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Rocksmith Loses its Rock as Interactive Video Game Patent Found Invalid

Plaintiffs, Ubisoft Entertainment, S.A. and Ubisoft, Inc. (collectively, “Ubisoft”) are developers and publishers of the video game Rocksmith and own patent no. 9,839,852 (“the ‘852 patent”), which is entitled “interactive guitar game.” Ubisoft filed a complaint against the defendant, Yousician, a software provider for learning to play musical instruments, for direct, induced, and contributory infringement in violation of 35 U.S.C. § 271. Yousician moved to dismiss the complaint on the grounds that the patent is directed to an abstract idea that does not cover patentable subject matter under 35 U.S.C. § 101.

Ubisoft responded to the motion by asserting that the patent’s claims of “assessing a user’s performance for improvement and selectively changing the difficulty level of a song based on that performance, as claimed in the ‘852 patent, is an improvement on the prior art that utilizes computer programming to receive and assess audio signals from a guitar and selectively change the difficulty level to be played by the user and/or generate a different game targeted to improve the user’s skills based on the user’s performance.”

The district court first discussed the relevant standard under the Supreme Court’s Alice decision, which delineates a two-step process for “distinguishing patents that claim of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd., v. CLS Bank Int’l, 134 S. Ct. 2347, 2354-55. The first step requires the court to determine whether the patent claims at issue are directed toward an abstract idea. Id. If the court concludes the claims are directed to an abstract idea, it proceeds to the second step. Id. At the second step, the court determines whether the patent contains an “inventive concept”– that is, whether there exists “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. (internal quotations omitted).

The district court then concluded, under the first Alice step, that the patent was direct toward an abstract idea. ”The ’852 patent is directed toward the abstract idea of teaching guitar by evaluating a user’s performance and generating appropriate exercises to improve that performance. Claim one provides for the following basic steps, to be performed by a computer: 1) presenting fingering notations corresponding to a song, 2) listening to a user’s performance of that song, 3) assessing the performance and determining a portion that should be improved, 4) based on the assessment, selectively changing a difficulty level of a portion of the fingering notation, and 5) generating a “mini-game” to improve the user’s skill for that portion. A typical music teacher performs these steps when teaching a musical instrument.”

Turning to the second step of Alice, the district court noted that Ubisoft’s argument were brief. “Although plaintiffs argue that defendant has failed to provide sufficient evidence that the claims at issue are “well-understood, routine, and conventional to a skilled artisan in the relevant field,” (citing Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018)), for the reasons stated above, the court disagrees. Likewise, the claims do not “recite the specific computer programming steps that are performed on the computer,” nor does the specification “describe[] these steps as a significant technological improvement over conventional methods.” (Id. at 13-14 (emphasis added)).

Accordingly, the district court granted the motion to dismiss and found that the claims of the patent-in-suit were not patentable.

Ubisoft Entertainment, S.A. v. Yousician Oy, Case No. 5:18-CV-383-FL (W.D.N.C. Aug. 9, 2019)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or