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Jury Pool: Gibson vs Guitar Hero et all, You Decide

guitar hero suitThe last time I had jury duty, I spent several hours waiting as prosecutors and defense attorneys horse-traded their way to a plea agreement behind closed doors.  Before being dismissed, the judge on the case addressed us to say thank you for our service.  Your time wasn’t wasted, she told us.  Even though we weren’t impaneled, we served a valuable role as leverage.  Our presence, and the ability to carry the case to trial it represented, was the point. 

That same kind of brinkmanship seems to be at play in an increasingly nasty patent battle being waged by Gibson Guitars at all things Guitar Gaming related.  The question is: are the lawsuits aimed at Guitar Hero and Rock Band threat enough to force a settlement, or are the patent issues so inapplicable in the eyes of the defendants that they’ll let the courts make the call.    

In court anything is possible. But having read the files and studied up on patent law, this doesn’t look like a case on the settlement path.  Readers can be their own Jury on this one.  Here are the details:

After already filing patent infringement charges against Activision over the creation of the video game Guitar Hero, last week, Gibson, the venerable guitar maker, expanded their crusade to challenge original developer Harmonix, and Rock Band creators Electronic Arts and MTV Networks (Viacom).  In a second suit, Gibson took a carpet-bomb-all-involved approach and filed suits against a swath of retailers carrying the product including Wal-Mart,, Target, Kmart, Toys R Us, and others.

At issue is patent issued Gibson on November 23, 1999 (which can be found here in PDF form) titled a “System and Method for Generating and Controlling a Simulated Musical Concert Experience.”  At stake, potentially, is a fortune in royalties if there is any merit to the case (Guitar Hero has sold more than a billion dollars worth of games and accessories to date.  Rock Band, while much newer, looks to be another blockbuster in the making).

Activision, says there isn’t merit.  They claim the suit is not justified.  They claim it’s “disingenuous.”  In their statement, Activision responded saying “Gibson waited three years to make its patent allegations, and only did so after it became clear that Activision was not interested in renewing its marketing and support agreement with Gibson.”   It’s a case of bad blood, and spite, they say.  The fact that there were other licensing agreements between the companies for the likeness of Gibson’s Les Paul guitar yet three years passed without an issue about the patent is evidence of that.

Harmonix echoed with similar sentiments saying, “It is unfortunate that Gibson unfairly desires to share in the tremendous success enjoyed by the developers of Rock Band and Guitar Hero.”

Gibson fires back that the suit is well founded, that they made a good faith effort to seek a license and the courts are now the only remedy that remains.  According to Gibson, they had “no alternative but to bring suit.”

So to the courts it is.  There it will come down to language, specific language.  Like politicians and semantics it’s all about interpretation: what was said, how it was said and where it was said.   Patents are notorious for their awkward all-inclusive prose. They aim to cast as wide a net as possible to cover everything. They’re also sometimes drafted ambiguously with a goal of insuring if one claim is invalidated the rest are independent enough to remain in force and unaffected.

Gibson’s patent, which for the case is being called the “405 Patent” after its grant number, is an exercise in the patent style.  Still, the 405’s language is clear enough that with a little instruction on how patents are interpreted, any of us can “armchair quarterback” and plays judge and jury.   Instructions and facts follow. You be the judge:

When it comes to interpreting patents, courts and experts often disagree but both have a long history of precedent to guide them.  The most recent case to comprehensively lay out the framework for interpreting patent claims was a case called Phillips v. AWH Corp (PDF) . The U.S. Federal Circuit Court ruled on the case on July 12, 2005.  At issue was to what extent a court should rely on a patent’s specifications for determining the scope of a claim.  In plain English, it was a matter of how to read a patent’s language to define what exactly the “invention” is if there’s any uncertainty. 

In the majority opinion, the court laid out hierarchy for how to proceed down that path.  The first, or highest level on their list, was the language of the claim: what specifically was defined as the invention.  If the definitions (“claims”) were vague enough to require interpretation, the courts were tasked to move down the levels of the hierarchy until a definition was found.  The second section to look at was the discussion in the patent’s specification sections.  The third test was any litigation (“patent prosecution”) history. The fourth level was outside materials like dictionaries.  Then lastly, if all failed to get a definition, a court could rely on what was called “biased extrinsic evidence” like expert testimony.

If a court, even the court of public opinion, sets out to interpret the 405 Patent, they’re tasked with following the same 5 step progression.

A full copy of the patent can be found online with the link below from the US Patent and Trademark Website, but for the purposes of a quick review, only the first of the 30 claims needs inspection.    In it, Gibson claims their invention is ‘’a system for electronically simulating participation by a user in a pre-recorded musical performance comprising:  a. a musical instrument….”  The patent goes on to discuss video components and audio switches, video tapes and digital disks. It even talks about a guitar where when the strings are hit  it changes the audio levels of the pre recorded music. 

But throughout all the claims, the language refers to musical instruments.  That means the question on which the whole case hinges is “what defines a musical instrument?” 

The five steps of the Federal Courts guidelines direct the search:

•Step 1: The first question is does the patent define what a “musical instrument” is in the claims.  The answer for the 405 Patent is no.

•Step 2: If it’s not defined in the claims, the second test is to ask what was said elsewhere in the patent.  In the 405, the background description talks about virtual reality devices.  It calls out one past example and notes that it “does not provide a simple and effective method for allowing a musician to participate in and control a “virtual environment” through the actual operation of a musical instrument, such as an electric guitar.”  It further expands that these kinds of inventions would help “musical instrument manufacturers promote the sale of their instruments by allowing a prospective purchaser to recreate a musical concert.”

Interpreting that doesn’t give a clear definition either.  But the phrasing and purpose sure makes it look like they’re talking about traditional instruments.  Using a game controller as a facsimile to sell a real instrument, after all, would suggest the controllers be like real guitars.   In Guitar Hero and Rock Band, they’re not. 

•Step 3: There’s no prior litigation to review.

•Step 4:Lacking specific definitions in the patent, a court can go to outside resources like dictionaries.  There are lots to choose from but one example is enough: “Musical instrument: any of various devices or contrivances that can be used to produce musical tones or sounds.”  

So, the fifth step isn’t needed. We have a definitive answer: a musical instrument has to make sounds or tones.  For the sake of applicability that means the controllers for Guitar Hero or Rock Band must fit the definition.  Do they?  Um…no…  Not unless you count the rhythmic tapping inadvertently caused by pushing the buttons. 

It would seem based on the five tests, and a good dictionary, the glove doesn’t seem to fit.  And as the saying goes, that means the court must acquit.  It doesn’t appear Gibson has much of a case. 


[Copies of the patent (PDF) and Gibson’s court filing are available online for those interested in seeing primary sources.  I’ve placed a copy of the court filing here on Scribd.  The ruling from Philips vs. AWH is also available in full as a PDF file]

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