For example, the
context in which a term is used in a claim may be "highly instructive." Id at 1314. In addition,
"[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable" in
discerning the meaning of a particular claim term. Id This is "[b ]ecause claim terms are
normally used consistently throughout the patent, [and so] the usage of a term in one claim can
often illuminate the meaning of the same term in other claims." Id Moreover, "[d]ifferences

7

among claims can also be a useful guide[,]" as when, for example, "the presence of a dependent
claim that adds a particular limitation gives rise to a presumption that the limitation in question is
not present in the independent claim." Id. at 1314-15.
In addition to the words of the claims, the Court should.look to other intrinsic evidence.
For example, the Court should analyze the patent specification, which "may reveal a special
definition given to a claim term ... that differs from the meaning [that term] would otherwise
possess." Id. at 1316. In that case, "the inventor's lexicography governs." Id. Even ifthe
specification does not contain a special definition of the term at issue, it "is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
·the meaning of a disputed term." Id. at 1315 (internal quotation marks and citation omitted).
That said, however, the specification "is not a substitute for, nor can it be used to rewrite, the
chosen claim language." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004). In addition to the specification, a court should also consider the patent's prosecution
history, if it is in evidence, because it "can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
invention in the course of prosecution[.]" Phillips, 415 F.3d at 1317.
Extrinsic evidence, "including expert and inventor testimony, dictionaries, and learned
treatises[,]" can also "shed useful light on the relevant art[.]" Id. (internal quotation marks and
citations omitted). Overall though, while extrinsic evidence may be useful, it is "less significant
than the intrinsic record in determining the legally operative meaning of claim language." Id.
(internal quotation marks and citations omitted); accord Markman v. Westview Instruments, Inc.,
52 F.3d 967, 980-81 (Fed. Cir. 1995).

8

In utilizing these resources during claim construction, courts should keep in mind that
"[t]he construction that stays true to the claim language and most naturally aligns with the
patent's description of the invention will be, in the end, the correct construction." Ren ishaw PLC

v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).

III.

DISCUSSION

All of the four disputed terms/term sets addressed herein appear in independent claim 1 of
the '278 Patent and independent claim 1 of the '576 Patent. Those claims read, respectively:

1. A method for automatically animating lip synchronization and
facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream
as a function of phoneme sequence and times associated with said
phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes
corresponding to a desired audio sequence for said threedimensional characters;
generating an output morph weight set stream by applying said first
set of rules to each sub-sequence of said plurality of sub-sequences
of timed phonemes; and
applying said output morph weight set stream to an input sequence
of animated characters to generate an output sequence of animated
characters with lip and facial expression synchronized to said audio
sequence.
('278 Patent, col. 11 :43-58)
1. A method for automatically animating lip synchronization and
facial expression of three-dimensional characters comprising:

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

9

obtaining a timed data file of phonemes having a plurality of subsequences;
generating an intermediate stream of output morph weight sets and a
plurality of transition parameters between two adjacent morph
weight sets by evaluating said plurality of sub-sequences against
said first set of rules;
generating a final stream of output morph weight sets at a desired
frame rate from said intermediate stream of output morph weight
sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a
sequence of animated characters to produce lip synchronization and
facial expression control of said animated characters.
('576 Patent, col. 11 :27-47) Below the Court addresses the four disputed terms/term sets in the
order in which they were argued.

A.

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

This first disputed term set relates to the "first set of rules" called out in claim 1 of the
patents. Defendants propose that this term set be construed as:
A set of at least correspondence rules and transition rules, manually
set up 9 by a user, that define an output morph weight set stream,
where ( 1) the correspondence rules specify a morph weight set for
each incoming sub-sequence of multiple sequential phonemes, and
(2) the transition rules specify time parameters of the transitions
between the sub-sequences.

9

Defendants originally proposed that the rules be manually "created" by a user,
(D.I. 100, ex. 1 at 3), and the parties argued over the inclusion of the word "created" in their
claim construction briefing, (see D.l. 105 at 6-7; D.I. 106 at 11-12; D.I. 111 at 8-9; D.I. 112 at 56). However, at the Markman hearing, Defendants' counsel stated that they "didn't intend by
using the word 'create' to have it mean something different than 'set up."' (Tr. at 57) The
parties also agreed that "manually set up" means "manually obtained." (Id.)
10

(D.I. 100, ex. 1 at 3) Alternatively, they argue that the specification lacks sufficient written
description for these claim elements. (Id.) Plaintiff proposes that "[a]s used in these phrases, the
terms 'time' and 'times' refer to one or more lengths of time, i.e. durations. Otherwise, the
language in these phrases do[ es] not require construction." (Id.)
The parties' competing proposed constructions present three primary disputes: (1)
whether the construction should require the "first set of rules" to include "correspondence rules"
and "transition rules"; (2) whether the construction should specify that the rules are "manually set
up by a user"; and (3) whether "time" and "times" must refer to duration, or whether they can
also refer to discrete moments in time corresponding to the start of each phoneme in the timealigned phonetic transcription ("TAPT"). 10

1.

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

The first dispute centers on Defendants' proposed requirement that the first set of rules
must include at least two categories of rules: correspondence rules and transition rules. Plaintiff

10

Other matters are not in dispute, however. For example, there is no question that
the claims' reference to "phoneme sequence" is a reference to sub-sequences consisting of
multiple sequential phonemes. As the Federal Circuit stated:
We agree with McRO that the claims are limited to rules that
evaluate sub-sequences consisting of multiple sequential
phonemes. This limitation is apparent- on the face of the
claims . ~ .. In particular, the intermediate morph weight sets and
transition parameters are generated "by evaluating said plurality of
sub-sequences against said first set of rules." . . . This limitation
could not be satisfied by rules that only evaluate individual ·
phonemes. Instead, the claimed "first set of rules" must be
formulated to evaluate sub-sequences of phonemes.

