UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`UBISOFT, INC. AND UBISOFT ENTERTAINMENT SA,
`Petitioners
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`v.
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`GUITAR APPRENTICE, INC.
`Patent Owner
`
`____________
`
`Case No. IPR2015-00298
`Patent 8,586,849
` ____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
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`UBISOFT, INC. AND UBISOFT ENTERTAINMENT SA,
`Petitioners
`
`v.
`
`GUITAR APPRENTICE, INC.
`Patent Owner
`
`____________
`
`Case No. IPR2015-00298
`Patent 8,586,849
` ____________
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2015-00298
`U.S. Patent No. 8,586,849
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`
`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................................. 2
`I.
`INTRODUCTION .................................................................................................................. 1
`II. LEE ANTICIPATES CLAIMS 1-3, 5, 9-12, 14, 16-18, AND 20 ....................................... 2
`A. TO THE EXTENT THE CHALLENGED CLAIMS REQUIRE “PERSISTENT ADJUSTMENT OF
`DIFFICULTY,” IT IS TAUGHT BY LEE. ................................................................................ 2
`B. LEE TEACHES DEFINING/DETERMINING USER SEGMENTS BASED ON THE PROFICIENCY
`LEVEL OF THE USER .......................................................................................................... 5
`C. CLAIMS 9 AND 17 ARE MET BY LEE’S DISCLOSURE OF DYNAMIC ADJUSTMENT TO
`DIFFICULTY LEVEL ............................................................................................................ 8
`III. EPSTEIN ANTICIPATES CLAIMS 1-3, 5, 9-12, 14, 16-18, AND 20 ............................ 10
`IV. CONCLUSION .................................................................................................................... 12
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`INTRODUCTION
`Patent Owner’s Response (Paper 14, “POR”) does not legitimately challenge
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`IPR2015-00298
`U.S. Patent No. 8,586,849
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`
`I.
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`the fact that Lee and Epstein teach all of the limitations of the Challenged Claims
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`of the ‘849 Patent. Instead, PO merely argues that a single limitation in each of
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`independent claims 1, 91 and 17 requires the ambiguous concept of “persistent
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`adjustment of difficulty” (as performed by the system) and then argues that the Lee
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`and Epstein references do not teach it. POR at 5. PO’s overly narrow claim
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`interpretation is improper, but, more importantly, Lee and Epstein anticipate the
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`claims even under PO’s interpretation. As set forth below and in the Petition, the
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`Challenged Claims should be canceled.
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`
`
` 1
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` Petitioner notes that in its Claim Construction Brief (Paper 16), it takes the
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`position that claim 9 is indefinite for failing to sufficiently describe structure
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`necessary to perform the functions recited in the means-plus-function limitations.
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`In the event the Board agrees with Petitioner that claim 9 is indefinite, it should be
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`canceled. However, Petitioner continues to address claim 9 in the event that the
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`Board disagrees with Petitioner in this respect. This should not be taken as a
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`concession in any respect as to the strength of Petitioner’s positions relating to the
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`issues raised in the Claim Construction Brief.
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`1
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`II. LEE ANTICIPATES CLAIMS 1-3, 5, 9-12, 14, 16-18, AND 20
`As set forth in the Petition, Lee anticipates the Challenged Claims. Rather
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`than rebut Petitioners’ mappings as to the specific limitations of the claims, as well
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`as the opinions of Dr. Zyda, PO ignores the express teachings of Lee and attempts
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`to read narrowing limitations into the claims in an attempt to avoid prior art. But
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`considering the actual claim limitations and the full disclosure of Lee, it is clear
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`that Lee anticipates the claims – both as set forth in the Petition and under PO’s
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`flawed interpretation. This is true for at least three reasons, as set forth below.
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`A. To
`the Challenged Claims Require
`the Extent
`“Persistent Adjustment of Difficulty,” It Is Taught By
`Lee.
