[00:00:00] Speaker 02:
Number 20-1204, Princeton Digital Image versus Ubisoft Entertainment SA, Mr. McDavitt.

[00:00:09] Speaker 00:
Thank you, Your Honor, and may it please the court.

[00:00:12] Speaker 00:
This appeal concerns two district court errors.

[00:00:15] Speaker 00:
First, the district court impermissibly resolved a factual dispute between the parties.

[00:00:21] Speaker 00:
Specifically, the court determined that the creation of a control track using beat maps, maps that are indisputably derived from music,

[00:00:29] Speaker 00:
is the same thing as denoting a time, position, or location.

[00:00:32] Speaker 00:
The district court concluded that on its own, and despite expert and technical evidence to the contrary, evidence that Ubisoft does not address in its opposition.

[00:00:43] Speaker 00:
Second, the district court applied a disclaimer that is not tethered to the actual distinctions Princeton Digital made to the patent office.

[00:00:51] Speaker 00:
Instead, at summary judgment, the court interpreted the claims in view of the accused products and revised the so-called disclaimer in view of the accused products.

[00:01:01] Speaker 00:
That's not correct.

[00:01:03] Speaker 00:
Any use of disclaimer must be based on the actual statements made to the patent office, not the accused products.

[00:01:09] Speaker 00:
Vitamix versus Basic Holding, a case on all fours with this case, involved the same problem.

[00:01:16] Speaker 00:
This course concluded that it was error for the district court to ignore the actual distinction made by the patentee, 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.

[00:01:34] Speaker 00:
Princeton Digital's expert witness, who's indisputably one of order's skill in the art, explained why the accused games meet each and every limitation of the assertive claims.

[00:01:44] Speaker 00:
Among other things, he cited testimony from Ubisoft game designers who equated the game's markers.

[00:01:52] Speaker 00:
I'm sorry?

[00:01:52] Speaker 00:
I don't think I said anything.

[00:01:58] Speaker ?:
OK.

[00:01:59] Speaker 00:
Among other things, Princeton Digital's experts equated and cited testimony from Ubisoft game designers who equated that the game's markers and beat maps correspond to beats in music, not time, position, or location.

[00:02:13] Speaker 00:
Ubisoft doesn't address that.

[00:02:15] Speaker 00:
Instead, Ubisoft points to the testimony of its own engineer, who disagrees with Princeton Digital's expert.

[00:02:21] Speaker 00:
But that disagreement is proof positive that summary judgment is not warranted here.

[00:02:27] Speaker 00:
The 129 patent suit contains two related elements.

[00:02:31] Speaker 00:
First, a control track element that corresponds to a music signal.

[00:02:36] Speaker 00:
And second, a virtual environment element, which is created in response to the control track.

[00:02:42] Speaker 00:
The statements that Princeton Digital made to the patent office

[00:02:44] Speaker 00:
in the context of Ubisoft's initiated IPR, concerned the control track element, not the virtual environment element.

[00:02:53] Speaker 00:
In that IPR, Princeton Digital distinguished one approach to creating a control track.

[00:02:58] Speaker 00:
And notably, the control track was, I'm sorry, Your Honor, go ahead.

[00:03:07] Speaker 00:
I'm sorry, I thought there was a question pending.

[00:03:12] Speaker 00:
The court did not make factual determinations through the lens of what person of order and skill in the arc.

[00:03:17] Speaker 00:
Further, the court determined that the creation of the control track using music-driven markers and beat maps are the same thing as corresponding to time, position, or location.

[00:03:28] Speaker 00:
That's a factual finding that contradicts the record evidence in this case.

[00:03:32] Speaker 00:
And I point to Joint Appendix 21 and Joint Appendix 22, excuse me, 20 and 21,

[00:03:39] Speaker 00:
where the factual findings were made by the district court and then adopted, the factual findings made by the magistrate judge in this case and then later adopted by the district court at summary judgment.

[00:03:58] Speaker 00:
The court did not make, impermissibly, the court did not make factual determinations through the lens of a person of already skilled in the art.

[00:04:06] Speaker 00:
Instead, the court determined that the creation of a control track using music-driven markers, the same thing is corresponding to time, position, and location.

[00:04:15] Speaker 00:
And the court admitted that while in some sense those markers correspond to the music, the court flipped the burden and determined that the, and flipped the claim construction and determined that

[00:04:28] Speaker 00:
the markers, though they correspond to the music, are within the scope of the disclaimer.

