UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TENNESSEE
`WESTERN DIVISION
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`GUITAR APPRENTICE, INC.
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`Plaintiff,
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`vs.
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`UBISOFT, INC.
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`Defendant.
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`No.: __________________
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`Judge _________________
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`JURY TRIAL DEMANDED
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`Plaintiff Guitar Apprentice, Inc. (“Guitar Apprentice”) files this Complaint for patent
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`COMPLAINT
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`infringement and injunction against Ubisoft, Inc. (“Ubisoft”), stating as follows:
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`THE PARTIES
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`1.
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`Guitar Apprentice is a corporation organized and existing under the laws of the
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`State of Delaware, having its principal place of business at 2510 Franklin Pike, 2nd Floor,
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`Nashville, Tennessee 37204.
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`2.
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`Upon information and belief, Ubisoft, Inc. is a corporation organized and existing
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`under the laws of the state of California with its principal place of business at 625 Third Street,
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`3rd Floor, San Francisco, California 94107. Upon information and belief, process may be served
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`on Ubisoft, Inc. by serving its registered agent at 625 Third Street, 3rd Floor, San Francisco,
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`California 94107.
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`JURISDICTION AND VENUE
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`3.
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`This Complaint for patent infringement arises under the patent laws of the United
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`Petitioners Ex. 1011 Page 1
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`States, Title 35, United States Code, and this Court has jurisdiction over those claims pursuant to
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`28 U.S.C. § 1338, which directs that district courts shall have original jurisdiction of any civil
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`action arising under any Act of Congress relating to patents, and pursuant to 28 U.S.C. § 1331,
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`which grants jurisdiction to district courts over all civil actions arising under the Constitution or
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`laws of the United States. In the alternative, this Court has jurisdiction pursuant to 28 U.S.C.
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`1332 because the matter in controversy exceeds $75,000 and involves parties residing in
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`different states.
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`4.
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`This Court has personal jurisdiction over Ubisoft as Ubisoft has purposefully
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`directed its activities at residents of this state, and the claim arises out of or relates to those
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`activities. Among other activities, Ubisoft offers the infringing product at Walmart® stores
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`throughout this District.
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`5.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400 because a
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`substantial part of the events giving rise to this patent infringement action occurred in this
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`judicial district, and Ubisoft is committing and will continue to commit acts of infringement in
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`this judicial district.
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`FACTUAL BACKGROUND
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`Guitar Apprentice’s Patented Technology
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`6.
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`On November 19, 2013, United States Patent Number 8,586,849 (“the ’849
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`Patent”) was duly and legally issued to the applicant/inventor L. Gabriel Smith by the United
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`States Patent and Trademark Office based on Application Number 13/553,310. A true and
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`correct copy of the ’849 Patent is attached as Exhibit A to the Complaint.
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`7.
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`The application for the ’849 Patent is a continuation of Parent Number
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`13/351,345, filed on January 17, 2012, which is a continuation of Parent Number 12/902,577,
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`Petitioners Ex. 1011 Page 2
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`filed on October 12, 2010, which claims priority from Provisional Application 61/360,002, filed
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`on June 30, 2010.
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`8.
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`By an assignment from L. Gabriel Smith to Guitar Apprentice, Guitar Apprentice
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`currently owns and holds all right, title, and interest in and to the ’849 Patent.
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`9.
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`10.
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`The ’849 Patent is valid and enforceable.
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`The ’849 Patent is entitled “Media System and Method of Progressive Instruction
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`in the Playing of a Guitar Based on User Proficiency.” The ’849 Patent discloses and claims
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`systems and methods related to musical instruction.
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`11.
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`The technology disclosed by the various embodiments of the ’849 Patent provide
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`for a progressive musical instruction system and method whereby display images corresponding
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`to a musical performance (e.g., a song) prompt a user to play a guitar during defined segments
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`(e.g., notes or chords) within a musical performance, and the user learns to play the musical
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`instrument by playing a gradually increasing number of segments within the musical
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`performance.
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`12.
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`Additionally, as a user successfully performs segments of a musical performance,
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`the method and/or system as disclosed in the ’849 Patent can respond and provide for an increase
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`in the number of segments to be played by the user.
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`13.
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`An embodiment of the ’849 Patent can include a media system that uses a video
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`game console and game disc (e.g., PlayStation® 3 and Blu-ray DiscTM) with software that directs
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`audio signals of a musical performance containing at least one guitar, at least one segment in
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`which the user is instructed to play, and segments that contain at least one note or chord.
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`14.
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`The system of the ’849 Patent described in the preceding paragraphs can include
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`the generation of display images that correspond one or more notes or chords of the musical
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`Petitioners Ex. 1011 Page 3
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`performance; the display images can provide instruction to the user by graphically representing
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`which guitar strings and frets are to be engaged by the user and can prompt the user to play the
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`associated notes or chords during the segments to be played by the user.
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`15.
