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Patents for Integrating a User’s Audio Signal or Video Image Invalidated for Lack of Enablement

February 01, 2008
Del Monaco, Anthony D.

Decision icon Decision

Last Month at the Federal Circuit - March 2008

Judges: Michel, Rader, Moore (author)

[Appealed from: C.D. Cal., Judge Wilson]

In Sitrick v. Dreamworks, LLC, No. 07-1174 (Fed. Cir. Feb. 1, 2008) (revised Feb. 5, 2008), the Federal Circuit affirmed the district court’s grant of SJ of invalidity in favor of Dreamworks, LLC and a number of other defendants (collectively “Dreamworks”), and concluded that Sitrick waived his objection to the transfer order of the U.S. District Court for the Northern District of Illinois. The Court affirmed the district court’s decision and held claims 54 and 56 of U.S. Patent No. 5,553,864 (“the ’864 patent”), and claims 1, 20, 49, 57, 58, 62, 64, and 69 of U.S. Patent No. 6,425,825 (“the ’825 patent”) invalid for lack of enablement and were not infringed.

The technology at issue involves integrating a user’s audio signal or visual image into a pre-existing video game or movie. Sitrick is the inventor and owner of the ’864 and the ’825 patents. Dreamworks produces and distributes DVDs of various movies, some of which include the allegedly infringing product known as “ReVoice Studio.” The ReVoice Studio feature allows users to combine their own voice with pre-existing video images stored on the DVD.

Sitrick sued Dreamworks, alleging infringement of the ’864 and the ’825 patents. The district court granted Dreamworks’s motion for SJ on both the ’864 and the ’825 patents, finding them invalid for lack of enablement as to movies. The district court did not reach the issue of whether the asserted claims would have been enabled for video games. The district court also found the claims of the ’825 patent invalid for indefiniteness, and found there existed no triable issue of fact as to infringement of claim 54 of the ’864 patent.

On appeal, Sitrick argued that the district court erred by concluding that, for the purpose of determining enablement, it could ignore the teachings of the patents relating to video games. The Federal Circuit disagreed with Sitrick’s characterization of the district court’s opinion, finding that the district court clearly considered the entire specification and all teachings related to video games.

The Federal Circuit further noted that “[b]ecause the asserted claims are broad enough to cover both movies and video games, the patents must enable both embodiments.” Slip op. at 9. The Court concluded that Dreamworks had shown with clear and convincing evidence that one skilled in the art could not take the disclosure in the specification with respect to substitution or integration of user images in video games and substitute a user image for a pre-existing character image in movies without undue experimentation. The Court determined that the patents did not teach how to perform several necessary claim steps for movies. Furthermore, the Court pointed to the statements of Dreamworks’s two experts, who explained that one skilled in the art would not be able to take the patents’ teachings regarding video games and apply them to movies.

The Federal Circuit dismissed Sitrick’s argument that the testimony of his expert created a genuine issue of material fact as to the enablement of visual substitutions for movies. The Court found that the district court correctly held that Sitrick’s expert’s opinion regarding enablement was conclusory, unsupported, and presented by a person who admitted to not being skilled in the art of moviemaking and to not have expertise in movies. The Court stressed that “[c]onclusory expert assertions cannot raise triable issues of material fact on summary judgment.” Id. at 11.

Sitrick further argued that the district court erred in interpreting claim 54 of the ’864 patent with respect to the phrase, “the user voice parameter data is input as a model to a voice synthesizer.” Id. at 12. The district court construed claim 54 as requiring that voice parameter data be used as a model for a voice synthesizer to produce an entirely synthetic voice and not simply a playback of the user’s sample. Sitrick argued that the district court incorrectly required the synthesizer to produce “new words that the user did not actually say.” Id. at 13. The Federal Circuit disagreed, noting that the district court plainly stated that “the synthetic voice could say precisely what the user had said in the sample, and this would be within the claim, as long as the voice was not simply a playback of the user’s sample but was generated from the sample and the extracted voice parameters.” Id. The Court concluded that the district court’s claim construction was supported by the claim language itself, the specification, and the defendants’ expert. The Federal Circuit further
concluded that, applying the correct claim construction, the district court properly granted SJ that the ’864 patent failed to enable the voice synthesis required by claim 54 because Sitrick presented no evidence to contradict defendants’ argument regarding enablement for modeling a voice for reproduction by a voice synthesizer.

Finally, Sitrick argued, for the first time on appeal, that the Northern District of Illinois improperly transferred the case to California. The Court determined that in the Ninth Circuit, where the district court case was decided, objections to venue are waivable. Id. (citing Costlow v. Weeks, 790 F.2d 1486, 1488 (9th Cir. 1986)). As Sitrick litigated his case in California for more than three years and filed multiple amended complaints acknowledging that “[v]enue properly lies [in the Central District of California],” the Court held that Sitrick had waived his right to raise this issue on appeal. Id. (alterations in original).