Patent on teaching guitar found to be invalid. UBISOFT v. YOUSICIAN

Patent on teaching guitar found to be invalid. UBISOFT v. YOUSICIAN

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention.  In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office.  The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention.  A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

Even after a patent is granted, it can still be invalidated.  The subject matter to which the invention relates is one of the grounds on which a patent can be invalidated.  Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof is eligible for patent protection. §35 U.S.C. 101  There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas.

The abstract idea exception embodies the longstanding rule that an idea of itself is not patentable and it prevents patenting a result where it matters not by what process or machinery the result is accomplished.  Courts employ a two step test to determine whether a patent claim directed to an abstract idea is patent eligible.   In step one, a court
considers the claim in its entirety to ascertain whether the claim is directed to an abstract idea.  If the claim is directed to an abstract idea the court proceeds to step two. In step two, a  court looks for an inventive concept sufficient to transform the nature of the claim into a patent eligible application.

UBISOFT ENTERTAINMENT, S.A. v. YOUSICIAN OY, 19-2399 (C.A.F.C. 2020) is a case where a patent on a method of teaching guitar was found to be unpatentable because it claimed an abstract idea.

Plaintiff is one of the largest video game developers in the world. Plaintiff developed and published Rocksmith,
a computerized instructional guitar game.   Plaintiff owns U.S. Patent No. 9,839,852 which is directed to an interactive game designed for learning to play guitar.  The invention claims an improvement over conventional learning tools by evaluating the user’s abilities and adjusting the difficultly of the lessons accordingly.

Defendant is a Finnish company founded by two friends who developed a digital guitar instruction platform. In 2018, Plaintiff sued Defendant in the District Court for the Eastern District of North Carolina, alleging
infringement of the ’852 patent. In 2019, the district court granted Defendant’s motion to dismiss, concluding that the claims of the ‘852 patent are ineligible subject matter under 35 U.S.C. § 101.

The District Court found that the ’852 patent claims are not eligible subject matter because the first claim 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 did find that found that changing the difficulty level
of a song, in real time, in response to an assessment of the user’s performance was possibly inventive.  However, the patent provided no information on how the invention functioned differently than an ordinary human music teacher.

Plaintiff appealed the district court’s ruling to the Court of Appeals for the Federal Circuit.  The Federal Circuit affirmed the District Court’s decision.  The Federal Circuit noted that the ‘852 patent recited nothing more than the abstract idea of gathering, analyzing, and displaying data. The application of an abstract idea using a generic computer does not transform the invention into a patent eligible subject matter.   The Federal Circuit concluded that  the patent was merely the application of conventional computer technology to common guitar instruction techniques.

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