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`Additionally, the system of the ’849 Patent described in the preceding paragraphs
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`can increase the number of segments the user is to play in subsequent iterations of the musical
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`performance based on the proficiency level of the user, wherein the system determines the
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`proficiency level in accordance with signals received electrically from the guitar played by the
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`user in relation to display images generated during segments that prompted the user to play in a
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`previous iteration of the musical performance.
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`Ubisoft’s Infringing Product
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`16.
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`Ubisoft is distributing and will continue to distribute, sell and/or offer to sell
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`products that infringe Guitar Apprentice’s ’849 Patent.
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`17.
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`Upon information and belief, the infringing products include the RocksmithTM
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`game (“Rocksmith”) and the Rocksmith® 2014 game (“Rocksmith 2014”) in all versions,
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`including all released and unreleased versions (individually or collectively “the Rocksmith
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`game”). See Screenshot of Rocksmith Website under “Order Now” Menu, hereinafter
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`“Exhibit B,” (listing Rocksmith, Rocksmith Guitar and Bass, and Rocksmith 2014 as separate
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`products).
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`18.
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`The Rocksmith game is available on the PlayStation® 3 and the Xbox 360®
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`video game consoles as well as on the PC. See Exhibit B.1
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`19.
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`Ubisoft advertised and continues to advertise the Rocksmith game for commercial
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`use on the Rocksmith website. See Exhibit B.
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`1 All screenshots from the Rocksmith website represent how the website appeared on June 24,
`2013.
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`Petitioners Ex. 1011 Page 4
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`20.
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`Ubisoft’s advertisements include touting the game as the “fastest way to learn
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`guitar” and describes Rocksmith as a progressive instruction for playing guitar. See Screenshot
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`from Rocksmith Website under “Why It Works” Menu, hereinafter “Exhibit H,” (explaining that
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`the Rocksmith game becomes “your personal teacher as [Rocksmith] monitors how you play,
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`dynamically adjust the difficulty to your skill level, then slowly introduces more notes and
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`phrases until you’re playing your favorite songs note-for-note”).
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`21.
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`Ubisoft distributed and sold and continues to distribute and sell the Rocksmith
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`game to retail stores for third parties to buy and play the Rocksmith game. See Exhibit B.
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`22.
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`The Rocksmith game allows a user to plug a guitar into the PlayStation® 3, Xbox
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`360®, or the PC. See Exhibit C, Screenshot from Rocksmith Website of “Rocksmith Real Tone
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`Cable”, and Exhibit D, Screenshot from Rocksmith Website Showing the Connection of the
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`User’s Guitar to a PlayStation® 3.
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`23.
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`The Rocksmith game has multiple musical performances, all of which contain at
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`least one guitar, at least one segment in which the user is instructed to play, and at least one note
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`or chord in a segment the user is instructed to play.
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`24.
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`The Rocksmith game provides musical instruction through the use of display
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`images that prompt a user to play notes or chords corresponding to a musical performance. See
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`Exhibit E, Screenshot of Rocksmith Gameplay – Notes and Chords. 2
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`25.
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`The display images prompting the user to play notes or chords in the Rocksmith
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`game are graphical representations of which guitar strings and which frets are to be engaged by
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`the user and prompt the user to play during the corresponding segment. See Exhibit F, Transcript
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`2 All screenshots from Rocksmith depict actual gameplay from a legally purchased
`PlayStation® 3 version of Rocksmith. All screenshots from Rocksmith 2014 depict actual
`gameplay from a legally purchased Xbox 360® version of Rocksmith 2014.
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`Petitioners Ex. 1011 Page 5
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`and Associated Screenshots from Rocksmith Gameplay – Initial Instruction Video.
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`26.
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`The Rocksmith game compares the electric signal of the user’s guitar in relation
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`to the notes or chords the user is prompted to play and uses this comparison to formulate a
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`proficiency level of the user. Exhibit G, Forum Post by “Rocksmith Game Designer” Explaining
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`a Proficiency Determination (“The expected time the system is looking for your note to be
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`played is based on when the game expects the visual notehead to reach the ‘on screen’ strings,
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`and then adjusted by the lag correction.”)
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`27.
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`The Rocksmith game provides progressive musical instruction based on the user’s
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`proficiency level, which can allow a user to progress from single notes to complex chords and
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`can also increase the number of segments to be played by the user in a musical performance
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`upon the successful completion of previous notes. See Exhibit H (explaining that Rocksmith
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`“. . . dynamically adjusts the difficulty to your skill level, then slowly introduces more notes and
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`phrases . . .”); see also Exhibit I, Excerpts from the Rocksmith User Manual for the
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`PlayStation® 3, and Exhibit J, Screenshots of Rocksmith Gameplay – Demonstrating One
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`Portion of a Musical Performance and the Possible Segments Prompting the User to Play.
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`COUNT I – PATENT INFRINGEMENT OF THE ’849 PATENT
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`28.
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`Guitar Apprentice hereby re-alleges and incorporates by reference the allegations
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`of paragraphs 1 through 27 of this Complaint.
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`29.
