Ubisoft, Inc.v.Guitar Apprentice, Inc.

Patent Trial and Appeal Board

Apr 1, 2016

13553310 (P.T.A.B. Apr. 1, 2016)

Trials@uspto.gov Paper 24
571–272–7822 Entered: April 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

UBISOFT, INC. and UBISOFT ENTERTAINMENT SA,
Petitioner,

v.

GUITAR APPRENTICE, INC.,
Patent Owner.
_______________

Case IPR2015-00298
Patent 8,586,849 B1
_______________

Before KEVIN F. TURNER, GEORGIANNA W. BRADEN, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Ubisoft, Inc. and Ubisoft Entertainment SA (collectively, “Petitioner”)
filed a Petition (Paper 4, “Pet.”) requesting an inter partes review of claims
1–3, 5, 9–12, 14, 16–18, and 20 of U.S. Patent No. 8,586,849 B1 (Ex. 1001,
“the ’849 patent”). Guitar Apprentice, Inc. (“Patent Owner”) filed a
Preliminary Response (Paper 8, “Prelim. Resp.”) to the Petition. On April 9,
2015, we instituted an inter partes review of claims 1–3, 5, 9–12, 14, 16–18,
and 20 (“the challenged claims”) of the ’849 patent on the following
grounds:
Claim(s) Statutory Basis Applied References(s)
1–3, 5, 9–12,
14, 16–18,
and 20
35 U.S.C. § 102(e) U.S. Patent Publication No.
2011/0003638 A1 (published
Jan. 6, 2011) (Ex. 1003, “Lee”)
1–3, 5, 9–12,
14, 16–18,
and 20
35 U.S.C. §§ 102(a), (e) U.S. Patent Publication No.
2010/0137049 A1 (published
June 3, 2010) (Ex. 1004,
“Epstein”)
Paper 9 (“Dec. on Inst.”), 17.
After institution, Patent Owner filed a Response (Paper 14, “PO
Resp.”) to the Petition, and Petitioner filed a Reply (Paper 17, “Pet. Reply”)
to the Response. Also, after institution, the United States Court of Appeals
for the Federal Circuit issued an en banc decision in Williamson v. Citrix
Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). Williamson
overruled the precedent cited in the Decision on Institution regarding when
to interpret a claim limitation as a means-plus-function limitation under 35
U.S.C. § 112 ¶ 6. See Dec. on Inst. 5–8; Williamson, 792 F.3d at 1348–49.
We requested additional briefing from the parties addressing whether, in
light of Williamson, the “proficiency sensing module” and “mode control
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module” limitations in claim 9 of the ’849 patent should be interpreted as
means-plus-function limitations under § 112 ¶ 6. Paper 15, 2–3. Petitioner
filed a Claim Construction Brief (Paper 16, “Pet. Brief”), and Patent Owner
filed a responsive Claim Construction Brief (Paper 18, “PO Brief”). An oral
hearing was held on December 15, 2015, and a transcript of the hearing is
included in the record. Paper 22 (“Tr.”).
We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has shown
by a preponderance of the evidence that claims 1–3, 5, 17, 18, and 20 of the
’849 patent are unpatentable. Petitioner, however, has not shown by a
preponderance of the evidence that claims 9–12, 14, and 16 of the ’849
patent are unpatentable.
A. Related Proceedings
The parties indicate that the ’849 patent is the subject of the following
district court case: Guitar Apprentice, Inc. v. Ubisoft, Inc., No. 2:13-cv-
02903 (W.D. Tenn.). Pet. 58–59; Paper 6, 1.
B. The ’849 Patent
The ’849 patent relates to providing instruction on playing a musical
instrument, such as a guitar. Ex. 1001, col. 1, ll. 25–29. Specifically, the
’849 patent describes an instruction system that displays a graphical
representation of a guitar and demonstrates to a user when and how to play a
note or chord. Id. at col. 1, ll. 52–61. The ’849 patent explains that the user
does not have to learn all the notes or chords in a musical performance at
one time. Id. at col. 1, ll. 48–51. Initially, the user only plays one or more
segments of the musical performance, and the system plays the remaining
segments. Id. at col. 2, ll. 61–65. In subsequent iterations of the musical
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performance, the number of segments played by the user can be increased
based on, among other things, the user’s proficiency level. Id. at col. 2,
l. 65–col. 3, l. 1.
C. Illustrative Claim
Claims 1, 9, and 17 are independent. Claim 1 is reproduced below.
1. A media system for progressive instruction in the
playing of a guitar, the system comprising:
a non-transitory processor-readable memory medium
