Harmonix Music Systems, Inc.v.Princeton Digital Image Corporation

Patent Trial and Appeal Board

Jun 2, 2015

08091650 (P.T.A.B. Jun. 2, 2015)

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Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: June 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
HARMONIX MUSIC SYSTEMS, INC. AND
KONAMI DIGITAL ENTERTAINMENT INC.,
Petitioner

v.

PRINCETON DIGITAL IMAGE CORPORATION
Patent Owner
_______________

Case IPR2015-00271
Patent 5,513,129
_______________

Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
TRENTON A. WARD, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 5,513,129

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I. INTRODUCTION
A. Background
Harmonix Music Systems, Inc. and Konami Digital Entertainment Inc.
(collectively “Petitioner”) filed a Petition for Inter Partes Review (Paper 1) of
claims 1–23 of U.S. Patent No. 5,513,129 (Ex. 1001, “the ’129 patent”), and
concurrently filed a Motion for Joinder (Paper 5, “Mot.”) with Case IPR2014-
00635. Petitioner filed a Corrected Petition (Paper 11, “Pet.”), and Patent Owner
filed a Preliminary Response (Paper 13, “Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. §§ 314 and/or 315. For the reasons that follow, the Board has
determined not to institute an inter partes review.1
B. Related Proceedings
1. Case IPR2014-00155
On November 15, 2013, Petitioner Harmonix Music Systems, Inc. filed a
petition to institute inter partes review of claims 1, 5, 6, 8–13, 15–19, and 21–23 of
the ’129 patent, asserting three grounds of unpatentability. IPR2014-00155,
Paper 4. On May 9, 2014, the Board granted the petition and instituted an inter
partes review of the ’129 patent on the following grounds: (i) Claims 10, 11, 22,
and 23 under 35 U.S.C. § 102(b) as anticipated by Pocock-Williams;2 and
(ii) Claims 10, 11, 22, and 23 under 35 U.S.C. § 102(b) as anticipated by
Fallacaro.3 IPR2014-00155, Paper 11, 22. An oral hearing was held on
January 15, 2015, and a Final Written Decision was entered on May 6, 2015 in

1 In a decision entered concurrently, Petitioner’s Motion for Joinder with
Case IPR2014-00635 is denied.
2 Lynn Pocock-Williams, Toward the Automatic Generation of Visual Music,
25 LEONARDO 29–36 (1992) (“Pocock-Williams”).
3 Fallacaro et al., US 4,771,344 (issued Sept. 13, 1988) (“Fallacaro”).
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which claims 10, 11, 22, and 23 of the ’129 patent were determined to have been
shown by a preponderance of the evidence to be unpatentable. IPR2014-00155,
Papers 25, 26.
2. Case IPR2014-00635
On April 15, 2014, Ubisoft Entertainment SA filed a petition to institute
inter partes review of claims 1–23 of the ’129 patent, asserting seven grounds of
unpatentability. IPR2014-00635, Paper 3. On October 17, 2014, the Board
granted the petition and instituted an inter partes review of the ’129 patent on the
following grounds:
(i) Claims 10 and 11 under 35 U.S.C. § 102(b) as anticipated by Tsumura;4
(ii) Claims 5–7, 9–12, 16–18, 22, and 23 under 35 U.S.C. § 102(b) as
anticipated by Lytle;5
(iii) Claims 1, 12, 13, 15, and 21 under 35 U.S.C. § 102(b) as anticipated by
Adachi;6
(iv) Claims 1, 8, 12, 13, 15, and 21 under 35 U.S.C. § 103(a) would have
been obvious over Lytle and Adachi; and
(v) Claims 1–4, 12, 13, 15, and 21 under 35 U.S.C. § 103(a) would have
been obvious over Thalmann7 and Williams.8

