PRINCETON DIGITAL IMAGE v. UBISOFT ENTERTAINMENT SA
Oral Argument — 11/06/2020 · Case 20-1204 · 22:09
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Judge Dyk
Number 20-1204, Princeton Digital Image versus Ubisoft Entertainment S.A., Mr. McDevitt.
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Appellant Attorney (Jonas R. Mcdavit)
Thank you, Your Honor.
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It may please the court.
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This appeal concerns two district court errors.
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First, the district court impermissibly resolved a factual dispute between the parties.
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Specifically, the court determined that the creation of a control track using beat maps,
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maps that are indisputably derived from music, is the same thing as denoting a time, position, or location.
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The district court concluded that on its own, and despite expert and technical evidence to the contrary,
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evidence that Ubisoft does not address in its opposition.
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Second, the district court applied a disclaimer that is not tethered to the actual distinctions Princeton Digital made to the patent office.
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Instead, at summary judgment, the court interpreted the claims in view of the accusation,
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and revised the so-called disclaimer in view of the accused products.
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That's not correct.
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Any use of disclaimer must be based on the actual statements made to the patent office, not the accused products.
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Vitamix versus Basic holding a case on all fours with this case involves the same problem.
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This court concluded that it was error for the district court to ignore the actual distinction made by the patentee,
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and it was error for the district court to apply a disclaimer.
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The court concluded that it was error for the district court to ignore the actual distinction made by the patentee,
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and it was error for the district court to apply a disclaimer that expands the scope of disclaimer beyond the distinction actually made by the patentee when it's talked to the patent office.
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Princeton Digital's expert witness, who's indisputably one of order's skill in the art,
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explained why the accused games meet each and every limitation of the asserted claims.
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Among other things, he cited testimony from Ubisoft game designers who equated the game's markers...
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I'm sorry?
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I don't think I said anything.
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Okay.
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Okay.
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Among other things, Princeton Digital's experts equated and cited testimony from Ubisoft game designers
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who equated that the game's markers and beatmaps correspond to beats in music, not time, position, or location.
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Ubisoft doesn't address that.
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Instead, Ubisoft points to the testimony of its own engineer, who disagrees with Princeton Digital's expert.
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But that disagreement is proof positive that summary judgment is not warranted here.
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Okay.
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The 129 patent suit contains two related elements.
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First, a control track element that corresponds to a music signal.
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And second, a virtual environment element, which is created in response to the control track.
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The statements that Princeton Digital made to the patent office in the context of Ubisoft's initiated IPR
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concerned the control track element, not the virtual environment element.
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In that IPR, Princeton Digital distinguished one approach to creating a control track,
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and notably, the control track was, I'm sorry, Your Honor, go ahead, I'm sorry, I thought there was a question pending.
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The court did not make factual determinations through the lens of what person of ordinary skill they are.
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Further, the court determined that the creation of the control track using music-driven markers and beatmaps
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are the same thing as corresponding to time, position, or location.
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That's a factual finding that contradicts the record evidence in this case.
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And I point to joint evidence.
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Joint Appendix 21 and Joint Appendix 22, excuse me, 20 and 21,
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where the factual findings were made by the district court,
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and then adopted, the factual findings made by the magistrate judge in this case,
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and then later adopted by the district court at summary judgment.
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Impermissibly, the court did not make factual determinations through the lens of a person of ordinary skill they are.
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Instead, the court determined that the creation of a control track
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using music-driven markers is the same thing as corresponding to time, position, and location.
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And the court admitted that while in some sense those markers correspond to the music,
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the court flipped the burden and flipped the claim construction
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and determined that the markers, though they correspond to the music,
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are within the scope of the disclaimer, doing so while looking at not the accused product's
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from the standpoint of a person of ordinary skill in the art,
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but from the standpoint of the district court, which is not permitted to do.
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Similarly, the court interpreted the Williams prior art reference on its own
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without reference to a person of ordinary skill in the art.