[00:04:35] Speaker 00:
Doing so while looking at not the accused products from the standpoint of a person of already skilled in the art, but from the standpoint of the district court, which is not permitted to do.

[00:04:48] Speaker 00:
Similarly, the court interpreted the Williams prior art reference on its own without reference to a person of origin, skill, and the art.

[00:04:55] Speaker 00:
And again, that's error.

[00:04:56] Speaker 00:
And that was the error that was committed in the Paul Corporation versus PTI Technologies case and later affirmed in cases afterwards.

[00:05:06] Speaker 00:
The court must interpret the prior art through the lens of one of origin, skill, and the art, not through its own understanding.

[00:05:16] Speaker 00:
particularly at this point in the case, which is why this case is very similar to the Vitamix case that was decided by this court.

[00:05:24] Speaker 00:
In there, the court determined that what the district court had done was look at a disclaimer through its own understanding of the accused's gains.

[00:05:37] Speaker 00:
applied it not based on statements made to the patent office, but expanded the scope of the disclaimer based on its understanding of the accused products.

[00:05:46] Speaker 00:
And that's error.

[00:05:48] Speaker 00:
That is something the court cannot do.

[00:05:52] Speaker 00:
The equation of a marker in a palm to anything but the

[00:06:02] Speaker 00:
Ubisoft engineer listening to the song, creating it based on the beats.

[00:06:07] Speaker 00:
That's the point of the game and that's the point of the reason why these games exist in the first place.

[00:06:14] Speaker 00:
They don't arbitrarily determine where these markers aren't arbitrarily or randomly selected.

[00:06:21] Speaker 00:
selected to correspond to points in the music.

[00:06:24] Speaker 00:
And that's exactly what the claims require.

[00:06:27] Speaker 00:
If you look at joint appendix 48, where the claims are for this case, we also dealt with it in our blue brief, and we reproduced the claims at page 6.

[00:06:37] Speaker 00:
If you look at claim 16,

[00:06:39] Speaker 00:
The claim itself, a claim element for recording the control track requires that the control information must correspond to a music signal.

[00:06:49] Speaker 00:
That's exactly what's done here.

[00:06:50] Speaker 00:
That's what the Princeton Digital's expert opined.

[00:06:54] Speaker 00:
That's what Ubisoft's engineers testified to.

[00:06:57] Speaker 00:
And that's what was cited in our expert reports.

[00:07:01] Speaker 00:
that the fact that Ubisoft may disagree with that conclusion is proof positive.

[00:07:07] Speaker 00:
This is not a summary judgment issue, but an issue reserved for the fact finder.

[00:07:16] Speaker 02:
Okay.

[00:07:17] Speaker 02:
Anything further, Mr. McDowell?

[00:07:20] Speaker 00:
I'll reserve the rest of the time for rebuttal.

[00:07:22] Speaker 02:
Okay.

[00:07:23] Speaker 02:
Thank you.

[00:07:24] Speaker 02:
Ms.

[00:07:24] Speaker 02:
Marriott?

[00:07:28] Speaker 01:
Thank you and good morning.

[00:07:29] Speaker 01:
May I please the court?

[00:07:31] Speaker 01:
The district court correctly granted summary judgment in this case, finding a disclaimer of claim scope at claim construction and applying that disclaimer to the undisputed facts.

[00:07:41] Speaker 01:
The judgment of non-imprisonment should be affirmed.

[00:07:45] Speaker 01:
At issue in the court summary judgment ruling is essentially three components.

[00:07:50] Speaker 01:
First, the district court found that there was a disclaimer of claim scope.

[00:07:56] Speaker 01:
As far as I understand Princeton Digital's arguments on appeal, that remains undisputed.

[00:08:02] Speaker 01:
Princeton Digital exceeds both now and on appeal that the district court correctly found that its own ITR statements disclaimed or surrendered claim scope.

[00:08:13] Speaker 01:
And it agrees that the scope of that disclaimer was properly defined in the court's claim construction order, which I would just point the court there to appendix 3146, where that disclaimer is laid out.

[00:08:28] Speaker 01:
So the disclaimer, the existence of the disclaimer is not in dispute.

[00:08:32] Speaker 01:
And neither is the scope of the disclaimer.

[00:08:35] Speaker 01:
The second component of the district court's opinion is undisputed facts.