having software residing thereon, the software executable by a
processor to direct the performance of
generating audio signals corresponding to prerecorded
sounds from one or more musical instruments associated with a
predetermined musical performance, the one or more musical
instruments comprising a guitar, the predetermined musical
performance comprising a plurality of musical segments each
further comprising one or more guitar notes or chords;
for a particular iteration of the musical performance,
defining one or more of the plurality of musical segments as
one or more user segments each having one or more associated
display images comprising graphical representations of which
one or more guitar strings to be engaged, and on which frets, to
play the one or more notes or chords corresponding to the user
segment;
sequentially generating the display images in association
with the user segments of the musical performance;
during each user segment of the musical performance,
prompting the user to play the corresponding one or more notes
or chords; and
in association with subsequent iterations of the musical
performance, defining one or more of the associated musical
segments as one or more user segments based on criteria
comprising a proficiency level of the user, wherein the
proficiency level of the user is determinable by the system in
accordance with signals received electrically from a guitar
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played by the user in relation to the display images generated
during the one or more user segments associated with a
previous iteration of the performance.
Ex. 1001, col. 9, ll. 8–41.
II. ANALYSIS
A. Anticipation of Claims 1–3, 5, 17, 18, and 20
Petitioner argues that claims 1–3, 5, 17, 18, and 20 are anticipated by
Lee and also by Epstein. Pet. 4. A claim is anticipated if each limitation of
the claim is disclosed in a single prior art reference arranged as in the claim.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
We have considered the parties’ arguments and supporting evidence, and we
determine that Petitioner has shown by a preponderance of the evidence that
claims 1–3, 5, 17, 18, and 20 are anticipated by Lee and also by Epstein.
1. Lee
Lee relates to providing instruction on playing a musical instrument,
such as a guitar. Ex. 1003 ¶¶ 33, 39. The music instruction system
disclosed in Lee teaches a user to play a musical piece (e.g., a song or
musical composition) that includes a number of musical events (e.g., notes
or chords). Id. ¶¶ 30, 31, 58. Specifically, the system provides the user with
visual cues that indicate the string and fret on which to play a particular note.
Id. ¶¶ 94, 96, Figs. 5, 6, 7A, 7B. Lee explains that the user may begin with a
low difficulty level that only requires the user to play some of the notes in a
song. Id. ¶ 173. As the user progresses and gains skill, the difficulty level
(and thus the number of notes played by the user) can be increased until the
user is able to play the entire song. Id. ¶¶ 173, 174.
Claim 1 of the ’849 patent recites “a non-transitory processor-readable
memory medium having software residing thereon, the software executable
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by a processor.” Ex. 1001, col. 9, ll. 10–12. Lee discloses a system that
includes a processor for executing software instructions stored on a
computer-readable memory. Pet. 13–14; Ex. 1003 ¶¶ 42, 50. Patent Owner
does not dispute that Lee discloses the above limitation of claim 1.
Claim 1 recites “generating audio signals corresponding to
prerecorded sounds from one or more musical instruments associated with a
predetermined musical performance, the one or more musical instruments
comprising a guitar, the predetermined musical performance comprising a
plurality of musical segments each further comprising one or more guitar
notes or chords.” Ex. 1001, col. 9, ll. 13–19. Claim 17 recites a similar
limitation. Id. at col. 12, ll. 1–3. Lee discloses a musical piece data manager
that plays a recorded audio track of an expert performing a musical piece on
a guitar. Pet. 14–15; Ex. 1003 ¶¶ 61, 75. The musical piece played by the
musical piece data manager is a song or composition that includes an
assembly of musical events, with each musical event corresponding to a note