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And again, that's error.
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And that was the error that was committed in the Paul Corporation v. PTI Technologies case
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and later affirmed in cases afterwards.
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The court must interpret the prior art
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through the lens of one of ordinary skill in the art,
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not through its own understanding,
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particularly at this point in the case,
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which is why this case is very similar to the Vitamix case that was decided by this court.
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And there, the court determined that what the district court had done
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was looked at a disclaimer through its own understanding of the accused gains
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and then applied it,
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not based on statements made to the patent office,
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but expanded the scope of the disclaimer based on its understanding of the accused products.
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And that's error.
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That is something that the court cannot do.
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The equation of a marker in a song to anything but the Ubisoft engineer listening to the song,
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creating it based on the beats,
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that's the point of the gains,
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and that's the point of the reason why these gains exist in the first place.
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They don't arbitrarily determine where these markers aren't arbitrarily or randomly selected.
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They're selected to correspond to points in the music,
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and that's exactly what the claims require.
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If you look at Joint Appendix 48 where the claims are for this case,
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we also dealt with it in our blue brief,
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and we reproduced the claims at page 6.
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If you look at Claim 16,
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the claim itself,
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a claim element for recording the control track,
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requires that the control information must correspond to a music signal.
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That's exactly what's done here.
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That's what the Princeton Digital's expert opined.
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That's what Ubisoft's engineers testified to,
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and that's what was cited in our expert reports.
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The fact that Ubisoft may disagree with that conclusion is proof positive.
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This is not a summary judgment.
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This is not a summary judgment issue,
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but an issue reserved for the fact finder.
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Judge Dyk
Okay.
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Anything further?
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Mr. McDowell?
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Appellant Attorney (Jonas R. Mcdavit)
I'll reserve the rest of the time for rebuttal.
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Judge Dyk
Okay.
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Thank you.
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Ms. Marriott?
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Appellee Attorney (Michelle Lyons Marriott)
Please, the court.
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The district court correctly granted summary judgment in this case,
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finding a disclaimer of claim scope at claim construction
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and applying that disclaimer to the undisputed facts.
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The judgment of non-infringement should be in the court summary judgment ruling
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is essentially three components.
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First, that there was a disclaimer of claim scope.
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I understand Princeton Digital's arguments on appeal.
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That remains undisputed.
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And on appeal that the district court directly found that in IPR statements
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disclaimed or surrendered claim scope.
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It agrees that the scope of that disclaimer was properly defined in the court's claim scope,
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which appendix 3146, where that disclaimer is laid out.
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So the disclaimer, the existence of the disclaimer is not in dispute,
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and neither is the scope of the district court's opinion.
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The actual issues about how the accused video games operate.
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During development of the game, a human listens and presses a key on a keyboard,
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often it's an M or another letter, to make a marker at certain points.
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And the markers are then put into a timeline.
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And graphics and other elements are positioned on that timeline
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in order to appear in relation to the time marker.
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Those graphics are tied to the markers.
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And at game play, they will show up material factually
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what the district court found in this case.
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No reasonable fact finder could find infringement.
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And parties do not dispute any relevant facts as to the product.
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The court has questions with respect to the disclaimer.
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Summary judgment order.
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I'll briefly touch on dismissal of the claims against the entity Ubisoft Entertainment
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and the argument made in the brief.
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Prior to granting summary judgment, entered in order.
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Judge Dyk
Thank you, Ms. Marriott.
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Mr. McBavitt.
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Appellant Attorney (Jonas R. Mcdavit)
Your Honor, let me address first the factual dispute.
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The not there arbitrarily.
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is there because it corresponds to the water depth of a channel.
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Similarly here, the beat markers that are laid down by Ubisoft engineers
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are not there arbitrarily.
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They don't correspond to 30 seconds into a song
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or the song being played 10%.
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They're there because they correspond to the actual music.