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`PO argues that the Challenged Claims require “persistent adjustment of
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`difficulty,” and that Lee fails to teach this concept. POR at 5-7. Although
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`“persistent” or “persist” are not recited in the claims (and, in fact, appear nowhere
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`in the ‘849 patent specification) , the express disclosures of Lee in addition to the
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`unrebutted expert testimony of Dr. Zyda confirm that Lee teaches what PO
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`characterizes as “persistent adjustment of difficulty.”
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`As recognized by the Board in its Institution Decision (Paper 9 [Inst. Dec.]
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`at 11-12), Lee discloses:
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`[W]hen the user’s performance is evaluated to be positive and/or the
`user’s score or other performance related statistics, etc. exceeds a
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`
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`2
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`threshold value, music instruction system 115 may automatically
`increase the difficulty level of the session.
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`Ex. 1003 at ¶ 161. Not only does Lee teach increasing the difficulty of a session
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`being played, but it also teaches gradually introducing notes to a user from session
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`to session in order to achieve its “stepwise and progressive” music instruction
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`system:
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`[W]hen the difficulty level of a musical piece is set to a low level, the
`user may be required to play only one out of every N musical events,
`where N>1. If that single musical event is played correctly, the user
`may experience the other N-1 notes being played perfectly, by hearing
`the expert performance. In another example, when the difficulty level
`is set to a high level (e.g., an expert level), the user may be required to
`correctly play each of N musical events. …
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`According to such an instructional approach, music instruction system
`115 may allow the user to be introduced to his/her musical instrument
`in a stepwise and progressive manner, which may begin with the user
`playing some musical events of a musical piece and guiding the user
`to ultimately play all of the musical events of the musical piece. In
`this way, an expert proficiency level is not immediately required, and
`the user may gradually become familiar with his/her musical
`instrument, the musical piece, and improve their musical ability. In
`such an approach, music instruction system 115 may provide a highly
`enjoyable learning experience for the user. As the user progresses and
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`
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`3
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`gains skill from session to session, the value of N may be gradually
`reduced to 1.
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`Ex. 1003 at ¶¶ 173-174 (emphasis added). PO admits that iteration is “also known
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`as a performance, song, or session.” POR at 5 (emphasis added). Thus, by PO’s
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`own admission, Lee expressly discloses adjusting difficulty level by gradually
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`increasing the number of notes that a user plays “from session to session” (i.e.,
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`from iteration to iteration).
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`In addition, PO has not challenged Petitioner’s expert’s opinion on this
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`point. Specifically, Dr. Zyda, relying in part on the portions of Lee discussed
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`above, opined that Lee describes a “system [] capable of automatically increasing
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`the difficulty level ‘from session to session,’ where the difficulty level of
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`subsequent sessions is based on the user’s performance in previous sessions.” Ex.
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`1006, Zyda Decl. at ¶29. As such, a skilled artisan would recognize that the
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`system of Lee “would have been capable of automatically selecting a difficulty
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`level at the start of a session based on the user’s performance in a previous
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`session.” Ex. 1006, Zyda Decl. at ¶25; see id. at ¶¶26-30. PO did not cross-
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`examine Mr. Zyda, rebut his testimony or even discuss his opinion in its POR,
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`despite the fact that it is relied upon in the Petition. See Paper 4 [Petition] at 11,
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`22. Therefore, not only does Lee clearly teach increasing difficulty from session to
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`4
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`session, such as through introducing additional notes, but one of skill in the art
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`reading Lee comes to the same conclusion.
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`B. Lee Teaches Defining/Determining User Segments
`Based on the Proficiency Level of the User
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`PO also claims that the “persistent adjustment of difficulty” must be
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`performed by the system, not the user. POR at 7. As described in the preceding
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`section, Lee teaches that the system increases difficulty from session to session.
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`But even so, PO’s overly narrow interpretation is inconsistent with the claims and
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`contrary to the express disclosures of the ‘849 patent specification.