or chord. Pet. 15; Ex. 1003 ¶¶ 30, 31, 58. Patent Owner does not dispute
that Lee discloses the above limitation of claims 1 and 17.
Claim 1 recites “for a particular iteration of the musical performance,
defining one or more of the plurality of musical segments as one or more
user segments each having one or more associated display images
comprising graphical representations of which one or more guitar strings to
be engaged, and on which frets, to play the one or more notes or chords
corresponding to the user segment.” Ex. 1001, col. 9, ll. 20–26. Claim 17
recites a similar limitation. Id. at col. 11, ll. 35–41, col. 12, ll. 4–7. Lee
discloses that a user may begin with a low difficulty level that only requires
the user to play some of the notes or chords in a musical piece. Pet. 16–17;
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Ex. 1003 ¶ 173. Lee also discloses a performance cue manager that provides
the user with visual cues, such as musical event circles, indicating the strings
and frets on which to play the notes or chords in the musical piece. Pet. 17–
18; Ex. 1003 ¶¶ 94, 96, Figs. 5, 6, 7A, 7B. Patent Owner does not dispute
that Lee discloses the above limitation of claims 1 and 17.
Claim 1 recites “sequentially generating the display images in
association with the user segments of the musical performance.” Ex. 1001,
col. 9, ll. 27–28. Claim 17 recites a similar limitation. Id. at col. 12, ll. 4–7.
Lee discloses that visual cues for the notes or chords in a musical piece
scroll from the top of a user interface to the bottom as time progresses. Pet.
18–19; Ex. 1003 ¶¶ 94, 95, Figs. 5, 6. Patent Owner does not dispute that
Lee discloses the above limitation of claims 1 and 17.
Claim 1 recites “during each user segment of the musical
performance, prompting the user to play the corresponding one or more
notes or chords.” Ex. 1001, col. 9, ll. 29–31. Claim 17 recites a similar
limitation. Id. at col. 11, ll. 39–41. Lee discloses that a user is prompted to
perform a note or chord when a visual cue corresponding to that note or
chord reaches a cue line in the visual display. Pet. 19; Ex. 1003 ¶¶ 94, 95,
Figs. 5, 6. Patent Owner does not dispute that Lee discloses the above
limitation of claims 1 and 17.
Claim 1 recites “in association with subsequent iterations of the
musical performance, defining one or more of the associated musical
segments as one or more user segments based on criteria comprising a
proficiency level of the user, wherein the proficiency level of the user is
determinable by the system in accordance with signals received electrically
from a guitar played by the user in relation to the display images generated
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during the one or more user segments associated with a previous iteration of
the performance.” Ex. 1001, col. 9, ll. 32–41. Claim 17 recites a similar
limitation. Id. at col. 12, ll. 8–23. Lee discloses connecting a user’s guitar
to an input of the music instruction system using a cable. Pet. 19; Ex. 1003
¶ 39. Lee discloses comparing musical events from the user’s guitar to
expected musical events and calculating various scores, statistics, and
feedback, including the user’s proficiency level (e.g., beginner, easy, novice,
skilled, difficult, or advanced). Pet. 19–22; Ex. 1003 ¶¶ 62, 65, 137, 183.
Lee also discloses defining the number of musical events played by the user
in a subsequent iteration of the musical piece based on the user’s proficiency
level from a previous iteration of the musical piece.1 Pet. 19–22; Ex. 1003
¶¶ 173, 174; Ex. 1006 ¶¶ 25, 29, 30.
Patent Owner argues that Lee does not disclose the above limitation of
claims 1 and 17, because the system in Lee does not define the number of
user segments in a subsequent iteration of a musical performance based on a
user proficiency level determined from a previous iteration of the musical
performance. PO Resp. 5–7 (citing Ex. 1003 ¶¶ 106, 161, 183).
Specifically, Patent Owner argues that, in Lee, “the user, not the system,”
selects the difficulty level (and thus the number of user segments) for a
subsequent session. PO Resp. 7 (citing Ex. 1003 ¶ 183). Patent Owner’s
argument is not persuasive.
Lee discloses that “when 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

