Ubisoft Inc v. GUItar AppRenTice Inc

1. Case Identification

• Case #: IPR2015-00298
• Patent #: 8,586,849
• Filed: November 25, 2014
• Petitioner(s): Ubisoft, Inc. and Ubisoft Entertainment SA
• Patent Owner(s): Guitar Apprentice, Inc.
• Challenged Claims: 1-3, 5, 9-12, 14, 16-18, and 20

2. Patent Overview

• Title: Progressive Musical Instruction System
• Brief Description: The ’849 patent discloses a progressive musical instruction method, primarily for a guitar. The system presents a song as a plurality of musical segments, defines a subset of these as "user segments" for the user to play, and dynamically adjusts the number of user segments based on a determined user proficiency level, allowing a user to learn by playing a gradually increasing portion of the song.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 9-12, 14, 16-18, and 20 are anticipated by Lee under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Lee (Application # 2011/0003638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lee discloses every limitation of the challenged claims. Lee describes a "stepwise and progressive" music instruction system where a user plays a musical piece on a guitar. The system defines the number of musical events (notes/chords) the user is instructed to play based on a difficulty level (e.g., beginner, novice, expert). For lower difficulty levels, the user plays only a subset of the total notes while an "expert performance audio track" plays the remainder, analogous to the ’849 patent’s user and host segments. Lee’s system also provides graphical representations of a fret board to instruct the user.
  • Prior Art Mapping (cont.): Crucially, Petitioner asserted Lee teaches determining a user’s proficiency. Lee’s system evaluates the user’s performance by comparing it to expected musical events, provides feedback such as scores and a "user level," and expressly discloses that this determined user level may assist the user in selecting a difficulty level for a subsequent session. Petitioner contended this directly teaches defining the number of user segments for a subsequent iteration based on a proficiency level determined from a previous iteration.

Ground 2: Claims 1-3, 5, 9-12, 14, 16-18, and 20 are anticipated by Epstein under 35 U.S.C. §§ 102(a) and (e).

• Prior Art Relied Upon: Epstein (Application # 2010/0137049).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Epstein’s interactive guitar game teaches all claimed features. Epstein’s system displays scrolling "note bubbles" on a graphical tablature that prompt the user to play corresponding notes/chords on a guitar when the bubbles reach a "hit zone." The system processes an audio signal from the user's guitar, compares it to the expected performance of the selected song, calculates a score, and provides feedback on accuracy.
  • Prior Art Mapping (cont.): Petitioner highlighted that Epstein’s mini-games, such as "Notes in a row," implement the claimed progressive instruction method. In this mode, a user must play a certain number of notes correctly to pass a level (a first iteration). Upon passing, the user can play a subsequent level that requires more notes to be played (a successive iteration). This process, Petitioner argued, is equivalent to determining a number of user segments for a successive iteration based on performance criteria (passing the previous level) that comprises a proficiency level. Dependent claims related to user-selectable difficulty and storing multiple songs were also alleged to be disclosed.

• Additional Grounds: Petitioner asserted additional anticipation challenges based on Parks (Application # 2008/0200224) and an obviousness challenge over Lee alone. These grounds relied on similar teachings of progressive difficulty and performance feedback loops common in music-based video games.

4. Key Claim Construction Positions

• Petitioner argued that the terms "proficiency sensing module" (claims 9, 16) and "mode control module" (claims 9-16) are functional limitations that fail to recite sufficiently definite structure in the ’849 patent’s specification to perform their claimed functions.
• Petitioner contended these terms should be construed under 35 U.S.C. §112, ¶6 (pre-AIA) as means-plus-function limitations. While acknowledging that indefiniteness challenges under §112 are not permissible in an inter partes review (IPR), Petitioner argued that if the terms are not found indefinite, the claimed functions are nonetheless fully described and enabled by the asserted prior art references.
• For the term "proficiency level of the user," Petitioner submitted dictionary definitions to support a broad interpretation that includes "an extent, measure, or degree of the user's skill or expertness," which Petitioner argued is consistent with the feedback mechanisms (e.g., scores, user levels) disclosed in the prior art.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-3, 5, 9-12, 14, 16-18, and 20 of Patent 8,586,849 as unpatentable.