DCT
1:13-cv-00335
Princeton Digital Image Corp v. Ubisoft Entertainment SA
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Princeton Digital Image Corporation (Texas)
- Defendant: Ubisoft Entertainment SA (France)
- Plaintiff’s Counsel: O'KELLY ERNST & BIELLI, LLC
- Case Identification: 1:13-cv-00335, D. Del., 02/27/2013
- Venue Allegations: Venue is asserted on the basis that Defendant is "doing business and committing infringements in this judicial district."
- Core Dispute: Plaintiff alleges that Defendant’s Just Dance series of video games infringes a patent related to controlling a computer-generated virtual environment in response to audio signals.
- Technical Context: The technology concerns methods for synchronizing visual events and object animations within a virtual world to an accompanying music or audio track, a core technical element of modern rhythm-based entertainment software.
- Key Procedural History: The complaint was filed in February 2013. Subsequent to the filing, two inter partes review (IPR) proceedings were initiated against the '129 patent at the U.S. Patent and Trademark Office. These proceedings resulted in a certificate issued on February 5, 2018, which cancelled all asserted independent claims (Claims 1, 5, 12, 16, 21, 22) and numerous dependent claims of the patent.
Case Timeline
| Date | Event |
|---|---|
| 1993-07-14 | '129 Patent Priority Date |
| 1996-04-30 | U.S. Patent No. 5,513,129 Issued |
| 2011-12-14 | PDIC acquires rights to the '129 Patent by assignment |
| 2013-02-27 | Complaint Filing Date |
| 2013-11-15 | IPR2014-00155 Filed against the '129 Patent |
| 2014-04-15 | IPR2014-00635 Filed against the '129 Patent |
| 2018-02-05 | IPR Certificate Issued, cancelling claims including 1-13 and 21-23 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,513,129 - METHOD AND SYSTEM FOR CONTROLLING COMPUTER-GENERATED VIRTUAL ENVIRONMENT IN RESPONSE TO AUDIO SIGNALS, issued April 30, 1996
The Invention Explained
- Problem Addressed: The patent’s background section describes conventional virtual reality (VR) systems of the era as often being "boring and nearly static environments" ('129 Patent, col. 2:11-12). It notes that prior art efforts to combine music and VR focused on using the virtual environment to create music (e.g., a virtual instrument), rather than using music to dynamically control the virtual environment itself ('129 Patent, col. 2:30-34).
- The Patented Solution: The invention proposes to "reverse the paradigm" by creating a system with "musically-driven objects" ('129 Patent, col. 3:45-46). The system processes an audio signal, such as a music track, to generate control signals that automatically create, modify, or animate objects within a virtual world. This enables a VR system to function as a "virtual stage driven by music" ('129 Patent, col. 4:44-46).
- Technical Importance: The claimed method provided a framework for creating dynamic, choreographed virtual experiences synchronized to music, addressing a key content generation challenge for the consumer entertainment market ('129 Patent, col. 2:5-9).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the '129 patent (Compl. ¶10). Independent claim 1 is representative of the core method:
- Independent Claim 1:
- (a) processing music signals to generate control signals having music and/or control information; and
- (b) operating the virtual reality computer system in response to the control signals to generate said virtual environment.
- The complaint does not specify any dependent claims but reserves the right to assert them.
III. The Accused Instrumentality
Product Identification
- The complaint names "at least games known commercially as Just Dance, Just Dance2, Just Dance3, Just Dance 4 and Just Dance Summer Party" (Compl. ¶9). It also identifies Rocksmith as another potentially infringing game (Compl. ¶10).
Functionality and Market Context
- The complaint alleges that the accused games possess the core functionality to "allow the control of a virtual environment in response to a music signal" (Compl. ¶9). The complaint does not provide further technical detail regarding the specific operation of the accused games or their market position.
IV. Analysis of Infringement Allegations
The complaint makes a general allegation of infringement without providing a detailed claim chart or specific mapping of product features to claim elements. The analysis below is based on the core theory presented.
