Princeton Digital Image Corp. v. Konami Digital Entm't, Inc.

Opinion

REPORT AND RECOMMENDATION

In these two related actions (referred to herein as the "Harmonix Action" and the "Ubisoft Action," respectively) filed by Plaintiff Princeton Digital Image Corporation ("Plaintiff' or "PDIC") against Defendants Konami Digital Entertainment Inc. ("Konami US"), Harmonix Music Systems, Inc. ("Harmonix"), Electronic Arts, Inc. ("EA"), Ubisoft Entertainment SA ("Ubisoft SA") and Ubisoft Inc. ("Ubisoft Inc." and together with Ubisoft SA, "Ubisoft"), PDIC alleges that each of the Defendants ("Defendants") directly and indirectly infringe United States Patent No. 5,513,129 (the "1129 patent").¹ Presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the constructions set out below for the five terms discussed in this Report and Recommendation.²

I. BACKGROUND

The Court incorporates by reference herein the factual and procedural background about these cases and the patent-in-suit that was set out in the Court's December 2, 2016 Report and Recommendation regarding claim construction. (D.I. 183 at 2-8)

II. STANDARD OF REVIEW

A. General Claim [*3]  Construction Principles and Legal Principles Regarding Definiteness

The Court also incorporates by reference herein the discussion of general principles of claim construction, as well as the legal standard relating to the definiteness requirement, which were set out in its December 2, 2016 Report and Recommendation. (Id. at 8-10, 22-24)

B. Principles for Construction of Means-Plus-Function Limitations

35 U.S.C. § 112, ¶ 6 ("Section 112, paragraph 6")³ provided as follows:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The "means-plus-function" technique of claim drafting is a "convenience" that allows a patentee to express a claim limitation in functional terms "without requiring the patentee to recite in the claims all possible structures" that could perform that function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (internal quotation marks and citation omitted). In exchange for getting the benefit of this drafting convenience, however, patentees must disclose, in the written description [*4]  of the patent, a corresponding structure for performing the claimed function. Noah Sys, Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012); see also Elekta, 344 F.3d at 1211 ("'[T]he price that must be paid for use of that convenience is limitation of the claim to the means specified in the written description and equivalents thereof.'") (citation omitted). A patentee satisfies this requirement "only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim." In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (emphasis added) (quoting Elekta, 344 F.3d at 1210); see also Elekta, 344 F.3d at 1220 ("The public should not be required to guess as to the structure for which the patentee enjoys the right to exclude. The public instead is entitled to know precisely what kind of structure the patentee has selected for the claimed functions, when claims are written according to section 112, paragraph 6."). "If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention as required by . . . section 112, [paragraph 2], which renders the claim invalid for indefiniteness." Blackboard, Inc. v. Desire 2 Learn Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks and citation omitted).⁴

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