[00:08:42] Speaker 01:
This is also indisputed, that there are no actual factual issues about how the accused video games operate.

[00:08:50] Speaker 01:
During development of the game, a human listens to a song and presses a key on a keyboard, often it's an M or another letter, to make a marker at certain points in the song.

[00:09:03] Speaker 01:
The graphics, those markers are then put into a timeline.

[00:09:08] Speaker 01:
And graphics and other elements are positioned on that timeline in order to appear in relation to the time marker.

[00:09:17] Speaker 01:
Both at the district court and on appeal, it's undisputed that those graphics are tied to the markers.

[00:09:23] Speaker 01:
And at gameplay, they will show up at certain times in the song timed out relative to the music.

[00:09:31] Speaker 01:
The music signal itself is not generating anything.

[00:09:35] Speaker 01:
All of this is undisputed, and the district court correctly found that no genuine issue of material fact existed about how the accused products work.

[00:09:44] Speaker 01:
That brings us to the third component of the district court's order, which is the district court's application of the disclaimer to the undisputed facts.

[00:09:54] Speaker 01:
This is the focus of Princeton's argument on appeal, and this is where I will focus.

[00:09:59] Speaker 01:
The district court got it right.

[00:10:01] Speaker 01:
The question is whether the alleged control information in the Ubisoft games, which Princeton contends are these beat markers that trigger the display of graphics at certain times, falls within the disclaimed scope.

[00:10:17] Speaker 01:
And the answer to that is yes.

[00:10:21] Speaker 01:
Yes, a beat is a time in a song.

[00:10:24] Speaker 01:
The beat markers are manually selected by humans to correspond to a particular time

[00:10:31] Speaker 01:
position or location in the song, and the graphics are positioned to appear at those markers, i.e.

[00:10:37] Speaker 01:
at a certain time in the song.

[00:10:39] Speaker 01:
During gameplay, the evidence is also undisputed that the music starts the timer for the markers, but the game doesn't care about what the content of the music is.

[00:10:50] Speaker 01:
In the context of the Rocksmith game, the developer testified that it could be white noise.

[00:10:57] Speaker 01:
The music simply isn't doing any work.

[00:11:00] Speaker 01:
everything's appearing according to the timing of the markers.

[00:11:04] Speaker 01:
This is exactly what Princeton Digital disclaimed in the IPR.

[00:11:08] Speaker 01:
And the accused game fall within the scope of the disclaimer and not within the scope of the claims.

[00:11:16] Speaker 01:
That's Princeton Digital's infringement theory is clearly foreclosed by the claim constructions.

[00:11:21] Speaker 01:
And the district court correctly found that the record evidence of how the accused products work brings those products within the scope of the disclaimer.

[00:11:30] Speaker 01:
In other words, the district court concluded correctly that no reasonable fact finder taking the evidence in the light most favorable to PDIC could find anything other than once the timer starts, the graphics are displayed irrespective of the audio content and summary judgment is appropriate.

[00:11:50] Speaker 01:
One of Princeton's arguments on appeal impacts the district court's analysis.

[00:11:57] Speaker 01:
There was no expansion or broadening or changing of the disclaimer between the claim construction order and the summary judgment order.

[00:12:07] Speaker 01:
And the district judge at the summary judgment hearing expressly confirmed on the record that he was applying the same claim construction found, the same disclaimer that was found at claim construction.

[00:12:23] Speaker 01:
a distinction, an important distinction between the Vitamix case that Mr. McDavitt was discussing.

[00:12:31] Speaker 01:
Because there, there was a change in the scope of the disclaimer from the time of claim construction to the time of summary judgment, where the district court found that the disclaimer in Vitamix was going to preclude altering in the context of that case, and that was too broad.

[00:12:49] Speaker 01:
It wasn't that there wasn't a disclaimer.

[00:12:52] Speaker 01:
It was just remanded to apply the original definition of the disclaimer that was found at claim construction.

[00:12:59] Speaker 01:
We don't have that issue in this case.

[00:13:00] Speaker 01:
The same disclaimer that was defined at claim construction was applied verbatim by the district court at summary judgment.

[00:13:10] Speaker 01:
And in the end, we haven't heard Princeton identify any actual deviations by the district court

[00:13:17] Speaker 01:
from the scope of that disclaimer that was found at claim construction.