Bandai, 837 F.3d at 1311 (citations omitted); see also (D.I. 105 at 5).
11

puts forward two strains of argument in advancing its position against inclusion of such a
requirement.
The first strain of argument advanced by Plaintiff is that "the 'rules' do not have to be
classified as 'correspondence' and 'transition' rules[,]" because the claims at issue do not
literally require as much and because the patent also makes reference to rules relating to
"phoneme context and duration other than 'correspondence' and 'transition' rules[.]" (D.I. 106
at 11 (emphasis added)) And this is all true, as far as it goes.
For example, as to the claims' literal language, independent claim 1 in both patents does
not explicitly require that something called "correspondence rules" or "transition rules" be a part
of the "first set of rules." (See '576 Patent, col. 11:27-47; '278 Patent, col. 11 :43-58) And as
Plaintiff notes, "[d]ependent claims 2 and 20 of the '278 Patent and dependent claims 13 and 26
of the '576 Patent [do] require that the first set of rules comprise 'correspondence rules' and
'transition rules."' (D.I. 106at10; see.also '278 Patent, cols. 11:62-65, 13:15-18; '576 Patent,
cols. 12:22-28, 14:13-17)
Additionally, the patent does often refer to "rules" by using terins other than
"correspondence rules" or "transition rules." (D.I. 106 at 11; see also Tr. at 34 (Plaintiffs
counsel explaining that "[t]he naming of the rule is somewhat arbitrary.")) For example, at one
point, the specification explains that " [t]he rules of the present method may be categorized in
three main groupings; default rules, auxiliary rules [or 'secondary rules'] and post processing
rules." ('576 Patent, col. 5:9-11) And-particularly when it describes some of these "post
processing" rules-it is not obvious that the patent is there referring to something that could be
categorized as a "correspondence rule" or a "transition rule." (See, e.g., '576 Patent, col. 9:41-45
12

(describing a post processing rule in which a small amount of random noise is added to "all
morph weight channels" to "slightly alter the look of each phoneme to create a more natural
look"))
Yet it is not clear exactly what all of this proves as it relates to the present dispute. The
patent's reference to "default rul~s" or "secondary rules" could well mean to refer to rules that
themselves must include at least correspondence rules and transition rules. ('576 Patent, col.
6:60-62 ("The default correspondence rules and the default morph weight set transition rules
define the default system behavior."); see also D.I. 112 at 4). And the fact that some other rules
(like certain post processing rules) may be a part of the "first set of rules" does not necessarily
mean that Defendants' proposal is off base; that proposal, after all, simply requires that this set of
rules include "at least" correspondence rules and transition rules. Thus, this first strain of
Plaintiffs argument is inconclusive.
However, the second strain of Plaintiffs argument is a winning one. Plaintiffs position
here is that Defendants' proposal must be rejected because the particular way in which

Defendants describe the correspondence rules and transition rules in their proposal cannot be
correct.
For one thing, Defendants' proposed construction would require a correspondence rule to
"specify a morph weight set for each incoming sub-sequence of multiple sequential phonemes[.]"

(See D.I. 100, ex. 1 at 3 (emphasis added)) But the independent claims do not recite a
requirement that a rule must exist for each incoming sub-sequence of multiple sequential
phonemes. And indeed, claims 13 and 26 of the '576 Patent explicitly recite "correspondence
rules between a plurality of visual phoneme groups and a plurality of morph weight sets[.]"

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('576 Patent, cols. 12:24-25, 14:13-14 (emphasis added)) In contrast, claims 2 and 20 of the '278
Patent recite "correspondence rules between all visual phoneme groups and morph weight
sets[.]" ('278 Patent, cols. 11 :62-63, 13: 15-16 (emphasis added)) The Court should not read an
express restriction of certain dependent claims into the independent claims. See Phillips, 415
F.3d at 1314-15.
Additionally, Defendants' proposed requirement that transition rules "specify time
parameters of the transitions between the sub-sequences[,]" (D.I. 100, ex. 1 at 3 (emphasis
added)), appears a bit at odds with certain other claim language. For example, claim 2 of the '278
Patent and claim 13 of the '576 Patent require transition rules specifying durational data
"between morph weight sets." ('278 Patent, col. 11 :64-65 (emphasis added); '576 Patent, col.
12:26-28 (emphasis added)) That is, as Plaintiffs counsel explained at the Markman hearing, in
at least some claims, "transition parameters are set between morph weight sets, not phoneme
subsequences[.]" (Tr. at 28) In other words, according to Plaintiff, "Defendants aren't saying we
only need a transition rule. They're saying we need a very specific type of transition rule. One
that specifies time parameters of the transitions between subsequences. . . . That's not called out
in any claim. That's not called out in the Federal Circuit's opinion." (Tr. at 65 (emphasis
added)) The Court agrees, and will not read such a specific requirement into its construction.
For these reasons, the Court will not include a requirement of the type of "correspondence
rules" or "transition rules" set out by Defendants in its construction of this term set.

2.

Should the construction specify that the "first set of rules" must be
"manually set up"?