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`First, claims 1 and 9 recite the concepts of determining a proficiency level
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`of the user based on signals received electrically from a guitar played by the user
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`and also defining user segments based on a proficiency level of the user. Ex. 1001,
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`‘849 patent at Claim 1 (“defining [] user segments based on criteria comprising a
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`proficiency level of the user”); Claim 9 (“define [] user segments based upon []
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`criteria including the determined proficiency level of the user”). Further, claim 8
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`(dependent from claim 1) and claim 16 (dependent from claim 9) expressly state:
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`“wherein the proficiency level of the user is user-selectable.” The ‘849 patent
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`discloses that the systems/methods “determine whether adjustment of the segments
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`is warranted based on the detected or user-provided proficiency level of the user.”
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`Id. at 8:32-42 (emphasis added); see also id. at 4:34-41 (“An initial set 32 for use
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`in a particular session may be … determined by the system 10 in accordance with .
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`
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`5
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`. . the proficiency level of the user (as selected by the user or as determined by the
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`system) . . ..”)(emphasis added); 6:60-67. Consistent with the specification, claims
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`1 and 9 must be broad enough to include the limitations of dependent claims 8 and
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`16 respectively. Thus claims 1 and 9 require that a proficiency level be determined
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`by the system (based on received guitar signals), where the claimed defining of
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`user segments may be based on either the detected proficiency level or a user-
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`selectable proficiency level.
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`In this way, Lee also anticipates the claims because Lee discloses that the
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`feedback displayed at completion of a musical piece (i.e., previous iteration), and
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`specifically the “user level,” may assist the user in selecting a difficulty level of a
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`subsequent session (i.e., iteration).
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`User level 1830 may indicate a level of the user based on the scores
`and statistics associated with the user's performance. For example,
`user level 1830 may include a range of levels, such as, novice, skilled,
`advanced, and prodigy. User level 1830 may assist the user in
`selecting a difficulty level for a subsequent session. As previously
`described, the user may select a particular difficulty level for any
`given session.
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`Ex. 1003, Lee at ¶ 183; see also Paper 4 [Petition] at 21, 27. As such, the system
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`determines the “user level” for a previous iteration of a song and recommends that
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`the user play at a corresponding difficulty level for a subsequent iteration of the
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`6
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`song. The system then defines the difficulty level of the subsequent session (e.g.,
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`number of notes that the user will play) based on the user-selected level, which is
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`based on the user’s score or “user level.” Lee’s disclosure of assisted user-
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`selectable difficulty levels constitutes defining user segments based on the
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`determined proficiency level of the user as required by claims 1 and 9.
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`Second, claim 17 requires “determining a number of user segments for a
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`successive iteration … based on … the proficiency level of the user” and
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`separately requires “repeating steps (b) to (e) in accordance with said successive
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`iteration” (i.e., (b) generating audio signals, (c) generating display images “for said
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`defined user segments,” (d) identifying a proficiency level of the user, and (e)
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`again determining a number user segments for a successive iteration). The express
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`limitations of claim 17 are also met by Lee’s disclosure of assisted user-selectable
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`difficulty levels. In particular, Lee’s disclosure of providing feedback upon
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`completion of a musical piece, such as the “user level,” and recommending that the
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`user play at the corresponding difficulty level for a subsequent iteration constitutes
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`“determining a number of user segments for a successive iteration … based on …
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`the proficiency level of the user.” Ex. 1003, Lee at ¶ 183; see also Paper 4
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`[Petition] at 30-31. The user’s selection of the recommended difficulty level causes
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`the system to define the number of user segments, in the successive iteration and,
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`in this way, Lee teaches all of the limitations of claim 17.