[00:13:20] Speaker 01:
And in fact, there was none.

[00:13:24] Speaker 01:
In the brief, Princeton also argued that the word merely in the construction somehow impacts the scope of the disclaimer.

[00:13:31] Speaker 01:
It does not, and we did not hear argument on that today.

[00:13:33] Speaker 01:
It simply was not a word that characterizes the scope of the disclaimer.

[00:13:38] Speaker 01:
It was not given any importance or addressed by Princeton or its experts prior to summary judgment.

[00:13:46] Speaker 01:
And at bottom, the word merely simply does not impact the ultimate conclusion at summary judgment, which is that the markers that Princeton Digital points to as the control track are only based on the time within a sound reporting and are not based on the content of the sound reporting itself.

[00:14:06] Speaker 01:
Finally, Princeton suggests that it was not legally appropriate for the district court to grant summary judgment and today characterizes the district court

[00:14:16] Speaker 01:
application of the disclaimer to the undisputed facts as a factual issue.

[00:14:22] Speaker 01:
None of the cases that Princeton cites support this argument.

[00:14:25] Speaker 01:
And certainly, there are no cases that stand for the proposition that a district court could never grant summary judgment just because two experts disagree on the ultimate conclusion of infringement.

[00:14:36] Speaker 01:
To the contrary, the law has established that summary judgment is appropriate where no reasonable fact finder could find infringement.

[00:14:43] Speaker 01:
And that's exactly what the district court found in this case.

[00:14:47] Speaker 01:
that no reasonable fact finder could find infringement, and that because the parties do not dispute any relevant facts as to the operation of the product, summary judgment was appropriate.

[00:15:00] Speaker 01:
Unless the court has questions with respect to the disclaimer and the arguments relating to the summary judgment order, I'll briefly touch on the secondary argument, which is,

[00:15:14] Speaker 01:
the dismissal of the claims against the French entity Ubisoft Entertainment and the waiver argument made in the brief.

[00:15:22] Speaker 01:
Here, the district court, prior to granting summary judgment, entered an order dismissing the only claim that was asserted against Ubisoft Entertainment, which was one for indirect infringement.

[00:15:36] Speaker 01:
In its opening brief, in this appeal, Princeton

[00:15:40] Speaker 01:
does not raise any argument relating to the district court's dismissal of indirect infringement.

[00:15:46] Speaker 01:
And the law is well established that arguments not raised in the opening brief are waived.

[00:15:54] Speaker 01:
Unless this panel has additional questions, I will yield the remainder of my time.

[00:16:01] Speaker 02:
Okay.

[00:16:01] Speaker 02:
Thank you, Ms.

[00:16:02] Speaker 02:
Marriott.

[00:16:03] Speaker 02:
Mr. McBabbitt?

[00:16:06] Speaker 00:
Your Honor, let me

[00:16:08] Speaker 00:
address first the factual dispute.

[00:16:14] Speaker 00:
If you put a buoy in a channel to mark where in a port, that buoy is not there arbitrarily.

[00:16:25] Speaker 00:
The buoy is there because it corresponds to the water depth of a channel.

[00:16:30] Speaker 00:
Similarly here, the bead markers that are laid down by Ubisoft engineers

[00:16:36] Speaker 00:
are not there arbitrarily.

[00:16:38] Speaker 00:
They don't correspond to 30 seconds into a song or the song being played 10%.

[00:16:45] Speaker 00:
They're there because they correspond to the actual music.

[00:16:49] Speaker 00:
So when Ms.

[00:16:51] Speaker 00:
Marriott says there's no dispute over how the products work, there is no dispute as to how the beat markers are created.

[00:16:59] Speaker 00:
But there is a dispute between the parties as to whether or not those beat markers correspond to time position or location or correspond to music.

[00:17:11] Speaker 00:
And the undisputably, based on the conversations, I guess it's undisputed to say that there is a dispute, a factual dispute between the parties.

[00:17:20] Speaker 00:
But Princeton Digital's person of ordinary skill in the art looked at the evidence

[00:17:26] Speaker 00:
looked at the testimony of Ubisoft engineers and concluded, based on the undisputed and unrebutted testimony of Ubisoft engineers, that they listen to the music and create the beat markers because of the music.

[00:17:40] Speaker 00:
They're listening to the music, create the beat markers.

[00:17:43] Speaker 00:
So that's the factual dispute.