Defendants next.propose that the construction of "first set of rules" must require that the

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rules are "manually set up by a user." This proposed limitation is based on the specification's
requirement that in the invention's "operation and use, the user must manually set up default
correspondence rules between all visual phoneme groups and morph weight sets." ('576 Patent,
col. 6:46-48) The Court disagrees that this requirement should be read into a construction, for
two reasons.
First, the Court is not convinced that the claims are concerned with whether the "first set
of rules" at issue were manually set up by a user (or, more generally, how they were set up).
Instead, the claims simply say that the "rules" at issue are "obtain[ed,]" without saying anything
about how they were set up in the first place. ('576 Patent, col. 11 :30-32; '278 Patent, col. 11 :4648) At the Markman hearing, Plaintiffs counsel argued that "the claims are not addressed to [the
setting up of the rules] because they're addressed to a set of software and the software is already
self-contained. That's why reading in 'creating' or 'setting up' is unnecessary and not required
by the independent claims." (Tr. at 57-58) Defendants offered no response on this point, and the
Court here embraces Plaintiffs argument as to the import of the claim language at issue.
Second, the one portion of the specification relied upon by Defendants (found in the '576
Patent at column 6, lines 46-48) is just not clear enough to justify Defendants' proposed
phraseology. That portion of the written description does specifically state that "the User must
manually set up default correspondence rules." And it does then immediately discuss how
transition rules ''must be specified[,]" ('576 Patent, col. 6:51)-such that the paragraph might be
read to imply that these transition rules, described therein, are_also "manually set up." But the
\

paragraph is not crystal clear on that point, and it says nothing about how other types of "rules"
that may be part of the "first set of rules" are to be "set up."
15

For these reasons, the Court will not read the limitation at issue into the claims.

3.

Must "time(s)" refer to "duration(s)"?

The remaining issue relates to the fact that the "first set of rules" at issue relate in some
way to the "time" or "times" associated with the phoneme sequence discussed in the claims.

(See, e.g., '576 Patent, col. 11:32; '278 Patent, col. 11:47-48) The dispute is over whether
Plaintiff is correct in its assertion that "'time' and 'times' refer to one or more lengths of time,
i.e., durations[,]" (D.I. 100, ex. 1 at 3), or whether Defendants are correct that in the patents, this
reference to '"time' is not limited to 'duration' or 'lengths of time[,]"' (D.I. 112 at 6), and could
instead be "directed to the location of a particular phoneme in a timed transcript[,]" (D.I. 106 at
8).
The Federal Circuit found that the claim language itself does not clearly resolve this
question, noting that "whether the rules must take into account the pacing of speech based on the
'and time of said phoneme sequence' limitation" [was] neither necessary to resolve the issues on
appeal nor indisputably resolved by the claim language." Bandai, 837 F.3d at 1311 n.11
(emphasis added). Plaintiff nevertheless argues that "the specification and Defendants' own
construction both recognize that the claimed timing rules pertain to durations[.]" (D.I. 106 at 8)
As an initial matter, the Court notes that Plaintiff is correct in stating that "the
specification repeatedly refers to, and provides examples of, the timing rules as being a function
of the 'duration' of the phonemes[.]" (D.I. 106 at 9 (citing '576 Patent, cols. 3:25-28, 4:4-10;
5:25-28, 5:33-37, 6:51-58, 7:1-3)) Moreover, Defendants' own construction states that the
"transition rules specify time parameters of the transitions between the sub-sequences." (D.I.
100, ex. 1 at 3) Time parameters "between sub-sequences" represent durations, rather than

16

discrete moments in time from the TAPT.
However, as Defendants argue, (D.I. 112 at 6), the Court must also take into account an
exemplary phoneme sequence in the '576 Patent's specification. This sequence shows a table
with series of time entries corresponding to the start of individual phonemes. (Id. (citing '576
Patent, col. 8:43-51)):

Time

Phoneme

0.0
0.8
1.0
1.37

silence begins
silence ends, "h" begins
"h" ends, "eh" begins
"eh" ends, "1" begins
"1" ends, "oh" begins
"oh" ends, silence begins.

1.6
2.1

Jn the above table, the column labeled "Time" clearly does not refer to "durations," but to
particular time entries. "Time" is used in the same fashion later in the specification, in a similar
exemplary table showing times associated with certain delta sets. (See '576 Patent, cols. 8:579: 8) This suggests that while a reference to "time" in the context of phoneme sequencing can be
a reference to a duration, it is not limited to such a restrictive definition. (See D .I. 112 at 7) 11
Moreover, the Court is mindful that "claim terms are normally used consistently
throughout the patent," Phillips, 415 F.3d at 1314, such that the usage of"time" in the

11

Even an "exemplary rule" that Plaintiff highlights as embodying how the
specification considers "the times/durations ... associated with a phoneme sequence[,]" (D.I.
111 at 8 n. 5), uses the word "time" to refer to specific "start" and "end" times of a particular
phoneme, (see '576 Patent, col. 8:10-14).
17

specification and in other claims may help illuminate the meaning of "time/times" in this set of
terms. Phillips, 415 F.3d at 1314. And here, other claims of the Asserted Patents use "time" or
"times" to refer to discrete points in time, rather than durations. (See, e.g., '576 Patent, col. 12:79 (dependent claim 10 reciting a "plurality of transition parameters compris[ing] a transition start
time and a transition end time[]"); '276 Patent, col. 11 :66-67 (dependent claim 3 reciting
"durational data compris[ing] transition start and transition end times."))
Lastly, Plaintiffs identification of dependent claims that refer to "timing rules as
pertaining to 'durations' or 'durational data[,]"' (D.I. 106 at 8 (citations omitted)), actually cut
against its argument. The fact that certain dependent claims specifically recite timing rules that

pertain to "durations" or "durational data" while the independent claims are silent as to that issue
tends to suggest that when the patentee intended to refer only to "durations" or "durational data,"
he knew to use those words.
Thus, the specification and the claims demonstrate that "time" and "times" may refer to
"duration[s]," but are not absolutely limited to such a meaning. As such, the Court will not adopt
Plaintiffs proposed construction in this regard.

4.

Defendants' alternative argument regarding written description

As an alternative to its proposed construction, Defendants assert that "the specification
lacks sufficient written description for these claim elements." (D.I. 100, ex. 1 at 3) However,
they made no argument in support of this contention in their briefing. Moreover, such issues are
not normally addressed at the claim construction stage. See TQ Beta LLC v. Dish Network Corp.,
C.A. No. 14-CV-848-LPS-CJB, 2016 WL 356024, at *5 n.5 (D. Del. Jan. 28, 2016); Idenix
Pharms., Inc. v. Gilead Scis., Inc., Civil Action No. 13-1897-LPS, 2015 WL 9048010, at *4 (D.