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So when Ms. Marriott says,
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there's no dispute over how the products work,
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there is no dispute as to how the beat markers are created.
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But there is a dispute between the parties
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as to whether or not those beat markers correspond to time, position, or location
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or correspond to music.
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And the undisputedly, based on the conversations,
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I guess it's undisputed to say that there's a dispute,
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a factual dispute between the parties.
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But Princeton Digital's person of ordinary skill in the art
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looked at the evidence,
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looked at the testimony of Ubisoft engineers,
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and concluded, based on the undisputed and unrebutted testimony
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of Ubisoft engineers,
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that they listen to the music and create the beat markers
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because of the music.
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They're listening to the music create the beat markers.
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So that's the factual dispute.
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Whether or not the facts that underlie
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to how those markers get created,
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whether or not there's a dispute between the parties,
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that may be true.
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But the consequence of that
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and what those markers represent,
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they undisputedly correspond to music.
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And we know that because Ubisoft's game designers tell us so.
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Secondly, the scope of the disclaimer.
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We are not disputing the fact that there were statements
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that were made to the Patent Office
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in the context of the Ubisoft-initiated IPO.
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The IPO that was initiated, in fact, by Ubisoft France.
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But what was interesting about that,
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about the difference between the 2017 claim construction
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and then the summary judgment hearing,
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which happened three years later,
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was the disclaimer changed from being focused
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on what the actual statements made
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by Princeton Digital to the Patent Office
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to what the accused products do.
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And that's what happened in Vitamix,
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and that's the error.
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And to respond to Ms. Marriott's argument
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that the scope of the disclaimer didn't change,
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it changed.
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There's no dispute there was statements made
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to the Patent Office,
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but the disclaimer has to be based
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on what was actually said.
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And what was actually said was in the joint appendix 1053
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and 1054 is the reproduction of what was actually said.
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About Williams, and as I said before,
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it all relates to the control track.
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Finally, she made the point that the game doesn't care
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what the beat marker is.
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The beat marker could be responding to white noise.
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But that's actually not what happens.
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The beat marker corresponds to the music.
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In theory, perhaps, the beat marker could be laid down
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by somebody to, in some theoretical point,
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proportion of the creation of the game,
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the beat marker could be laid down arbitrarily.
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And that would fall within the scope of the disclaimer.
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But that's not what actually happens in the accused games.
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The beats, which are laid down in the control track,
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correspond to music.
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Not time, not position, not location.
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And finally, Your Honor, I would just say
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the merely portion of the court's claim construction
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merely was a term that was introduced
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in the claim construction originally
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because Ubisoft requested it be there.
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Not Princeton Digital, but Ubisoft requested it be there.
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And what's important about it,
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it's not that it merely was just excised
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from the claim construction
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between 2017 and the summary judgment.
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But the distinction is,
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when the court omitted that word,
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it highlights the fact that the district court's
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summary judgment ruling expanded the scope
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of the actual statements made to the patent office,
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just like in the Vitamix case.
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The 2017 construction did include the word merely,
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and there's no dispute about that.
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Ubisoft, again, insisted that it include that.
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And in the actual colloquy,
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if you look at Joint Appendix 1053 and 1054,
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and we cite it in our blue brief,
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the actual colloquy concerns the control track.
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And what has happened in this case
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is a confusion between the music
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that is played during the gameplay
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and the control track that is used
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to create the graphics in the first place.
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The graphics do not exist without the control track.
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And the control track was created
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because a Ubisoft engineer listened to the music
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and created beat markers based on the beats in the music.
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That's the factual dispute.
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That was the evidence that was pointed to
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by a person of orange-skilling art,
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and it was error for the district court
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to conclude otherwise.
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Thank you.
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Judge Dyk
Okay, thank you, Mr. McDavid.
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Thank you, Ms. Marriott.
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The case is submitted.
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That concludes our session for this morning.
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Appellee Attorney (Michelle Lyons Marriott)
The honorable court is adjourned from day to day.