[00:17:46] Speaker 00:
Whether or not the facts that underlie to how those markers get created, whether or not there's a dispute between the parties,

[00:17:53] Speaker 00:
That may be true, but the consequence of that and what those markers represent, they undisputably correspond to music.

[00:18:04] Speaker 00:
And we know that because Ubisoft's game designers tell us so.

[00:18:08] Speaker 00:
Secondly, the scope of the disclaimer, we are not disputing the fact that there is, that were statements that were made to the patent office in the context of the Ubisoft initiated IPR.

[00:18:20] Speaker 00:
The IPR that was initiated in fact by Ubisoft France.

[00:18:24] Speaker 00:
But what was interesting about that, about what the difference between the 2017 claim construction and then the summary judgment hearing, which happened three years later,

[00:18:37] Speaker 00:
was the disclaimer changed from being focused on what the actual statements made by Princeton Digital to the Patent Office to what the accused products do.

[00:18:49] Speaker 00:
And that's what happened in Vitamix and that's the error.

[00:18:52] Speaker 00:
And to respond to Ms.

[00:18:54] Speaker 00:
Marriott's argument that the scope of disclaimer didn't change, it changed

[00:19:00] Speaker 00:
There's no dispute there was statements made to the Patent Office, but the disclaimer has to be based on what was actually said.

[00:19:07] Speaker 00:
And what was actually said was in the Joint Appendix 1053 and 1054 is the reproduction of what was actually said about Williams.

[00:19:20] Speaker 00:
And as I said before, it all relates to the control track.

[00:19:25] Speaker 00:
Finally,

[00:19:26] Speaker 00:
She made it point that the game doesn't care what the beat marker is.

[00:19:33] Speaker 00:
is the beat marker could be responding to white noise.

[00:19:36] Speaker 00:
But that's actually not what happens.

[00:19:39] Speaker 00:
The beat marker corresponds to the music.

[00:19:42] Speaker 00:
In theory, perhaps, the beat marker could be laid down by somebody to, in some theoretical portion of the creation of the game, the beat marker could be laid down arbitrarily.

[00:19:55] Speaker 00:
And that would fall within the scope of this disclaimer.

[00:19:58] Speaker 00:
But that's not what actually happens in the accused games.

[00:20:02] Speaker 00:
which are laid down in the control track correspond to music, not time, not position, not location.

[00:20:09] Speaker 00:
And finally, Your Honor, I would just say the merely portion of the court's claim construction merely was a term that was in the claim construction originally because Ubisoft requested it be there.

[00:20:25] Speaker 00:
Not Princeton Digital, but Ubisoft requested it be there.

[00:20:29] Speaker 00:
And what's important about it, it's not that the merely was just excised from the claim construction between 2017 and

[00:20:39] Speaker 00:
summary judgment.

[00:20:40] Speaker 00:
But the distinction is, when the court omitted that word, it highlights the fact that the district court summary judgment ruling expanded the scope of the actual statements made to the patent office, just like in the Vitamix case.

[00:20:55] Speaker 00:
The 2017 construction did include the word merely, and there's no dispute about that.

[00:21:01] Speaker 00:
Ubisoft, again, insisted that it include that.

[00:21:05] Speaker 00:
And in the actual colloquy, if you look at Joint Appendix 1053 and 1054, and we cite it in our blueprints, the actual colloquy control concerns the control track.

[00:21:18] Speaker 00:
And what has happened in this case is a confusion between the music that is played during the game play and the control track that is used to create the graphics in the first place.

[00:21:29] Speaker 00:
If the graphics, the graphics do not exist without the control track, and the control track was created because a Ubisoft engineer listened to the music and created beat markers based on the beats of the music.

[00:21:45] Speaker 00:
That's the factual dispute.

[00:21:47] Speaker 00:
That was the evidence that was pointed to by a person of already skilled in art, and it was error for the district court to conclude otherwise.

[00:21:54] Speaker 00:
Thank you.

[00:21:56] Speaker 02:
Okay.

[00:21:56] Speaker 02:
Thank you, Mr. McDavid.

[00:21:57] Speaker 02:
Thank you, Ms.

[00:21:58] Speaker 02:
Marriott.

[00:21:59] Speaker 02:
The case is submitted.

[00:22:00] Speaker 02:
That concludes our session for this morning.

[00:22:05] Speaker 01:
The honorable court is adjourned from day to day.