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`7
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`U.S. Patent No. 8,586,849
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`C. Claims 9 and 17 are Met by Lee’s Disclosure of
`Dynamic Adjustment to Difficulty Level
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`Finally, despite not taking any formal claim construction positions, PO
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`contends that all claims require “persistent adjustment” of the difficulty level, i.e,
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`that “the number of user segments – as determined by the system during a given
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`iteration (also known as a performance, song, or session) – are carried over and
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`used during successive (also referred to as subsequent) iterations.” POR at 5. Not
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`so. First, claim 9 requires only: “wherein in successive iterations the mode control
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`module determines whether the proficiency level of the user warrants increasing
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`the number of user segments.” Under the broadest reasonable interpretation, claim
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`9 does not require “carrying over” any determination of user segments from one
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`iteration to another.
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`According to PO: “Lee describes … adjusting the difficulty level of the
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`session during the session (dynamic).” POR at 6 (emphasis in original). In
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`particular, Lee discloses a system that can dynamically adjust the difficulty level of
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`a first session or successive session (i.e., iteration) based on whether the user’s
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`performance is evaluated to be positive and/or when the user’s score or other
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`performance related statistics exceed a threshold value:
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`In this example, it may be assumed that user's 105 performance
`exceeded a threshold score value, and music instruction system 115
`automatically increases the difficulty level of the session 1615 from,
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`8
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`IPR2015-00298
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`for example, skilled to difficult. Music instruction system 115 also
`changes visual performance cues from a skilled level to a difficult
`level.
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`Ex. 1003, Lee at ¶ 162; see also id. at ¶ 161 (“[W]hen the user’s performance is
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`evaluated to be extremely negative or below a stoppage threshold value … music
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`instruction system 115 may communicate to the user, that the user [] should begin
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`a new session.”); ¶ 175 (describing “looping” a section of musical piece and
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`practicing the solo of a song); Paper 4 [Petition] at 26-27. Accordingly, if the
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`user’s score exceeds a threshold value in a first or successive iteration of the song,
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`the system automatically increases the number notes/chords of the remaining song
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`that the user will be instructed to play. Dynamically adjusting the difficulty level of
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`a session in this way constitutes in successive iterations determining whether the
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`user’s proficiency level warrants increasing the number of notes the user is
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`required to play. Accordingly, Lee’s disclosure of “dynamic” adjustments to
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`difficulty level satisfies the express limitations of claim 9 and PO’s attempt to
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`import limitations into the claims should be rejected.
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`Second, claim 17 requires that in successive iterations, where steps (b) to (e)
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`are repeated, the displayed images (i.e., the notes/chords that the user is instructed
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`to play) correspond to “said [] defined user segments,” which is antecedent to
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`element (a) of claim 17 alone. Compare step (a) (“defining one or more of said
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`9
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`IPR2015-00298
`U.S. Patent No. 8,586,849
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`musical segments as one or more user segments”) with step (e) (“determining a
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`number of user segments for a successive iteration”). Accordingly, claim 17 also
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`does not require “carrying over” any determination/definition of user segments
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`from one iteration to another. Claim 17 is met where, for example, the system
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`determines the number of user segments for a successive iteration as discussed in
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`Section II.B above. The fact that the difficulty level of Lee’s system may be either
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`“static or dynamic” for a given session is irrelevant and, even where the difficulty
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`level is dynamic, the system “defin[es] [] user segments for a first iteration” and
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`also “determin[es] a number of user segments for a successive iteration” as
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`required by claim 17. Paper 4 [Petition] at 30-31, Ex. 1003, Lee at ¶¶ 106, 161,
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`196-208.
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`As Patent Owner does not raise any other issues with respect to application
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`of Lee to the Challenged Claims, Petitioner respectfully requests that the Board
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`cancel claims 1-3, 5, 9-12, 14, 16-18, and 20.
