By Jeffrey H. Brochin, J.D.
Software patent’s claims were directed toward the abstract idea of teaching guitar by evaluating a user’s performance and lacked an inventive concept.
Claims software patent directed to an interactive game intended to teach users to play guitar were ineligible for protection under 35 U.S.C. §101, the U.S. Court of Appeals for the Federal Circuit has held, affirming a district court’s ruling. The claims did not recite a particular way of programing or designing software, but rather merely claimed an abstract process of teaching guitar by evaluating a user’s performance, carried out in five steps. The claims also failed to contain an inventive concept but merely applied the abstract idea using conventional and well-understood techniques (Ubisoft Entertainment, S.A. v. Yousician Oy, June 11, 2020, Reyna, J.).
Digital guitar instruction. Ubisoft Entertainment, S.A. and Ubisoft, Inc. (collectively, "Ubisoft") is one of the largest video game developers in the world, and the developer and publisher of Rocksmith, a computerized instructional guitar game. Yousician Oy is a Finnish company founded by two friends who developed a digital guitar instruction platform. On August 1, 2018, Ubisoft sued Yousician in district court alleging infringement of claims 1–4 and 6 of U.S. Patent No. 9,839,852 ("the ’852 patent"). On August 9, 2019, the district court granted Yousician’s motion to dismiss, concluding that the asserted claims were patent-ineligible under 35 U.S.C. § 101. Ubisoft’s appeal followed.
The ’852 patent. The ’852 patent is directed to an interactive game designed for learning to play guitar, and discloses an invention that improves upon conventional learning tools and sources for instructional information, such as music teachers, music books, audio tapes, and other media that are limited in the quality of instruction or the manner in which the information is presented. Claim 1, the only independent claim at issue, disclosed.
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; and assessing a performance of the songs played by the user, based on the assessed performance, determining a portion of the performance that should be improved.
Claims derived from Claim 1. Claims 2–4 and 6 derived from claim 1, such that Claim 2 recites "selectively changing a difficulty level" by changing the frequency or speed of musical notations; Claim 3 recites "selectively changing the difficulty level" in real time, during playing of the song; and Claim 4 recites a guitar that is "one of an acoustic guitar or an electric guitar." Claim 6 recites "recommending appropriate songs based on a skill level of the user as determined from past performances."
District court rationale. In granting Yousician’s motion to dismiss, the district court determined that the ’852 patent claims patent-ineligible subject matter because claim 1 "is directed toward the abstract idea of teaching guitar by evaluating a user’s performance and generating appropriate exercises to improve that performance." The district court also found that the claims failed to contain an inventive concept, and, that the only arguable inventive concept related to changing the difficulty level of a song, in real time, in response to an assessment of the user’s performance. But the district court found that concept to be vague and lacking innovation, in part because the claims and specification provided no reference to how it is to be accomplished, beyond that which a music teacher can provide.
Section 101 eligibility. The appeals court noted that although Section 101 defines patent-eligible subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," the courts have created exceptions to the scope of Section 101, including that abstract ideas are not patentable. If the claims are "directed to" an abstract idea, the court considers whether the claims contain an "inventive concept" sufficient to transform the nature of the claim into a patent-eligible application, that is, whether the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.
Abstract idea. Ubisoft argued that the district court "overgeneralized" the asserted claims as directed to the functionality of teaching guitar, and that the true focus and claimed advance of the ’852 patent was the specific asserted improvement in computer capabilities. However, the appeals court disagreed, finding that claims are directed to an abstract idea when they recite a process of gathering and analyzing information of a specified content, then displaying the results, without any particular assertedly inventive technology for performing those functions. In the instant case, the claims recited nothing more than a process of gathering, analyzing, and displaying certain results.
Lack of inventive concept. The court next analyzed whether the claims lacked an inventive concept, explaining that if a claim’s only "inventive concept" is the application of an abstract idea using conventional and well-understood techniques—for instance, a generic computer—the claim has not been transformed into a patent-eligible application of an abstract idea. Despite Ubisoft’s assertions that the claimed invention was an improvement over the prior art, nothing in the claims or the specification of the ’852 patent disclosed a technological improvement over conventional methods; rather, the patent itself made clear that the claimed invention involved merely the application of conventional computer technology to common guitar instruction techniques. That could not transform the nature of the asserted claims into patent-eligible applications of the abstract idea.
Based on the forgoing, the appeals court concluded that claims 1–4 and 6 of the ’852 patent recited ineligible abstract ideas, and it affirmed the district court’s dismissal.
This case is No. 19-2399.
Attorneys: Michelle Lyons Marriott (Erise IP, P.A.) for Ubisoft Entertainment SA and Ubisoft Inc. Jonathan Hangartner (X-Patents, APC) for Yousician Oy.
Companies: Ubisoft Entertainment, S.A.; Ubisoft, Inc.; Yousician Oy
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