1 Lee discloses maintaining the number of musical events played by the user,
as required by claim 17. Pet. 30–31; Ex. 1003 ¶¶ 165, 173, 174; Ex. 1006 ¶¶
32–34.
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musical events, where N>1,” and, “[a]s the user progresses and gains skill
from session to session, the value of N may be gradually reduced to 1” at
which point “the user may be required to correctly play each of N musical
events.”2 Ex. 1003 ¶¶ 173, 174 (emphasis added). Thus, Lee discloses a
system that defines the number of user segments in a subsequent session
based on the user’s proficiency level in a previous session. Id. Petitioner’s
declarant, Dr. Michael Zyda, testifies that one of ordinary skill in the art
reading Lee would have known that the system can adjust the number of
user segments from session to session, as described in paragraphs 173 and
174 of Lee, without input from the user.3 Ex. 1006 ¶¶ 25, 29, 30.
Patent Owner does not address specifically the disclosure in
paragraphs 173 and 174 of Lee or the declaration testimony of Dr. Zyda.
See PO Resp. 5–7. Patent Owner instead focuses on paragraph 183 of Lee,
which states that “[u]ser level 1830 may assist the user in selecting a
difficulty level for a subsequent session.” Ex. 1003 ¶ 183; PO Resp. 7. This
paragraph of Lee describes a particular example in which the user can
provide input regarding the difficulty level (and thus the number of user
segments) for a subsequent session. Ex. 1003 ¶ 183; Ex. 1006 ¶ 27. As