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`Upon information and belief, Ubisoft is directly infringing and will continue to
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`directly infringe one or more claims of the ’849 Patent under 35 U.S.C. § 271(a) by making,
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`using, importing, offering for sale, and/or selling products that practice the claims of the ’849
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`Patent, including but not limited to the Rocksmith game.
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`30.
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`Alternatively, Ubisoft’s infringing activities constitute direct infringement under
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`Petitioners Ex. 1011 Page 6
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`the doctrine of equivalents under 35 U.S.C. § 271(a).
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`31.
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`Upon information and belief, Ubisoft is indirectly infringing and will continue to
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`indirectly infringe the ’849 Patent under 35 U.S.C. § 271(b) by actively inducing users to
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`infringe the ’849 Patent.
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`32.
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`Upon information and belief, the users of Ubisoft’s Rocksmith game are directly
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`infringing the ’849 Patent by performing in the United States each step of the methods of one or
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`more claims of Guitar Apprentice’s ’849 Patent.
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`33.
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`Upon information and belief, Ubisoft will upon obtaining knowledge of the ’849
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`Patent, and with the intent to induce infringement, actively induce users of the Rocksmith game
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`to directly infringe one or more of the method claims of the ’849 Patent
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`34.
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`Upon information and belief, Ubisoft is further indirectly infringing the ’849
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`Patent under 35 U.S.C. § 271(c) by knowingly offering to sell or selling the Rocksmith game that
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`is especially made or especially adapted for use as claimed in the ’849 Patent, the game not being
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`a staple article or commodity of commerce suitable for substantial non-infringing uses.
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`35.
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`Upon information and belief, Ubisoft will continue to contributorily infringe the
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`’849 Patent unless enjoined by this Court.
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`36.
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`Alternatively, Ubisoft’s infringing activities constitute indirect infringement under
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`the doctrine of equivalents under 35 U.S.C. §§ 271(b) and 271 (c).
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`37.
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`Ubisoft’s making, using, offering for sale, and/or selling of the Rocksmith game
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`is without consent, authority, or license from Guitar Apprentice.
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`38.
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`Ubisoft will continue literally or under the doctrine of equivalents, to directly
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`infringe, induce others to infringe, or contribute to the infringement of one or more claims of the
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`’849 Patent unless enjoined by this Court.
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`Petitioners Ex. 1011 Page 7
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`39.
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`Ubisoft is and will continue to profit from its infringement of the ’849 Patent, and
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`Guitar Apprentice is and will continue to suffer damages for which it is entitled to relief under 35
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`U.S.C. § 284.
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`40.
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`Unless the future occurrence of Ubisoft’s actions is enjoined, Guitar Apprentice
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`will suffer irreparable injury for which there is no adequate remedy at law.
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`PRAYER FOR RELIEF
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`WHEREFORE, Guitar Apprentice respectfully prays for the following relief:
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`A.
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`That Ubisoft and all of its subsidiaries, affiliates, officers, agents, servants,
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`employees, attorneys, and their heirs, successors, and assigns, and all persons
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`acting in concert or participation with it and each of them, be immediately
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`enjoined and restrained, preliminarily and permanently, without bond, from
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`manufacturing, importing, distributing, selling, or offering for sale products
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`manufactured that directly and/or indirectly infringe (literally or under the
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`B.
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`C.
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`doctrine of equivalents) U.S. Patent No. 8,586,849;
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`A determination that the ’849 Patent is valid;
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`A determination that Ubisoft has infringed and is infringing one or more claims of
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`the ’849 Patent;
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`D.
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`An award of damages suffered by Guitar Apprentice as a result of the conduct of
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`Ubisoft complained of herein, including but not limited to damages for patent
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`infringement pursuant to 35 U.S.C. § 284 in an amount to be determined at trial,
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`but in no event less than a reasonable royalty for infringement of the ’849 Patent;
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`E.
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`Prejudgment and post-judgment interest; and
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`H.
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`Such other, further, or different relief as this Court may deem just and proper.
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`Petitioners Ex. 1011 Page 8
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`DEMAND FOR JURY TRIAL
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`Guitar Apprentice, under Rule 38 of the Federal Rules of Civil Procedure, respectfully
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`demands a trial by jury of any issues triable of right by a jury.
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`RESPECTFULLY SUBMITTED, this the 19th day of November, 2013.
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`Respectfully submitted,
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` /s/ John F. Triggs
`John F. Triggs (0026718)
`Ryan D. Levy (0024568)
`WADDEY & PATTERSON P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`T: 615-242-2400
`F: 615-242-2221
`jft@iplawgroup.com
`rdl@iplawgroup.com
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`Amy Pepke (018174)
`BUTLER SNOW LLP
`6075 Poplar Avenue, Suite 500
`Memphis, TN 38119
`T: (901) 680-7324
`F: (901) 680-7201
`amy.pepke@butlersnow.com
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`Attorneys for Plaintiff Guitar Apprentice, Inc.
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`Petitioners Ex. 1011 Page 9
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