18

Del. Dec. 16, 2015). The Court will therefore not address Defendants' alternative argument in its
construction of this disputed set of terms.

5.

Construction

The Court concludes that none of the restrictions proposed by the parties comport with
the plain and ordinary meaning of the terms at issue, as understood in the context of the Asserted
Patents. The requirements sought by Defendants are either apparent on the face of the claims, or
they are unsupported in light of the intrinsic evidence. The limitation on the terms "time" and
"times" sought by Plaintiff is similarly unduly restrictive. As did the district court in the related
California Actions, (D .L 107, ex. 3 at 16), then, here the Court finds that no construction is
necessary, and will recommend that this set of terms be afforded their plain and ordinary
meaning.

B.

"output morph weight set stream"

The second disputed term is "output morph weight set stream." Defendants propose that
"output morph weight set stream" means "[a] series of uninterpolated morph weight sets in timed
order corresponding to the order of the incoming sub-sequences." (D.I. 100, ex. 1 at 4) Plaintiff
asserts that "[t]his phrase does not require construction and the plain meaning should apply, e.g.
a series of consecutive morph weight sets that is output." (Id)
The parties have two real disputes with regard to "output morph weight set stream": (1)
whether these morph weight sets are "uninterpolated," and (2) whether they are in the proposed
"timed order." (See, e.g., Defendants' Claim Construction Hearing Slides at 20; D.I. 106 at 14)
1.

Must the output morph weight set stream be "uninterpolated"?

The parties first dispute whether the "output morph weight set stream" at issue must be
19

"uninterpolated"-that is, whether there may not be something else (e.g., a frame) inserted
between the keyframes in these output morph weight set streams, or between the morph weight
sets themselves. Defendants believe the output morph weight set stream at issue must be
uninterpolated; Plaintiff asserts that it need not be.
Defendants note that this term "appears within the context of Claim 1 of the '576 Patent
as the output that is expressly defined by the first set of rules, and in Claim 1 of the '278 Patent
within the context of 'generating an output morph weight set stream by applying said first set of
rules[.]"' (D.I. 112 at 11 (certain emphasis in original)) As such, Defendants assert that the term

must be interpreted within the particular context of those claims. (See id.) Defendants then
explain that while the morph weight set stream can be interpolated, "interpolation ... has not yet
taken place at the point immediately after the 'first set of rules' are applied." (D.I. 105 at 9)
The Court acknowledges that Defendants' argument here appears strong when they point
to a particular part of the specification. That portion of the specification that -states that "through
the use of [the first set of] rules, an appropriate morph weight stream is produced. The
uninterpolated morph weight stream has entries only at transition start and end times, however.

These act as keyframes." ('576 Patent, col. 7:10-13 (emphasis added)) The specification goes on
to include an exemplary "output morph weight set stream" matching this description. (Id., cols. ·
8:52-9: 12) In reading this, one would think that the "output morph weight set stream" must

always, as Defendants suggest, initially be uninterpolated.
Plaintiff, in arguing to the contrary, first asserts that Defendants' proposed construction
"is ... flatly contradicted by [the] agreed-to construction of 'intermediate stream of output morph
weight sets' ... which recognizes that output morph weight set streams may be 'interpolated[.]'"
20

(D.I. 106 at 14; see also D.I. 100, ex. 1 at 1 (setting out the agreed-upon construction for "an
intermediate stream of output morph weight sets" as "[a] series of morph weight sets to which
interpolation will be applied" and stating that "[t]his construction does not exclude the possibility
that the intermediate stream can itselfresult from interpolation[.]")) But, as Defendants note, the
agreed-upon construction of "an intermediate stream of output morph weight sets" provides that
interpolation "will be applied" to the intermediate stream, and that more interpolation will be
"performed to generate the final stream." (D.I. 100, ex. 1 at 1 (emphasis added)) That agreedupon construction does not necessarily contradict Defendants' proposed construction for "output
morph weight set stream," since Defendants' position is that while the intermediate and final
streams may be interpolated, the initial output morph weight set stream (on which interpolation
may later be performed) must itself be uninterpolated. (See D.I. 112 at 12 ("However, even if the
'intermediate stream' itself resulted from interpolation, there must still be an initial source of
uninterpolated morph weight sets.") (emphasis omitted)) And so this argument from Plaintiff is
not dispositive.
In the end though, it is Plaintiffs other argument-regarding dependent claim 17 of the
'278 Patent-that the Court cannot get past, and that wins the day for Plaintiff. Claim 17 calls for
"generating said output morph weight set stream by interpolating between morph weight sets[,]"
('278 Patent, col. 12:49-50) (emphasis added)). Accordingly, Plaintiff contends, "Claim 17's
'output morph weight set stream' is thus interpolated, not uninterpolated as Defendants wish
[since claim 17 is dependent on a claim that is ultimately dependent on claim 1]." (D.I. 111 at 13
(emphasis in original)) Defendants, for their part, suggest that the interpolation recited in claim
17 does not change the requirement that "the 'output morph weight set stream' defined in Claim
21

1 of the '278 Patent must be uninterpolated." (D.I. 112 at 12 (emphasis in original))~ But the
Court does not see how that can be so. Claim 17 recites "said output morph weight set
stream"-referring to the same "output morph weight set stream" that is recited in claim 1. And
it does not seem possible for a morph weight set stream to be "generat[ed] ... by
interpolating[,]" as required by claim 17, while also being "uninterpolated[,]" as Defendants
propose. As such, Defendants' proposed construction renders claim 17 "facially nonsensical[,
and therefore it] 'cannot be correct."' Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
616 F.3d 1249, 1255 (Fed. Cir. 2010) (quoting Schoenhaus v. Genesco, Inc., 440 F.3d 1354,
1357 (Fed. Cir. 2006)).
Thus, the Court will not recommend a construction that includes Defendants' proposed
requirement that the "output morph weight set stream" be "uninterpolated."