2 As discussed above, Lee discloses that the term “musical piece” refers to a
song or musical composition, and the term “musical event” refers to a note
or chord in the musical piece. Ex. 1003 ¶¶ 30, 31, 58.
3 Dr. Zyda testifies that one of ordinary skill in the art would have had a
bachelor’s degree in electrical engineering, computer science, physics,
mathematics, or a related field or an equivalent number of years of working
experience, in addition to one to two years of software programming
experience. Ex. 1006 ¶ 17. Patent Owner does not dispute Dr. Zyda’s
definition of the level of ordinary skill in the art, and we adopt that level of
ordinary skill in the art in this case.
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discussed above, though, the evidence indicates that the system disclosed in
Lee also can adjust the number of user segments from session to session
without input from the user. Ex. 1003 ¶¶ 173, 174; Ex. 1006 ¶¶ 25, 29, 30.
Moreover, even if Lee is limited to the example described in
paragraph 183, Lee still discloses the limitations of claims 1 and 17. Claims
1 and 17 recite defining the number of user segments “based on criteria
comprising a proficiency level of the user.” Ex. 1001, col. 9, ll. 34–35
(emphasis added); see id. at col. 12, ll. 13–14. This language in claims 1 and
17 requires that the criteria include a user proficiency level, but does not
exclude other criteria, such as input from the user. Our reading of the claim
language is consistent with the written description of the ’849 patent and the
dependent claims, which indicate that the criteria for defining the number of
user segments may include input from the user. Id. at col. 4, ll. 37–42, col.
8, ll. 35–42, col. 10, ll. 6–10. In fact, Patent Owner acknowledges that
claims 1 and 17 allow for input from the user. Tr. 31:1–17 (“Even if the
system is automatically making that recommendation, my dependent claims
say that the user can override it.”). In the example described in paragraph
183 of Lee, the user proficiency level “assist[s]” the user in selecting a
difficulty level for the next session. Ex. 1003 ¶ 183 (emphasis added). As
such, the difficulty level (and thus the number of user segments) in the next
session is based, at least in part, on the user’s proficiency level from a
previous session, as required by the above limitation of claims 1 and 17.
For the reasons discussed above, we determine that Petitioner has
shown by a preponderance of the evidence that Lee anticipates independent
claims 1 and 17. Claims 2, 3, 5, 18, and 20 depend from claim 1 or claim
17. Petitioner identifies evidence indicating that Lee discloses the
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limitations of claims 2, 3, 5, 18, and 20 (see Pet. 22–24, 31–32), and Patent
Owner does not dispute that Lee discloses the limitations of claims 2, 3, 5,
18, and 20. We determine that the identified evidence supports Petitioner’s
contentions, and we adopt Petitioner’s contentions as our own. Therefore,
we determine that Petitioner also has shown by a preponderance of the
evidence that Lee anticipates dependent claims 2, 3, 5, 18, and 20.
2. Epstein
Epstein relates to an interactive game for learning to play a guitar.
Ex. 1004, Abstract. Specifically, Epstein discloses that a user may practice a
song by playing a mini-game. Id. ¶¶ 57, 105. In one such mini-game, the
user only has to play a section of the song. Id. If the user does not play a
certain number of notes in the song correctly, the user may have to repeat the
same game. Id. ¶ 105. If, on other hand, the user successfully completes
several mini-games, the user may play a game that requires the user to
perform the entire song. Id. ¶¶ 105, 116.
Claim 1 recites “a non-transitory processor-readable memory medium
having software residing thereon, the software executable by a processor.”
Ex. 1001, col. 9, ll. 10–12. Epstein discloses a software game engine that is
executed on a computer having a memory. Pet. 33; Ex. 1004 ¶¶ 34, 35.
Patent Owner does not dispute that Epstein discloses the above limitation of
claim 1.
Claim 1 recites “generating audio signals corresponding to
prerecorded sounds from one or more musical instruments associated with a
predetermined musical performance, the one or more musical instruments
comprising a guitar, the predetermined musical performance comprising a
plurality of musical segments each further comprising one or more guitar
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notes or chords.” Ex. 1001, col. 9, ll. 13–19. Claim 17 recites a similar
limitation. Id. at col. 12, ll. 1–3. Epstein discloses playing a recorded audio
signal of a song being performed on a guitar. Pet. 33–34; Ex. 1004 ¶¶ 36,
37. Patent Owner does not dispute that Epstein discloses the above
limitation of claims 1 and 17.
Claim 1 recites “for a particular iteration of the musical performance,
defining one or more of the plurality of musical segments as one or more
user segments each having one or more associated display images
comprising graphical representations of which one or more guitar strings to
be engaged, and on which frets, to play the one or more notes or chords
corresponding to the user segment.” Ex. 1001, col. 9, ll. 20–26. Claim 17
recites a similar limitation. Id. at col. 11, ll. 35–41, col. 12, ll. 4–7. Epstein
discloses a mini-game in which a user only has to play a section of a song.
Pet. 34–35; Ex. 1004 ¶¶ 57, 105. Epstein also discloses displaying graphical
representations that indicate the strings and frets on which the user should
play the notes or chords in the song. Pet. 35–36; Ex. 1004 ¶ 39, Fig. 4.
Patent Owner does not dispute that Epstein discloses the above limitation of
claims 1 and 17.
Claim 1 recites “sequentially generating the display images in
association with the user segments of the musical performance.” Ex. 1001,
col. 9, ll. 27–28. Claim 17 recites a similar limitation. Id. at col. 12, ll. 4–7.
Epstein discloses that a graphical representation of a note or chord moves in
time with the song. Pet. 37; Ex. 1004 ¶ 39, Fig. 4. Patent Owner does not
dispute that Epstein discloses the above limitation of claims 1 and 17.
Claim 1 recites “during each user segment of the musical
performance, prompting the user to play the corresponding one or more
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notes or chords.” Ex. 1001, col. 9, ll. 29–31. Claim 17 recites a similar
limitation. Id. at col. 11, ll. 39–41. Epstein discloses that a user is supposed
to play a note or chord when the graphical representation of that note or
chord approaches the hit-line or hit-area. Pet. 37; Ex. 1004 ¶ 39, Fig. 4.
Patent Owner does not dispute that Epstein discloses the above limitation of
claims 1 and 17.
Claim 1 recites “in association with subsequent iterations of the
musical performance, defining one or more of the associated musical
segments as one or more user segments based on criteria comprising a
proficiency level of the user, wherein the proficiency level of the user is
determinable by the system in accordance with signals received electrically
from a guitar played by the user in relation to the display images generated
during the one or more user segments associated with a previous iteration of
the performance.” Ex. 1001, col. 9, ll. 32–41. Claim 17 recites a similar
limitation. Id. at col. 12, ll. 8–23. Epstein discloses comparing a signal
output by a user’s guitar with a selected song to determine if the user played
the notes or chords correctly. Pet. 37–38; Ex. 1004 ¶¶ 36, 41. Epstein also
discloses a mini-game in which the user only has to play a section of a song.
Pet. 37–38; Ex. 1004 ¶¶ 57, 105. In a subsequent game, the user may have
to play more of the song based on the user’s proficiency level in the previous
game.4 Pet. 37–38; Pet. Reply 10–12; Ex. 1004 ¶¶ 105, 116.
Patent Owner argues that Epstein does not disclose the above
limitation of claims 1 and 17, because the system in Epstein does not define
the number of user segments in a subsequent iteration of a musical