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`III. EPSTEIN ANTICIPATES CLAIMS 1-3, 5, 9-12, 14, 16-18, AND 20
`Despite PO’s attempts to confuse the issues, the teachings of Epstein could
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`not be clearer. Epstein discloses a game engine that offers “various different
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`levels, each with its own sub-levels and mini-games.” Ex. 1004, Epstein at ¶ 98.
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`Specifically, each sub-level corresponds to a song of a certain level and “[e]ach
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`sub-level [] may have a series of exercises or mini-games” and “a mini-boss level
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`10
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`[] in which a user is required to play a song fully.” Id. at ¶ 97; see also id. at ¶ 57,
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`Fig. 16, Paper 4 [Petition] at 38. In this context, Epstein discloses the mini-game
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`“Notes in a row” where “[i]f a user can play a certain number of ‘notes in a row’
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`they will pass or win the mini-game.” Ex. 1004, Epstein at ¶ 105, Paper 4 [Petition]
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`at 38. If the user passes, the mini-game “‘Notes in a row’ may increase in
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`difficulty in the various levels by … increasing the number of notes that must be
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`played without making a mistake.” Id. In other words, a player only advances to
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`the next level of the song’s mini-game when the user plays the specified number of
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`notes without making a mistake. Thus, Epstein teaches that if the user passes a
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`first level of the song’s mini-game (i.e., iteration) by playing all of the notes in a
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`row, the user can play a subsequent level that has more notes than the previous
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`level. This is “persistent adjustment of difficulty” in PO’s terminology.
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`PO attempts to impose a temporal limitation on the claim limitations by
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`suggesting that the mini-games of Epstein “are not consecutive or subsequent
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`levels of the mini-games.” POR at 8. To the contrary, Epstein expressly discloses
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`that mini-game levels can be played in consecutive or subsequent order (i.e., in an
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`order
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`that
`
`increases
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`the number of notes played by
`
`the user
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`in
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`subsequent/successive levels). Ex. 1004, Epstein at ¶ 116 (“After the user
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`completes all of the mini-games in a sub-level, the user can complete the sub-level
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`11
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`mini-boss or sub-level boss games. The boss games may require the user to [] play
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`an entire song correctly.”) (Emphasis added).
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`Ex. 1004, Epstein at Fig. 17; see also id. at ¶ 57 (“After the user plays a mini-
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`game, the user may play another game . . ..”), ¶ 99.
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`Additionally, contrary to PO’s assertion, there is no requirement in the claim
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`that the subsequent/successive iteration must be “consecutive” to a previous
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`iteration. Rather, an iteration just needs to be after or “subsequent” to another
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`iteration.
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`As Patent Owner does not raise any other issues with respect to application
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`of Epstein to the Challenged Claims, Petitioner respectfully requests that the Board
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`cancel claims 1-3, 5, 9-12, 14, 16-18, and 20.
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`IV. CONCLUSION
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`Based on the foregoing, the Board should cancel claims 1-3, 5, 9-12, 14, 16-
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`18, and 20 of the ‘849 Patent as anticipated by both Lee and Epstein.
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`
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`Date: September 22, 2015
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /Eric A. Buresh
`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`ATTORNEYS FOR PETITIONER
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`13
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`IPR2015-00298
`U.S. Patent No. 8,586,849
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(a)
`
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`that on September 22, 2015, a complete and entire copy of Petitioner’s Reply was
`served by electronic mail to Counsel for Patent Owner at the e-mail addresses
`identified below:
`
`
`Rick Barnes
`Luedeka Neely Group, P.C.
`P.O. Box 1871
`1871 Riverview Tower
`Knoxville, TN 37901
`rick@Luedeka.com
`
`
`
`
`Michael Bradford
`Luedeka Neely Group, P.C.
`P.O. Box 1871
`1871 Riverview Tower
`Knoxville, TN 37901
`mbradford@luedeka.com
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`Respectfully submitted,
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`BY:
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`ERISE IP, P.A.
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` /Eric A. Buresh/
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`ATTORNEYS FOR PETITIONER
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