No probative visual evidence provided in complaint.
'129 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) processing music signals to generate control signals... | The accused Just Dance games are alleged to process the audio of a song to generate data that controls the actions of on-screen characters and visual effects. | ¶9 | col. 4:55-65 |
| (b) operating the virtual reality computer system in response to the control signals to generate said virtual environment. | The games allegedly generate and animate the on-screen virtual environment, including dancers and backgrounds, based on the control signals derived from the music. | ¶9 | col. 4:36-43 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the scope of the term "virtual reality computer system." The '129 patent specification describes systems involving immersive, head-mounted displays ('129 Patent, col. 8:8-12), raising the question of whether a console video game displayed on a conventional television falls within the claimed scope.
- Technical Questions: The complaint does not specify how the accused games control the virtual environment. A central technical question would be whether the games actively "process music signals" in real-time to "generate" controls, as required by claim 1, or if they primarily use pre-authored animation data that is merely synchronized with an audio track for playback, an operation which may be closer to the patent's disclosure of a "prerecorded control track" (a feature of other claims, e.g., claim 5).
V. Key Claim Terms for Construction
The Term: "virtual reality computer system"
- Context and Importance: The construction of this term is critical to determining whether the patent's claims, which were drafted in the context of early immersive VR technology, read on modern, non-immersive console video games. Practitioners may focus on this term to define the foundational applicability of the patent to the accused products.
- Intrinsic Evidence for a Broader Interpretation: The patent defines "virtual environment" broadly as a "computer-simulated environment" which can be a "two-dimensional (2D) or a three-dimensional (3D) display" ('129 Patent, col. 1:22-26, 34-36). This could support a construction not limited to immersive hardware.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description repeatedly references technologies associated with immersive VR, such as "head-tracking means" and head-mounted displays providing a "stereoscopic display" ('129 Patent, col. 8:8-16), which may suggest the invention was intended for a more specific type of system than a standard video game.
The Term: "processing music signals to generate control signals"
- Context and Importance: This term defines the core action of the invention. Its construction would determine whether the accused games' method of synchronizing animation to music constitutes infringement.
- Intrinsic Evidence for a Broader Interpretation: The patent suggests this step can be accomplished via a "simple algorithm (of the same type used by well known graphic equalizers) to extract a rhythm signal" ('129 Patent, col. 5:2-6), which may support a broad definition covering various forms of audio analysis.
- Intrinsic Evidence for a Narrower Interpretation: The patent distinguishes between directly processing music and using "prerecorded control tracks" that are created in advance and played back with the music ('129 Patent, col. 5:10-24). A defendant might argue that its system, if it uses pre-authored choreography data, does not "process" the music to "generate" signals but rather plays back existing, synchronized data.
VI. Other Allegations
- Indirect Infringement: The complaint states that Defendant's activities "may contribute to or induce infringement" but offers no specific factual allegations to support the required elements of knowledge and intent, such as citations to user manuals or advertising materials that instruct on an infringing use (Compl. ¶11).
- Willful Infringement: The complaint does not explicitly allege willful infringement, nor does it plead facts that would typically support such a claim, such as pre-suit knowledge of the patent and its infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: The threshold issue for the dispute is its viability following the inter partes review proceedings that occurred after the complaint was filed. With all asserted independent claims and many dependent claims of the '129 patent having been cancelled, the fundamental basis of the lawsuit as originally filed has been eliminated.
- Definitional Scope: A central legal question for any remaining claims would be one of claim construction: can the term "virtual reality computer system," which is described in the patent with references to immersive hardware like head-mounted displays, be construed broadly enough to encompass the accused non-immersive console video games?
- Technical Operation: A key evidentiary question for infringement would be one of technical function: do the accused games perform the claimed step of "processing music signals" to "generate" on-screen events in real-time, or do they operate by playing back pre-authored choreography data that is merely time-synchronized with an audio file? The distinction is critical for determining whether the accused products actually practice the claimed method.