Takeaway: The Board will likely find unpersuasive arguments related to prior art where a petitioner fails to identify corresponding structure in the specification for a means-plus-function limitation.

In its Final Written Decision, the Board found that Petitioner showed by a preponderance of the evidence that claims 1-3, 5, 17, 18, and 20 are unpatentable but failed to show that claims 9-12, 14, and 16 were unpatentable. “The ’849 patent relates to providing instruction on playing a musical instrument, such as a guitar,” and in particular, “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.”

The Board first addressed the alleged anticipation of claims 1-3, 5, 17, 18, and 20 by Lee and also by Epstein. The Board did not find Patent Owner’s arguments persuasive, and instead agreed with Petitioner’s arguments as supported by its expert declaration.  Thus, the Board was persuaded that Petitioner established unpatentability of claims 1-3, 5, 17, 18, and 20 by a preponderance of the evidence.

With respect to claims 9-12, 14, and 16, the Board in its Institution Decision found that certain claim terms were not to be construed as means-plus-function limitations because of the “strong presumption that a limitation lacking the terms ‘means for’ is not subject to § 112 ¶ 6.” However, the Federal Circuit in Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), which was decided after Institution, “expressly overruled prior decisions that applied a ‘strong’ presumption.”  Instead, the Federal Circuit held 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.”

The Board reconsidered its claim construction of “proficiency sensing module” and “mode control module” in light of Williamson and the additional briefing by the parties that the Board requested.  The Board noted that the claim terms are in means-plus-function format, with the term “module” replacing “means.”  The Board also found that “module” “does not provide any indication of structure.”  Similarly, the “prefixes ‘proficiency sensing’ and ‘mode control’ [did not] impart structure into the term ‘module.’”

Patent Owner argued that structure was imparted into the terms “by reciting the input and output of each module.” However, the Board found that the inputs and outputs were described only “at a very high level (e.g., receiving signals from a guitar and comparing the received signals to expected signals).”  Citing the specification, the Board stated that “numerous structural means” could perform the recited functions.  Thus, the Board found the claim terms at issue to be means-plus-function limitations.

To analyze patentability, “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 publications.” However, because Petitioner “does not identify any corresponding structure for the ‘proficiency sensing module’ and ‘mode control module’ limitations in claim 9,” the Board found that “Petitioner also does not show that Lee or Epstein discloses the corresponding structure for those limitations or an equivalent.”  Therefore, Petitioner did not establish unpatentability of claims 9-12, 14, and 16 by a preponderance of the evidence.

Ubisoft, Inc. v. Guitar Apprentice, Inc., IPR2015-00298
Paper 24: Final Written Decision
Dated: April 1, 2016
Patent: 8,586,849 B1
Before: Kevin F. Turner, Georgianna W. Braden, and Robert J. Weinschenk
Written by: Weinschenk
Related Proceedings: Guitar Apprentice, Inc. v. Ubisoft, Inc., No. 2:13-cv-02903 (W.D. Tenn.)