2.

Must the output morph weight set stream be in "timed order"?

As to whether the "output morph weight set stream" must be "in timed order
corresponding to the incoming sub-sequences" of phonemes, it is not disputed that "the 'output
morph weight set stream' will follow [or will roughly track] the general order of the input
phoneme sequence[.]" (D.I. 106 at 15; see also D.I. 111 at 14; D.I. 112 at 12) This makes sense,
in light of, for example, the requirement in claim 1 of the Asserted Patents that the "output
morph weight set stream" is a function of "time of said phoneme sequence[,]" ('576 Patent, col.
11 :30-32) or the "times associated with said phoneme sequence[,]" ('278 Patent, col. 11 :46-48).
But Plaintiff was concerned that Defendants were seeking a construction that would
require a ''precise correspondence in 'time' or 'order."' (D.I. 106 at 15 (emphasis added)). In
their responsive brief, Defendants clarified that they were not. Instead, their proposed
22

phraseology on this point was meant to "account[] for the 'first set of rules' to ensure that the
output morph weight sets in the stream are not 'scrambled' in time with respect to the incoming
phoneme sub-sequences." (D.I. 112 at 12)
Here, the Court agrees with Defendants that, on the one hand, the output morph weight
set stream must be "ordered" (i.e., not "scrambled" in time, in the manner Defendants describe)
relative to the incoming sub-sequences of phonemes. The above-referenced claim language
indicates as much.
But on the other hand, the Court agrees with Plaintiff that there does not have to be a
"precise correspondence" in time. The specification teaches exemplary rules that add certain
random effects into the morph weight sets before interpolation, (see, e.g., '576 Patent, col. 9:4145), or otherwise allow the output morph weight stream to not precisely correspond to the
incoming phoneme stream, (see id., cols. 5:5-8 (allowing for certain phonemes in the TAPT to be
ignored); 10:24-29 (creating, in long phonemes, "new transitions between alternate morph targets
at certain intervals, which may be randomized ... , avoiding a_rigid look.").
. As such, while the relative order of the incoming phoneme stream will remain constant
(i.e., the output will not cause the second phoneme of a phrase to be animated before the first
phoneme), the timing of the output morph weight sets may be subject to random change. (Tr. at
35-36, 116) Adopting Defendants' proposed construction could cause the term to be read in such
a way as to exclude exemplary embodiments in the patent. See Chimie v. PPG Indus., Inc., 402
F.3d 1371, 1377 (Fed. Cir. 2005) ("a construction that would not read on the preferred
embodiment ... would rarely if ever [be] correct and would require highly persuasive evidentiary
support.") (internal quotation marks and citations omitted). Thus, the Court's proposed
23

construction will specify that the relative order (rather than timed order) of morph weight sets
must correspond to the order of the incoming phoneme subsequences.

3.

Construction

For the above-referenced reasons, the Court will recommend that "output morph weight
set stream" be construed as "a series of morph weight sets in relative order corresponding to the
order of the incoming sub-sequences."

C.

"evaluating said plurality of sub-sequences against said first set of
rules" /"applying said first set of rules to each sub-sequence of said plurality
of sub-sequences of timed phonemes"

With regard to this third disputed set of terms, Defendants propose a construction of
"[ c]hecking each s'Ub-sequence of said plurality of sub-sequences of phonemes and durations
against the first set of rules to see which rule is applicable and applying the applicable rule."

(See, e.g., D.I. 105 at 10) 12 Plaintiff argues that the phrase does not require construction and that
the plain meaning of the terms should apply. (Id.)
The key disputes as to these terms centers on.the meanings of the words "evaluating" and
"applying." Defendants' construction suggests that both of those words mean "checking and
applying." Plaintiff contends that this cannot be so, (see, e.g., Tr. at 88-89), and the Court agrees.
The Court will first address the term "applying" as used in the '278 Patent before
considering "evaluating" as used in the '576 Patent. It will then go on to discuss a few additional

12

Defendants originally proposed the following construction: "Checking each subsequence of said plurality of sub-sequences of phonemes and durations against the first set of
rules to see which rule is applicable." (D.I. 100, ex. 1 at 5) They later modified the construction
to add the phrase "and applying the applicable rule" to "make[] clear for the jury that, in
'generating an intermediate stream of output morph weight sets' ... the claims require applying
the rule." (D.I. 112 at 8 n.1 (internal citation omitted))
24

disputes between the parties as to the construction of these terms.
1.

"Applying"

Facially, the language of the claims of the '278 Patent suggests that "checking" means
something different from "applying." Claim 1 recites "generating an output morph weight set
stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences
of timed phonemes[.]" ('278 Patent, col. 11 :52-54 (emphasis added)) Dependent claim 11,
however, recites the "method of claim 10 [which, in turn, incorporates the method of claim 1],
wherein said generating an output morph weight set stream comprises: checking each subsequence of said plurality of sub-sequences of timed data for compliance with said rule's criteria;
and ... applying said rule's function upon said compliance with said criteria[.]" (Id., col. 12:2229 (emphasis added)).
However, in rejecting Defendants' proposed construction, the Court need not even rely on
the doctrine of claim differentiation. Even without considering the context of the claims (which
would cut against Defendants' proposed construction), the ordinary meanings of the terms at
issue support Plaintiffs position. The Court agrees with Plaintiff that "the world 'applying'
plainly does not require 'applying' and 'checking'." (D.I. 111 at 15 & n.8; see also Tr. at 88, 93-

94)13
In arguing to the contrary, Defendants note that the specification teaches that "[e]ach subsequence of [TAPT] or other timed data ... is checked against a rule 's criteria to see

