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Inter Partes Review of U.S. Pat. 5,513,129

Docket IPR2014-00635, Patent Trial and Appeal Board (Apr. 15, 2014)
Benjamin Wood, Beth Shaw, Michelle Osinski, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
5513129
Petitioner Ubisoft Entertainment SA
Patent Owner Princeton Digital Image Corporation
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24 Final Decision: Final Written Decision

Document IPR2014-00635, No. 24 Final Decision - Final Written Decision (P.T.A.B. Oct. 16, 2015)
As the Federal Circuit has noted, “the specification is always highly relevant to the claim construction analysis,” and, in fact, “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal citation and quotation marks omitted).
Neither Patent Owner nor Dr. Kesan explains why generating and displaying messages to a user based on the comparison of stored music data and the user’s actual voice does not constitute ”operating the computer system in response to said prerecorded control track,” as recited in claim 10.
Finally, Patent Owner argues that Lytle does not disclose structure corresponding to the function recited in the “means for producing a virtual environment in response to the prerecorded control track” limitation of claim 16.
In any event, we agree with Petitioner that Lytle does disclose corresponding structure, i.e., a supercomputer programmed to read the MIDI files and create, move, and modify the virtual musical instruments accordingly.
Petitioner also contends that Adachi teaches an apparatus for extracting information from the music signal for modification of objects in a virtual environment, relying on essentially the same disclosure as for the required structure of the “supplying” means-plus- function limitation of claim 12.
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23 Notice: Record of Oral Hearing

Document IPR2014-00635, No. 23 Notice - Record of Oral Hearing (P.T.A.B. Jul. 7, 2015)
I mean, you're looking at things and I think the specific reference for Thalmann is, you know, you're seeing characters on the screens and their faces are moving with the words that are coming out of their mouth as if you were talking to them or listening to them, I guess would be the more appropriate way to characterize that.
Patent Owner I understand their argument to be that Lytle in order to meet the claim limitations would be to disclose a sound processor, a tape IF converter, audio source, digitizer, etcetera.
And for the reasons I just went through, we think it does and we don't think the Board should change its position because Lytle has these aspects of depth and sound and reflection that are meant to draw the user into the scene and make them feel like they're a part of it Case IPR2014-00635 Patent 5,513,129 as if they were banging the mallets on the xylophone or the marimba or whatever may be in there.
Case IPR2014-00635 Patent 5,513,129 They have a system that has musically-driven objects and I would note that in one of the references that was asserted in one of these other IPRs, it explicitly indicates that the Intel's former chairman, Gordon Moore, complimented the inventor, Mark Bolas, as a virtual reality trailblazer.
If you were to assume that we did not adopt your proposal with respect Case IPR2014-00635 Patent 5,513,129 to the construction of means for supplying a first signal to include the tape IF converter, digitizer, etcetera, does Lytle disclose the elements for Claim 12?
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22 Order: Order Granting Request for Oral Hearing 37 CFR 4270

Document IPR2014-00635, No. 22 Order - Order Granting Request for Oral Hearing 37 CFR 4270 (P.T.A.B. May. 18, 2015)
The hearing will commence at 10:00 AM Eastern Time on May 22, 2015, and will be open to the public for in-person attendance on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
If the parties have any concern about disclosing confidential information, they are to contact the Board in advance of the hearing to discuss the matter.
The parties may refer to CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB October 23, 2013) (Paper 118), and St. Jude Medical, Cardiology
At least one judge will be participating remotely via a videoconferencing device and will not be able to view the projection screen in the hearing room.
The parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit by slide or screen number to ensure the clarity and accuracy of the transcript.
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12 Order: Order Conduct of the Proceeding

Document IPR2014-00635, No. 12 Order - Order Conduct of the Proceeding (P.T.A.B. Nov. 20, 2014)
Introduction An initial conference call was held on November 13, 2014, and attended by the above-identified panel members and respective counsel for the parties.
Petitioner added that Patent Owner recently moved to lift a stay pending inter partes review that was previously granted in Princeton Digital Image Corp. v. Ubisoft Entertainment SA, Case No. 1:13-cv-00335-LPS-CJB (D.
We instruct the parties to inform us should any settlement discussions occur that may result in a change in the status of this case.
Although Patent Owner may file one motion to amend claims by cancelling or substituting claims without prior Board authorization, Patent Owner must confer with the Board before filing a motion to amend.
Should a party discover that certain potentially confidential materials are required for its case, the party is encouraged to seek a conference with the Board to discuss a possible protective order prior to filing a motion to seal.
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9 Institution Decision: Decision Institution of Inter Partes Review

Document IPR2014-00635, No. 9 Institution Decision - Decision Institution of Inter Partes Review (P.T.A.B. Oct. 17, 2014)
2 Wayne T. Lytle, Driving Computer Graphics Animation from a Musical Score, SCIENTIFIC EXCELLENCE IN SUPERCOMPUTING, THE IBM 1990 CONTEST PRIZE PAPERS 643–86 (Keith R. Billingsley et al. ed., 1992) (“Lytle,” Ex. 1003).
As we stated in IPR2014-00155, the ’129 patent sufficiently sets forth the meaning of “virtual reality computer system,” in light of the explanation of “virtual environment” (see Harmonix Music Sys., Inc. v. Princeton Digital Image Corp., Case IPR2014-00155, Paper 11, 8 (PTAB May 9, 2014)), and we adopt the parties’ proposed construction for purposes of this Decision.
Claim 5, however, does not require that a single machine handle music input and graphic applications, and Petitioner’s references to a system that combines audio and video in its anticipation challenge is persuasive on the current record.
Patent Owner explains that “once the timer starts, the graphics are displayed irrespective of the audio content.” Id. We are persuaded by Patent Owner’s argument that Williams discloses control information that corresponds to time, position, or location, rather than to an audio or music signal because Williams determines the locations in a sound recording where predetermined actions are to be displayed and then associates actions with the time
Patent Owner’s argument that the combination fails to teach or suggest the limitations relating to a virtual environment (Prelim. Resp. 38–41) is not persuasive for the same reasons as described above in connection with the challenge based on anticipation by Lytle.
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10 Order: Scheduling Order

Document IPR2014-00635, No. 10 Order - Scheduling Order (P.T.A.B. Oct. 17, 2014)
A notice of the stipulation, specifically identifying the changed due dates, must be promptly filed.
The parties are reminded that the Testimony Guidelines appended to the Office Patent Trial Practice Guide, 77 Fed.Reg.
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
The parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance in preparing for the initial conference call, and should be prepared to discuss any proposed changes to this Scheduling Order and any motions the parties anticipate filing during the trial.
The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend by DUE DATE 2.
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4 Notice of Filing Date Accorded to Petition: Notice of Fililng Date Accorded to Petition

Document IPR2014-00635, No. 4 Notice of Filing Date Accorded to Petition - Notice of Fililng Date Accorded to Petition (P.T.A.B. Apr. 23, 2014)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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