Ubisoft Entertainment SA v. Princeton Digital Image Corp

1. Case Identification

• Case #: IPR2014-00635
• Patent #: 5,513,129
• Filed: April 15, 2014
• Petitioner(s): Ubisoft Entertainment SA
• Patent Owner(s): Princeton Digital Image Corporation
• Challenged Claims: 1-23

2. Patent Overview

• Title: Controlling a Computer System in Response to Music Signals
• Brief Description: The ’129 patent discloses a virtual reality (VR) computer system that is controlled in response to music signals or prerecorded control tracks. The system analyzes audio signals to derive control information, which is then used to influence or generate actions within a virtual environment, such as displaying virtual hands clapping in time to a musical beat.

3. Grounds for Unpatentability

Ground 1: Anticipation by Tsumura - Claims 1, 5-7, 10-15, and 21 are anticipated by Tsumura under 35 U.S.C. §102(a).

• Prior Art Relied Upon: Tsumura (Patent 5,208,413).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Tsumura discloses every limitation of the challenged claims. Tsumura describes a karaoke device that functions as a computer-simulated environment. It processes a user's live vocal performance (a music signal) using frequency analysis to generate control signals indicative of the singer's pitch. This system then operates a virtual environment by comparing the user's pitch to stored pitch data and displaying feedback messages (e.g., "lower your pitch") synchronized with the lyrics. Tsumura also discloses prerecording a control track with vocal and lyric data that is phase-shifted in advance to compensate for system delays, meeting limitations related to prerecorded tracks.

Ground 2: Obviousness over Lytle and Adachi - Claims 1, 8, 12, 13, 15, and 21 are obvious over Lytle in view of Adachi under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Lytle ("Driving Computer Graphics Animation From a Musical Score," 1990) and Adachi (Patent 5,048,390).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lytle discloses a system for creating computer graphics animation in a 3D simulated environment controlled by a musical score. Lytle's system uses a prerecorded MIDI file to map musical parameters to graphical object motions. While Lytle's implementation relied on MIDI data, Petitioner contended it recognized that raw musical sound could be analyzed to extract control data. Adachi was argued to supply this teaching, as it discloses an apparatus that processes a raw musical tone signal using an "envelope detecting circuit" or a "Fast Fourier Transform circuit" to detect parameters like amplitude and frequency and generate a control signal for a computer.
  • Motivation to Combine: A POSITA would combine Adachi's signal processing with Lytle's animation system to create a more versatile system. Lytle itself contemplated using encoding schemes other than MIDI, and Adachi provided a well-known method for processing raw audio into usable control signals. This combination would allow Lytle's visually impressive system to be driven by any music source, not just pre-composed MIDI files.
  • Expectation of Success: The combination was argued to be predictable. Integrating Adachi's standard audio processing front-end with Lytle's back-end animation system would have involved applying known engineering principles to achieve the expected result of a music-driven animation system with broader input capabilities.

Ground 3: Obviousness over Thalmann and Williams - Claims 1-6, 8, 9, 12, 13, 15, 19, and 21 are obvious over Thalmann in view of Williams under 35 U.S.C. §103(a).

• Prior Art Relied Upon: Thalmann ("Using Virtual Reality Techniques in the Animation Process," 1992) and Williams (Patent 5,430,835).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Thalmann discloses an immersive, computer-simulated VR animation system that uses various inputs, including real-time audio, to control animations. Thalmann specifically describes using audio input for facial animation. Williams was argued to provide the specific teachings for automatically processing a sound recording (like music or speech) to synchronize animations. Williams discloses analyzing sound features (intensity, frequency) to automatically associate predetermined actions (e.g., a character's mouth movements) with specific time positions in the recording.
  • Motivation to Combine: A POSITA would combine Williams's automatic synchronization method with Thalmann's advanced VR animation system to improve its functionality. While Thalmann taught using audio input, Williams provided a specific and desirable method for automatically generating control signals from that audio to create precisely synchronized animations. This would have been a natural way to enhance Thalmann's system to make animations more realistic and less labor-intensive to create.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved using Williams's known audio processing techniques as a front-end controller for Thalmann's VR animation system, a straightforward integration of complementary technologies.

• Additional Grounds: Petitioner asserted additional anticipation challenges against various claims based on Lytle, Adachi, and Williams individually. An additional obviousness challenge was asserted against claims 16-20 based on Tsumura in view of Williams.

4. Key Claim Construction Positions

• "virtual environment": Petitioner argued this term should be construed as "a computer-simulated environment which includes a graphic display, and optionally also sounds which simulate environmental sounds." Petitioner contended that parenthetical descriptions in the specification, such as "intended to be immersive," should not be imported as limitations into the claim, as the patent's own disclosures encompass both immersive head-mounted displays and conventional 2D flat-screen displays.
• Means-Plus-Function Terms (Claims 12-20, 22-23): For numerous means-plus-function limitations (e.g., "means for supplying a first signal"), Petitioner argued the only structure disclosed in the ’129 patent to perform the claimed function is a general-purpose processor or computer programmed with specific software algorithms. Petitioner identified the corresponding structures for each claimed function based on the specification's disclosure of components like the "Acoustic Etch" unit, VR Processor, and associated algorithms for filtering and analysis.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-23 of the ’129 patent as unpatentable.