13

if that rule

Defendants' use of the word "applying" in its own proposed construction suggests
that "applying" has a readily understood meaning and does not require construction. (See D.I.
111 at 15) At the Markman hearing, Plaintiffs counsel, for example, agreed that the term, as
used in this context, "means something like putting a rule into play or action." (Tr. at 94)
25

is applicable. If so, the rule's function is applied to generate the output." ('576 Patent, col. 4:5156 (emphasis added)) And they explain that the specification goes on to discuss "how each subsequence is checked against a set of default rules and secondary rule(s) to see which rule
applies[.]" (D.I. 105 at 11) Here, Defendants cite to a portion of the specification that states that
"[i]f, for example, a specific TAPT sub-sequence does not fit the criteria for any secondary rules,
then the default rules take effect[; but i]f, on the other hand, the TAPT sub-sequence does fit the
criteria for a secondary rule(s) they take precedence over the default rules[.]" ('576 Patent, col.
5:21-25; see also id., col. 5:13-16) Defendants also argue that "ifthe ... 'applying' step[ was]
distinct from 'checking,' [then it would] be inconsistent with ... dependent Claim 11 in the '278
Patent." (D.I. 112 at 9; see also D.I. 105 at 12)
Yet, in light of the plain language of claim 1, the Court cannot agree that the "applying
said first set of rules" referenced in the claim term necessarily requires first checking the subsequence of data against the rule's criteria. While that concept of "checking" is described in the
specification, as Defendants have noted, the patent does have claims that explicitly incorporate
this kind of a "checking" step. (D.I. 106 at 16 (Plaintiff noting that the "specification ...
discloses that rules may be checked to determine their applicability[,]" not that in all cases they
must be) (emphasis added); see also Tr. at 89) And if anything, the fact that claim 11 explicitly
calls out that "generating an output morph weight set stream" there involves "checking" each
subsequence of data for compliance with criteria in the first set of rules, cuts against Defendants'
argument. This suggests that claim 1, which explicitly does not incorporate a "checking" step
into its description of what it means to generate an output morph weight set stream, does so for a
reason. (Tr. at 116 (Plaintiff's counsel arguing, as to claim 1 of the '278 Patent, "the claim says

26

applying, but not evaluating [and likely was meant to at least allow for] a rule that applies to
everything ... You do it all of the time. You don't have to check anything. You just apply it all
the time .... You're just going to do it automatically."))

2.

"Evaluating"

Claim 1 of the '576 Patent describes how the method generates an intermediate stream of
output morph weight sets and a plurality of transition parameters between two morph weight sets
by "evaluating said plurality of sub-sequences against said first set of rules[.]" ('576 Patent, col.
11 :36-39) Defendants argue that, pursuant to their proposed construction, "evaluating" as used
in this term encapsulates both "checking" and "applying." Here, again though, the claim
language itself cuts against Defendants' proposed construction.
While in claim 1 of the '576 Patent, the patentee uses the phrase "evaluating said plurality
of sub-sequences against the first set of rules[,]" ('576 Patent, col. 11:38-39), dependent claim 3
recites a method "wherein said evaluating comprises: checking each sub-sequence of saidplurality of sub-sequences for compliance with the rule's criteria; and applying said rule's
function upon said compliance." (Id., col. 11 :50-54 (emphasis added)) Thus, the patentee, in a
dependent claim (claim 3), could be seen to have assigned "evaluating" the meaning now
proposed by Defendants in their construction here for the term used in independent claim 1.
Since claim 3 defines "evaluating" to include both the aspects of "checking" and "applying," it
makes sense that "evaluating," as it used in claim 1, requires something less than that. See

Phillips, 415 F.3d at 1314-15; see also (Tr. at 94).
Indeed, the Court concludes that in the claim term at issue, "evaluating" means
"checking." This conclusion seems in line with the plain language of the claim term itself,

27

wherein the plurality of sub-sequences are "evaluat[ed]" "against" (i.e., checked against) the first
set of rules. Ill fact, neither party disputes that "evaluating" requires this kind of "checking."
(Tr. at 94-95 (Plaintiffs counsel suggesting at the Markman hearing that "evaluating" could be
synonymous with "checking," as long as those two terms did not mean the same thing as
"applying"); D.I. 105 at 12) Although it would seem as if the purpose of a "checking" step is to
often serve as a precursor to "applying" a rule's function, (Tr. at 115), it also seems at least
possible, as Plaintiff suggests, that "here you can evaluate in the one claim [claim 1 of the '576
Patent] and not necessarily apply [but y]ou get to the dependent claim [claim 3 of the patent, and]
you have to do both[,]" (id. at 116).
3.

Defendants' additional proposed limitations

Defendants' proposed construction contains two other elements that the Court will not
adopt.
First, their proposed construction requires that "each sub-sequence of said plurality of
sub-sequences" is evaluated or has rules applied to it. (See, e.g., D.I. 105 at 10 (emphasis
added)) But of the independent claims, only claim 1 of the '278 Patent requires application of the
first set of rules to "each sub-sequence of said plurality[;]" claim 1 of the '576 Patent simply
requires "evaluating said plurality ofsub-sequences against the first set of rules[.]" (Compare
'278 Patent, col. 11 :53-55, with '576 Patent, col. 11 :38-39 (emphasis added)) Further, dependent
claim 3 of the '576 Patent specifies a narrower method in which "evaluating comprises: checking
each sub-sequence of said plurality of sub-sequences .... " ('576 Patent, col. 11 :50-53 (emphasis

added)) As Plaintiff notes, the patentee "was capable of drafting these two phrases identically,
but he elected not to." (D.I. 111at15)
28

