When Losing is Winning at the PTAB

POPR Disclaimer Dooms Infringement

Some weeks back I explained the varied uses of Patent Trial & Appeal Board (PTAB) trial evidence in district court trial records. However, it is not necessary for a trial to occur for patent challengers to create litigation value. For example, often times a petition will apply prior art that operates in a similar fashion to the accused product.  In distinguishing that art, the Patent Owner is effectively arguing against infringement.

In such cases, a failed AIA trial petition (art distinguished) can result in ultimate victory on the ligation side.

In PDIC v. Ubisoft, (here) the magistrate judge recommended that summary judgement of non-infringement be granted in light of the plaintiff’s disclaimer of claim scope during PTAB proceedings. Because there was no genuine dispute between the parties as to how the accused products operated, the court found that the question of infringement is appropriately viewed as a “legal question of claim construction” on which summary judgment can be granted. During the Markman hearing, Ubisoft argued that plaintiff PDIC’s statements to the PTAB, distinguishing the asserted patent over a prior art reference (“Williams”), resulted in a disclaimer of claim scope. The court agreed.

In its Preliminary Response to Ubisoft’s IPR petition, PDIC argued that Williams’s “prerecorded control track” does not have control information “corresponding to an audio signal,” but rather that control information in Williams is “associated with the time, position or locations in the sound recording.” The PTAB was persuaded by PDIC and declined to institute review because the asserted patent’s “control track” that generates certain on-screen activity is based “on the content of the sound recording itself,” whereas Williams’ “control track” generated graphics based on associated “time, position, or location” in a sound recording. The court found that PDIC had disclaimed any claim scope that covers situations where “once a timer starts, the graphics are displayed irrespective of the audio content.”

The court found that in the undisputed operation of the accused products, a “human listens to a song and presses a button … in time with the beat of the music,” from which “markers or beat maps” (i.e., control tracks) are created to specify when certain graphical elements will be displayed on screen. PDIC argued that, at the very least, there is a factual dispute as to whether such control tracks “do correspond to an audio signal.”  The court found PDIC’s argument unavailing because the “intervening creation of the markers of beat maps, which are then utilized to trigger elements at the appropriate times during the song’s playback is exactly what PDIC disclaimed.” PDIC’s argument that the markers and beat maps are manually selected to correspond to a “beat” in the music ignored that the markers are then “set to correspond to times in a song, and graphics are synchronized to appear at these times.”

Because PDIC had disclaimed such a control track, and there was no material dispute that the accused products utilize the control track as taught by Williams, court recommended granting summary judgment based on PDIC’s PTAB disclaimer.

Scott A. McKeown is an author of the Patents Post Grant