4 Epstein discloses that all the games in a particular sub-level can involve the
same song. Ex. 1004 ¶ 97.
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performance based on a user proficiency level determined from a previous
iteration of the musical performance. PO Resp. 7–10 (citing Ex. 1004 ¶¶ 57,
105, 107, Fig. 16). Specifically, Patent Owner argues that, in Epstein, “it is
not the proficiency at the performances of the mini-games that determines
whether one moves through the levels.” PO Resp. 9. Patent Owner’s
argument is not persuasive.
As discussed above, Epstein discloses a mini-game that allows a user
to practice a song by playing only a section of the song. Ex. 1004 ¶¶ 57,
105. If the user does not play a certain number of notes in the song
correctly, the user may have to repeat the same game. Id. ¶ 105. Thus,
Epstein discloses maintaining the same number of user segments in a
subsequent iteration of the musical performance based on the user’s
proficiency level in a prior iteration. If, on the other hand, the user
successfully completes several mini-games, the user may play a game that
requires the user to perform the entire song. Id. ¶¶ 105, 116. Thus, Epstein
also discloses increasing the number of user segments in a subsequent
iteration of the musical performance based on the user’s proficiency level in
a prior iteration.
For the reasons discussed above, we determine that Petitioner has
shown by a preponderance of the evidence that Epstein anticipates
independent claims 1 and 17. Claims 2, 3, 5, 18, and 20 depend from claim
1 or claim 17. Petitioner identifies evidence indicating that Epstein discloses
the limitations of claims 2, 3, 5, 18, and 20 (see Pet. 38–39, 44), and Patent
Owner does not dispute that Epstein discloses the limitations of claims 2, 3,
5, 18, and 20. We determine that the identified evidence supports
Petitioner’s contentions, and we adopt Petitioner’s contentions as our own.
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Therefore, we determine that Petitioner also has shown by a preponderance
of the evidence that Epstein anticipates dependent claims 2, 3, 5, 18, and 20.
B. Anticipation of Claims 9–12, 14, and 16
Petitioner argues that claims 9–12, 14, and 16 are anticipated by Lee
and also by Epstein. Pet. 4. A claim is anticipated if each limitation of the
claim is disclosed in a single prior art reference arranged as in the claim.
Net MoneyIN, 545 F.3d at 1369. We have considered the parties’ arguments
and supporting evidence, and we determine that Petitioner has not shown by
a preponderance of the evidence that claims 9–12, 14, and 16 are anticipated
by Lee or Epstein.
Claim 9 recites “a proficiency sensing module effective to receive
signals from a guitar electrically coupled to the system, compare the
received signals to expected signals associated with corresponding user
segments of the musical performance, and determine a proficiency level of
the user based on the comparison.” Ex. 1001, col. 10, ll. 40–45. Claim 9
also recites “a mode control module effective to define one or more of the
plurality of musical segments in the selected performance as user segments
based upon one or more criteria including the determined proficiency level
of the user and a performance iteration, wherein in successive iterations the
mode control module determines whether the proficiency level of the user
warrants increasing the number of user segments.” Id. at col. 10, ll. 46–53.
In the Decision on Institution, we determined that the “proficiency
sensing module” and “mode control module” limitations did not invoke 35
U.S.C. § 112 ¶ 6, because, inter alia, there is a strong presumption that a
limitation lacking the terms “means for” is not subject to § 112 ¶ 6. Dec. on
Inst. 5–8 (citing Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d
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1354, 1358 (Fed. Cir. 2004)). Williamson, however, expressly overruled
prior decisions that applied a “strong” presumption that a limitation lacking
the terms “means for” is not subject to § 112 ¶ 6. 792 F.3d at 1348–49.
Williamson explained that “[t]he standard is whether the words of the claim
are understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Id. at 1349. We, therefore,
reconsider our determination in the Decision on Institution that the
“proficiency sensing module” and “mode control module” limitations do not
invoke § 112 ¶ 6. As discussed above, we requested additional briefing
from the parties addressing this issue, and both parties filed a brief. Paper
15, 2–3; Pet. Brief; PO Brief.
The “proficiency sensing module” and “mode control module”
limitations in claim 9 are similar to the limitation at issue in Williamson.
Specifically, the “proficiency sensing module” and “mode control module”
limitations are in a format consistent with traditional means-plus-function
limitations. Ex. 1001, col. 10, ll. 40–53; see Williamson, 792 F.3d at 1350.
Each limitation replaces the term “means” with the term “module,” and
recites certain functions performed by the module. Ex. 1001, col. 10, ll. 40–
53; see Williamson, 792 F.3d at 1350. The word “module” by itself does not
provide any indication of structure. See Williamson, 792 F.3d at 1350–51;
PO Brief 3 (“Thus, the module, like most computing elements, are a
combination of relatively generic computer hardware coupled with
software.”). Further, neither party argues specifically or identifies evidence
indicating that the prefixes “proficiency sensing” and “mode control” impart
structure into the term “module.” See Pet. Brief 2; PO Brief 5–6;
Williamson, 792 F.3d at 1350–51.
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Patent Owner argues that the claim language imparts structure by
reciting the input and output of each module. PO Brief 5–6; Tr. 25:7–14.
The functions recited in claim 9, however, only describe certain inputs and
outputs at a very high level (e.g., receiving signals from a guitar and
comparing the received signals to expected signals). Ex. 1001, col. 10, ll.
40–53; see Williamson, 792 F.3d at 1351. The ’849 patent explains that a
person of ordinary skill in the art “would conceive of numerous structural
means” for performing the recited functions of the “proficiency sensing
module” and the “mode control module.” Ex. 1001, col. 3, ll. 19–28; see id.
at col. 3, ll. 58–67. As a result, the functions recited in claim 9 for the
“proficiency sensing module” and the “mode control module” do not
connote sufficiently definite structure. See Williamson, 792 F.3d at 1351.
Therefore, we determine that the “proficiency sensing module” and “mode
control module” limitations in claim 9 are means-plus-function limitations
under § 112 ¶ 6.
The asserted grounds of unpatentability for claim 9 in this case are
based on prior art, not indefiniteness.5 Dec. on Inst. 17; Pet. 4–5, 24–28,
39–41; see 35 U.S.C. § 311(b). To show the unpatentability of a claim
including a means-plus-function limitation based on prior art, Petitioner
must: 1) identify the specific portions of the specification that describe the
structure corresponding to the claimed function; and 2) specify where that
structure or an equivalent is found in the cited prior art patents or printed