At the Markman hearing, Defendants' counsel identified a portion of the '576 Patent's
specification that he argued supports the requirement for each sub-sequence to be evaluated or
have rules applied to it. (Tr. at 99-100 (citing '576 Patent, col. 4:56-64)) And the specification
does state that a primary function of the first set of rules is ( 1) to determine the appropriate
morph weight set correspondence ''with each T APT sub-sequence[,]" and that (2) this
correspondence "must be completely specified for any sequence of phonemes and times
encountered." ('576 Patent, col. 4:56-63) But this portion of the specification appears to
describe a preferred embodiment of the invention. (See id., col. 4:50 ("Preferably, each rule
comprises two parts .... ") (emphasis added)) Thus, it would seem possible for the
evaluation/application process to occur without involving every sub-sequence, contrary to
Defendants' contention. Without clearer evidence as to why this requirement should be read into
claim 1 of the '576 Patent, when it is clearly stated in another claim (but not claim 1), the Court
will not import such a limitation from the specification.
Second, Defendants' proposed construction adds a requirement that "durations" must also
be checked against the first set of rules. This issue was hardly addressed in the parties' briefing.
But Plaintiffs counsel argued at the Markman hearing that the inclusion of the word "durations"
is confusing, noting that it does not appear in the independent claims at all. (Tr. at 89-90)
Defendants' counsel responded by stating that the term "timed phonemes[,]" which appears in
claim 1 of the '278 Patent, (see, e.g., '278 Patent, col. 11 :54), refers to durations, (Tr. at 100), and
that claim 1 of the '576 Patent's reference to "said plurality of sub-sequences" refers to timed
data,(id. at 100-01 (citingcol.11:33-34))
As this issue was not well-briefed, the correct answer is all the harder to discern. In the
29

end, while the relevant independent claims of the respective patents are clear enough that the
"evaluating" and "applying" at issue occurs with relation to "sub-sequences" of phonemes, the
claims are not clear enough that those acts are necessarily taken with regard to phoneme duration.
And so the Court will not include "duration" in its construction here.

4.

Construction

The Court has determined that the phrases "evaluating said plurality of sub-sequences
against said first set of rules" and "applying said first set of rules to each sub-sequence of said
plurality of sub-sequences of timed phonemes" must have different meanings. The Court
recommends construing "evaluating said plurality of sub-sequences against said first set of rules"
to mean "checking said plurality of sub-sequences against said first set of rules." It further
recommends that "applying said first set of rules to each sub-sequence of said plurality of subsequences of timed phonemes" should be afforded its plain and ordinary meaning.

D.

"applying said output morph weight set stream to an input sequence of
animated characters to generate an output sequence of animated characters
with lip and facial expression synchronized to said audio sequence"I
"applying said final stream of output morph weight sets to a sequence of
animated characters to produce lip synchronization and facial expression
control of said animated characters"

The "applying said[] output morph weight set[s/stream] to a[n input] sequence of
animated characters" phrases appear in claim 1 of the '278 Patent and claim 1 of the '576 Patent,
respectively. Plaintiff argues that these phrases do not require construction and the plain
meaning of the terms should apply. (D.I. 100, ex. 1 at 8-9) Defendants argue that the phrases are
indefinite under 35 U.S.C. § 112 ("Section 112") and lack sufficient written description. 14 (Id.)

14

In line with the Court's prior discussion of the issue, the Court will not consider
Defendants' written description arguments at this stage. Thus, the following analysis focuses
30

Section 112 requires that a patent claim "particularly point[] out and distinctly claim[] the
subject matter which the inventor or a joint inventor regards as the invention." 35 U.S.C. § 112,
~ 2. 15 If it does not, the claim is indefinite and therefore invalid. Nautilus, Inc. v. Biosig

Instruments, Inc., 134 S. Ct. 2120, 2125 (2014) ("Nautilus"). In Nautilus, the Supreme Court of
the United States set out the test to be applied in the indefiniteness inquiry: "a patent is invalid
for indefiniteness if its claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
scope of the invention." Id. at 2124. Definiteness is to be evaluated from the perspective of
someone skilled in the relevant art at the time the patent was filed. Id. at 2128.
The primary purpose of the definiteness requirement is to ensure that patent claims are
written in such a way that they give notice to the public of what is claimed, thus enabling
interested members of the public (e.g., competitors of the patent owner) to determine whether
they infringe. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80
(Fed. Cir. 2002). Put another way, "[a] patent holder should know what he owns, and the public
should know what he does not." Festa Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722, 731 (2002).
Like claim construction, definiteness is a question of law for the court. H-W Tech., L. C.
v. Overstock.com, Inc., 758 F.3d 1329, 1332 (Fed. Cir. 2014). The United States Court of

exclusively on Defendants' indefiniteness argument.
15

Here, the Court refers to the text of Section 112 as it read prior to the passage of
the Leahy-Smith America Invents Act, since the applications that led to the issuance of the
Asserted Patents were filed before September 16, 2012. (See '576 Patent; '278 Patent); see also
Q.l Press Controls, B. V v. Lee, 752 F.3d 1371, 1374 n.2 (Fed. Cir. 2014).
31

Appeals for the Federal Circuit has stated that "[a]ny fact critical to a holding on indefiniteness
... must be proven by the challenger by clear and convincing evidence." Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). 16
Defendants' basic argument was that the Asserted Patents "fail to describe how to
perform the 'applying' step"-that is, that they fail to "inform the public how to 'apply' the
output morph weights to 'animated characters' to produce lip synchronization and facial
expression." (D.I. 105 at 13) However, Defendants fail to offer clear and convincing evidence
that any language in the disputed phrases, let alone the word "applying," could not be readily
understood by those skilled in the art.
For one thing, as Plaintiff notes, both the Federal Circuit and the Court presiding over the
California Actions "expressly referenced these phrases and [seemed to have] no trouble
understanding what was claimed." (D.I. 106 at 19); see also Bandai, 837 F.3d at 1315 ("The
claimed process uses a combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of synchronized,
animated characters."); (D.I. 107, ex. 3 at 14 (the Court in the California Actions ruling that the
claims at issue "explain[] how the morph weight sets result in synchronization and facial
expression control.")) Defendants are certainly correct that "[n]either the Federal Circuit nor the
16

