Hard Rock Life for Video Game Music Teacher

Ubisoft Entertainment, S.A. et al v. Yousician Oy
United States District Court for the Eastern District of North Carolina
Case No. 5-18-CV-383

On August 1, 2018, plaintiffs Ubisoft, who are the developers and publishers of the video game Rocksmith, as well as owners of U.S. Patent No. 9,839,852 (the ‘852 patent), filed suit against software provider Yousician Oy for learning to play musical instruments in direct, induced, and contributory infringement of plaintiffs patent.

In response, defendant filed a motion to dismiss on November 29, 2018, and argued that plaintiffs’ patent claims are directed to an abstract idea and therefore fail to cover patentable subject matter.

The ‘852 patent relates to software for learning to play a musical instrument such as a guitar. The invention critiques traditional methods and learning tools for learning to play musical instruments as being limited in quality and overall lacking. The invention instead asserts that it provides an effective method to provide a method and system for learning and practicing a musical instrument. Plaintiffs claim that the invention improves on prior art because the invention is able to assess a user’s performance and change the difficulty level of a song based on the user’s performance.

According to the Supreme Court case Alice Corp. Pty. Ltd., v. CLS Bank Int’l, laws of nature, natural phenomena, and abstract ideas are not patent-eligible. The Alice analysis proceeds by using a two-step test. The first step requires a court to determine whether the patent claims at issue are directed toward an abstract idea. If they are, then the second step is utilized which asks the court to determine whether the patent contains an “inventive concept” which goes beyond the abstract unpatentable idea alone.

Upon inspection of the ‘852 patent, the Court decided that teaching a user how to play an instrument by evaluating their performance and generating exercises to improve this performance was an abstract idea that could not be patented simply by adding the presence of a computer. The most notable potential inventive concept in the patent relates to the claim which asserts that the program is able to change the difficulty level of a song in response to an assessment of the user’s performance. However, the Court also found this idea to be too vague and lacking innovation. All of the ideas put forth by this program simply mirrored the actions that could be taken by a conventional music teacher.

The Eastern District held that the claims at issue in the ‘852 patent were directed to an abstract idea and lacked an inventive concept thereby failing the Alice test. As a result, the claims are patent-ineligible and the Court granted defendant’s motion to dismiss.

Practice Point: Abstract ideas have been a challenge for both patentees and defendants since the Alice decision in 2014.  After five years, we have begun to see clarity emerge from the Courts and the USPTO.  Recent Federal Circuit decisions emphasize the importance of a story in patent applications that may toe the line on abstract ideas.  A story of how the claimed inventions solves a technical problem and improves computing technology can sway the Judge’s opinion and save a claim that would otherwise be arguably directed to an abstract idea.  The USPTO has gone further than the courts, issuing guidance in January this year that greatly limited the circumstances where patent examiners will issue an abstract idea rejection.  Attacking claims as directed to abstract ideas remains a significant defense for those accused of patent infringement, though now it is subject to less uncertainty than before. – SK

For reference, claim 1 of the ‘852 patent reads:

1. A non-transitory computer readable storage medium with a computer program stored thereon, wherein the computer program is operable to present an interactive game for playing a song on a guitar, wherein the computer program instructs one or more processors to perform the steps of: presenting, on a display device, a plurality of fingering notations corresponding to the song to be played by a user; receiving, from a guitar input device, an analog or digital audio signal when the guitar is played by the user, wherein the received signal corresponds to the song played by the user; assessing a performance of the song as played by the user, based on the assessed performance, determining a portion of the performance that should be improved; based on the assessed performance and the determined portion of the performance that should be improved, selectively changing a difficulty level of at least a portion of the presented plurality of fingering notations corresponding to the song; and generating at least one mini-game different from the game for the song being played targeted to improving the user’s skills associated with the performance of the determined portion.

Additional Information Provided by Scott Kelly