4 Tsumura et al., US 5,208,413 (iss. May 4, 1993) (Ex. 1002, “Tsumura”)
5 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) (Ex. 1003, “Lytle”).
6 Adachi et al., US 5,048,390 (iss. Sept. 17, 1991) (Ex. 1004, “Adachi”).
7 Daniel Thalmann, Using Virtual Reality Techniques in the Animation Process,
PROC. VIRTUAL REALITY SYSTEMS, BRITISH COMPUTER SOCIETY 1–20 (1992) (Ex.
1006, “Thalmann”).
8 Williams et al., US 5,430,835 (iss. July 4, 1995) (Ex. 1005, “Williams”)
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IPR2014-00635, Paper 9, 24–25. On October 17, 2014, the Board entered a
Scheduling Order setting various due dates for the trial, including an Oral Hearing
that occurred on May 22, 2015. IPR2014-00635, Paper 10.
3. District Court Proceedings
The parties represent that the ’129 patent is (or was) involved in the
following district court proceedings: (i) Princeton Digital Image Corp. v.
Harmonix Music Sys., Inc., No. 1:12-cv-01461 (D. Del.); (ii) Princeton Digital
Image Corp. v. Ubisoft Entm’t SA, No. 1:13-cv-00335 (D. Del.); and (iii) Princeton
Digital Image Corp. v. Activision Publ’g Inc., No. 2:12-cv-01134 (C.D. Cal.),
dismissed. Pet. 55; Paper 7, 1–2.
C. The ’129 Patent (Ex. 1001)
The ’129 patent relates to a computer system and methods for controlling a
computer system, that utilize audio signals. Ex. 1001, 29:1–64, 29:65–30:65. A
component of the computer system referred to as an “Acoustic Etch,” can retrieve
music (in electronic, acoustic, or optical form) and process it to generate control
signals that are used by the computer system. Id. at 4:54–59, 63–67. For example,
the Acoustic Etch can “extract a rhythm signal indicative of the beat of some
frequency band of the music . . . or of some other parameter of a frequency band of
the music.” Id. at 5:4–7. Control signals are generated therefrom to control the
rhythm of a moving virtual object. Id. at 5:7–10.
The Acoustic Etch also can supply prerecorded control tracks or generate
control signals from prerecorded control tracks. Id. at 5:11–17. “The control
tracks can be generated automatically (e.g., by electronic signal processing
circuitry) in response to a music signal and then recorded, or can be generated in
response to manually asserted commands from a person (while the person listens to
such music signal) and then recorded.” Id. at 5:21–26.
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Figure 2 of the ’129 patent is reproduced below:

Figure 2, above, depicts a diagram of an exemplary computer system in
which a control track is recorded on, and played back from, first medium 1A, e.g.,
a video game cartridge, and a corresponding music signal is recorded on, and
played back from, second medium 1, e.g., a compact disk. Id. at 8:58–65. Analog-
to-digital conversion circuit 4 within Acoustic Etch 3' receives and digitizes the
control track from first medium 1A and the music signal from second medium 1.
Id. at 8:33–35. Analyzer 5 within Acoustic Etch 3' receives the digitized output
and generates control signals by processing the control track and music signal, and
outputs the control signals through interface 6 to VR9 processor 7. Id. at 8:38–42.
VR processor 7 “is a computer programmed with software for implementing a
virtual environment” and “can cause image data representing a virtual environment
to be displayed on display device 8.” Id. at 8:1–4. VR processor 7 uses the control
signals to control generation of the virtual environment. Id. at 8:41–44.
D. Illustrative Claims
Claims 1, 10, 16, and 22 are illustrative of the claimed subject matter and are
reproduced below.

9 VR denotes “virtual reality,” “virtual environment,” or “virtual world.”
Ex. 1001, 1:20–33.
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1. A method for controlling production of a virtual environment by a
virtual reality computer system, including the steps of:
(a) processing music signals to generate control signals having
music and/or control information; and
(b) operating the virtual reality computer system in response to
the control signals to generate said virtual environment.