In Nautilus, the Supreme Court left open the question of whether factual findings
subsidiary to the ultimate issue of definiteness should, in fact, trigger the application of a "clearand-convincing-evidence standard[,]" noting that it would "leave th[is] question[] for another
day." Nautilus, 134 S. Ct. at 2130 n.10. In the absence of Supreme Court precedent to the
contrary, the Federal Circuit's caselaw (utilizing the clear-and-convincing-evidence standard)
controls. See Cal. Inst. of Tech. v. Hughes Commc 'ns Inc., 35 F. Supp. 3d 1176, 1182 n.4 (C.D.
Cal. 2014).
32

District Court evaluated the definiteness of these phrases." (D.I. 112 at 18) But, at a minimum,
Plaintiff is also correct that these courts did not seem to be perplexed as to what the terms meant,
either. 17
Defendants' indefiniteness argument is further belied by their own statements. In their
answering claim construction brief, Defendants argue that "many methods of applying a morph
weight set to a sequence of animated characters exist[.]" (D.I. 112 at 19) As Plaintiffs counsel
pointed out at the Markman hearing, this statement suggests that Defendants recognize that a
person of skill in the art would know what it means to apply output morph weight sets to
animated characters. (Tr. at 119) Now, if Defendants had produced evidence showing that (1)
there actually are many different ways to perform this application process; and (2) depending on
which method of application was chosen, the use of any particular method could make a
difference as to whether a person infringed the claims or not, then (3) perhaps· they would be on
to a definiteness problem here. See, e.g., WL. Gore & Assocs., Inc. v. C.R. Bard, Inc., Civil
Action No. 11-515-LPS, 2015 WL 12831300, at *3 (D. Del. Sept. 28, 2015) (citing Takeda

Pharm. Co. v. Zydus Pharms. USA., Inc., 743 F.3d 1359, 1367 n.4 (Fed. Cir. 2014)); Butamax
Advanced Biofuels LLC v. Gevo, Inc., 117 F. Supp. 3d 632, 641 (D. Del. 2015) (citing Takeda).
But Defendants did not produce any such evidence. (D.I. 111 at 19-20; Tr. at 125)
Lastly (and related to the Court's prior point), it is worth reiterating that Defendants have

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Moreover, even if Defendants were correct in their assertion that the Asserted
Patents do not describe how to perform the "applying" step, that would not necessarily give rise
to a finding of indefiniteness. See Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed.
Cir. 2014) (rejecting the argument that a limitation was indefinite because the patent-in-suit did
not disclose every limitation required by the claims, and clarifying that "[t]he standard for
indefiniteness is whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.") (internal quotation marks and citation omitted).
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the burden of demonstrating indefiniteness by clear and convincing evidence. And yet, as
Plaintiffs counsel noted at the Markman hearing, Defendants submitted no expert declaration,
citations to the inventor, or anything other than attorney argument in order to make that showing.
(Tr. at 119; see also D.I. 111 at 18)
Indeed, by the time of the Markman hearing, Defendants' counsel was indicating that "we
understand that the issue of indefiniteness is something that [] without evidence is probably best
presented in the summary judgment motion at a later date" and that "the individual words in
these claim terms are understandable[.]" (Tr. at 126-27) But then Defendants offered a new
argument that they had not really articulated previously: that the term "animated characters" is
ambiguous, and that it prevents meaningful construction of the claim. (See id. at 127-36;
Defendants' Claim Construction Hearing Slides at 44) Any such argument really should have
been made in the briefs. And beyond that, even at the Markman hearing, it was a bit hard to
discern what it was about the use of "animated characters" that troubled Defendants. (Tr. at 13034) It ultimately appeared that Defendants were suggesting that the concept of applying a final
stream of output morph weight sets to "animated characters" was confusing, in that the
application step itself is a way of "animating" the characters, and yet (to Defendants) the use of
the term "animated characters" suggests that prior to application, the characters are already
"animated." (Id.)
Yet the Court finds nothing ambiguous on that score. It seems clear that when the claim
terms use "animated characters," they are referring to a "geometric representation of a character
for an animated production such as movies, video, cartoon, CD or the like[.]" ('576 patent, col.
7:36-38; see also Tr. at 136-37 (Plaintiffs counsel explaining: "ifl showed you a picture of
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Scooby-Doo and I said is that an animated character, the answer is yes."))
In light of the above, the Court finds that Defendants have not met their burden of
demonstrating that the disputed set of terms are indefinite. It also concludes the terms' meanings
are apparent on the face of the patent. As such, it recommends that the terms be afforded their
plain and ordinary meaning.
IV.

CONCLUSION
For the foregoing reasons, the Court recommends the following constructions:
1.

"first set of rules that defines a morph weight set stream as a function of phoneme

sequence and times associated with said phoneme sequence"/"first set of rules that define output
morph weight set stream as a function of phoneme sequence and time of said phoneme sequence"
should be afforded their plain and ordinary meaning.
2.

"output morph weight set stream" means "a series of morph weight sets in relative

order corresponding to the order of the incoming sub-sequences."
3.

"evaluating said plurality of sub-sequences against said first set of rules" means

"checking said plurality of sub-sequences against said first set of rules" and "applying said first
set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes" should
be afforded its plain and ordinary meaning.
4.

"applying said output morph weight set stream to an input sequence of

animated characters to generate an output sequence of animated characters with lip and facial
expression synchronized to said audio sequence"/"applying said final stream of output morph
weight sets to a sequence of animated characters to produce lip synchronization and facial
expression control of said animated characters" should be afforded their plain and ordinary

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meaning.
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
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 Urider 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 8, 2017

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