June 29, 2020

Federal Circuit: Digital Guitar Instruction Patent Directed to an Abstract Idea

Holland & Knight Section 101 Blog
Allison M. Lucier
Section 101 Blog

A recent decision by the U.S. Court of Appeals for the Federal Circuit can be added to the list of cases invalidating claims under Section 101 that include "do it on a computer" limitations.

Ubisoft asserted a patent directed to "an interactive game designed for learning to play guitar." The patent explains that the invention improves upon conventional learning tools, which are limited "in the quality of instruction or the manner in which the information is presented."

The U.S. District Court for the Eastern District of North Carolina dismissed the complaint, determining that the claims were directed to the abstract idea of "teaching guitar by evaluating a user's performance and generating appropriate exercises to improve that performance." On appeal, the Federal Circuit has affirmed, finding that the claims recite an ineligible abstract idea.

The Federal Circuit's Section 101 Analysis

On appeal, Ubisoft argued that the district court had overgeneralized the claimed invention and that the "true focus" is "the specific asserted improvement in computer capabilities." In applying step one of the Mayo/Alice analysis, the Federal Circuit disagreed, stating that the asserted claims "do not recite a particular way of programing or designing software." Rather, the claims recite "nothing more than a process of gathering, analyzing, and displaying certain results." The court found that this is "no different from the ordinary mental processes of a guitar instructor teaching a student how to play the guitar." In other words, the claims amounted to nothing more than a limitation to "do it on a computer."

Turning to step two of the Mayo/Alice analysis, the court found that there was no inventive step. The court noted that nothing in the claims or the specification described a technical improvement over conventional methods. On the contrary, the specification "makes clear that the claimed invention involves merely the application of conventional computer technology to common guitar instruction techniques." Ubisoft argued that the district court was required to accept as true Ubisoft's assertion that the invention is "an improvement over the prior art." The court disagreed, finding that the district court did not have to accept "unreasoned conclusions and arguments in the absence of specific plausible allegations of supporting facts."

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