10. A method for controlling a computer system, including the steps
of:
(a) prerecording a control track having audio and/or control
information corresponding to an audio signal; and
(b) operating the computer system in response to said
prerecorded control track.

16. A virtual reality computer system for producing a virtual
environment, including:
means for prerecording a control track having music and/or
control information corresponding to a music signal; and
means for producing the virtual environment in response to said
prerecorded control track.

22. A computer system, including:
means for prerecording a control track having audio and/or
control information corresponding to an audio signal; and
a processor which receives the control track and which is
programmed with software for operating the computer system in
response to said control track.

E. The Asserted Grounds of Unpatentability
The information presented in the Petition sets forth Petitioner’s contentions
of unpatentability of claims 1–23 of the ’129 patent based on the following specific
grounds.
Claims challenged Basis Reference(s)
10, 11 § 102(b) Tsumura
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Claims challenged Basis Reference(s)
5–7, 9–12, 16–20, 22, 23 § 102(b) Lytle
1, 12, 13, 15, 21 § 102(b) Adachi
1, 8, 12, 13, 15, 21 § 103(a) Lytle and Adachi
1–4, 12, 13, 15, 21 § 103(a) Thalmann and Williams
5–7, 14, 16–20 § 103(a) Adachi and Tsumura
II. DISCUSSION
In determining whether to institute an inter partes review, the Board may
“deny some or all grounds for unpatentability for some or all of the challenged
claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a).
The Petition was filed on November 17, 2014, more than one year after
Petitioner Harmonix Music Systems, Inc. was served with a complaint alleging
infringement of the ’129 patent.10 In such circumstances, an inter partes review
ordinarily may not be instituted. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
An exception to this one-year time bar exists in the case of a request for joinder
that is filed within one month of institution of the proceeding sought to be joined.
See 35 U.S.C. § 315(b) (final sentence); 37 C.F.R. § 42.122(b). IPR 2014-00635
was instituted on October 17, 2014, and Petitioner filed its Motion for Joinder on
November 17, 2014. We may only consider the Petition of Harmonix Music
Systems, Inc. under 35 U.S.C. § 315(c) because absent joinder of this proceeding,

10 Petitioner Harmonix Music Systems, Inc. was served with the relevant
complaint on November 16, 2012. IPR2014-00155, Paper 11 (Decision on
Institution), 2. Petitioner Konami Digital Entertainment Inc. was added as a party
on December 10, 2012. Mot. 5.
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its Petition would otherwise be subject to the one-year time bar under 35 U.S.C.
§ 315(b).
Upon consideration of Petitioner’s Motion for Joinder and the Opposition
filed by Patent Owner, the Board in a separate decision denies the Motion for
Joinder. As explained in that Decision, the Petitioner introduces a new challenge
to claims 19 and 20 based on Lytle and a new challenge to claims 5–7, 14, 16–20
based on Adachi and Tsumura. Petitioner, among other things, has not presented
persuasive argument or evidence to explain why the new challenges asserted in the
Petition could not have been asserted in its previous Petition in Case IPR2014-
00155. Additionally, Petitioner has not shown that joinder would promote efficient
resolution of the unpatentability issues without substantially affecting the schedule
for Case IPR2014-00635.
Therefore, based on the record before us, and exercising our discretion under
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b), we decline to institute an inter
partes review in the instant proceeding.
III. ORDER
For the reasons given, it is
ORDERED that the Petition is denied as to all challenged claims of the
’129 patent.
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FOR PETITIONER:

Linda Jean Thayer
Rachel L. Emsley
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
linda.thayer@finnegan.com
rachel.emsley@finnegan.com

Kenneth X. Xie
MORRISON & FORESTER LLP
kxie@mofo.com

FOR PATENT OWNER:

Dr. Gregory J. Gonsalves
gonsalves@gonsalveslawfirm.com

Robert R. Axenfeld
O’KELLY ERNST & BIELLI, LLC
raxenfeld@oeblegal.com