5 Petitioner argued in a related district court case involving the ’849 patent
that claim 9 is invalid as indefinite, and the district court agreed with
Petitioner. Guitar Apprentice, Inc. v. Ubisoft, Inc., 97 F. Supp. 3d 965, 993–
995 (W.D. Tenn. 2015).
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publications. 37 C.F.R. §§ 42.104 (b)(3), (4); Fresenius USA, Inc. v. Baxter
Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed. Cir. 2009). Petitioner, however,
does not identify any corresponding structure for the “proficiency sensing
module” and “mode control module” limitations in claim 9. See Pet. 6–8;
Pet. Brief 3–5. As a result, Petitioner also does not show that Lee or Epstein
discloses the corresponding structure for those limitations or an equivalent.
See Pet. 24–28, 39–41; Fresenius, 582 F.3d at 1299 (“a functional analysis
alone will not suffice”). Therefore, we determine that Petitioner has not
shown by a preponderance of the evidence that claim 9 is anticipated by Lee
or Epstein. See Fresenius, 582 F.3d at 1299–1300 (affirming grant of JMOL
of no invalidity because “Fresenius neither identified the structure in the
specification that corresponds to the means for delivering dialysate nor
compared it to the structures present in the prior art”). Because claims 10–
12, 14, and 16 depend from claim 9, we determine that Petitioner also has
not shown by a preponderance of the evidence that claims 10–12, 14, and 16
are anticipated by Lee or Epstein.
III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that claims
1–3, 5, 17, 18, and 20 of the ’849 patent are anticipated by Lee and also by
Epstein. Petitioner has not shown by a preponderance of the evidence that
claims 9–12, 14, and 16 of the ’849 patent are anticipated by Lee or Epstein.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–3, 5, 17, 18, and 20 of the ’849 patent are
shown unpatentable;
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FURTHER ORDERED that claims 9–12, 14, and 16 of the ’849
patent are not shown unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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PETITIONER:

Eric A. Buresh
Mark C. Lang
ERISE IP, P.A.
eric.buresh@eriseip.com
mark.lang@eriseip.com

PATENT OWNER:

Rick Barnes
Michael Bradford
LUEDEKA NEELY GROUP, P.C.
rick@Luedeka.com
mbradford@luedeka.com