Sitrick v. Dreamworks, LLC

• Citation: 516 F.3d 993
• Decision Date: 01 February 2008
• Docket Number: No. 2007-1174.,2007-1174.
• Parties: David H. SITRICK, Plaintiff-Appellant, v. DREAMWORKS, LLC, New Line Productions, Inc., New Line Home Entertainment, Inc., Warner Music Group, Inc., Warner Bros. Records, Inc., Warner-Elektra-Atlantic Corporation, Warner HM Video (Doing Business as Warner Reprise Video), Warner Brothers Entertainment Incorporated, and Warner Brothers Pictures, Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

516 F.3d 993

David H. SITRICK, Plaintiff-Appellant, v. DREAMWORKS, LLC, New Line Productions, Inc., New Line Home Entertainment, Inc., Warner Music Group, Inc., Warner Bros. Records, Inc., Warner-Elektra-Atlantic Corporation, Warner HM Video (Doing Business as Warner Reprise Video), Warner Brothers Entertainment Incorporated, and Warner Brothers Pictures, Defendants-Appellees.

No. 2007-1174.

United States Court of Appeals, Federal Circuit.

February 1, 2008.

Keith. V. Rockey, Rockey, Depke, Lyons & Kitzinger, LLC, of Chicago, Illinois, argued for plaintiff-appellant. On the brief was Kathleen A. Lyons.

Jeffrey Martin Olson, Sidley Austin LLP, of Los Angeles, California, argued for defendants-appellees. With him on the brief were Robert A. Holland and Samuel N. Tiu,

Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.

MOORE, Circuit Judge.

David Sitrick (Sitrick) appeals the Unit ed States District. Court for the Central District of California's judgment that the asserted claims of his two patents are invalid for lack of enablement, indefinite, and not infringed. He also appeals the order of the United States District Court for the Northern District of Illinois transferring the case to the Central District of California. We affirm the Central District of California's judgment of invalidity and conclude that Sitrick waived his objection to the Northern District of Illinois's transfer order.

BACKGROUND

The technology at issue involves integrating a user's audio signal or visual image " into a pre-existing video game or movie. Sitrick is an individual inventor and owner of U.S. Patent Nos. 5,553,864 (the '864 patent) and 6,425,825 (the '825 patent). The Defendants produce and distribute 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 Defendants in the Northern District of Illinois, alleging infringement of claims 54 and 56 of the '864 patent and claims 1, 20, 49, 57, 58, 62, 64, and 69 of the '825 patent. The Northern District of Illinois granted Defendants' motion under 14 U.S.C. § 1404(a) to transfer the case to the Central District of California (district court). After the case was transferred, the first and only time Sitrick challenged the transfer order arose in this appeal. Sitrick filed multiple amended complaints after transfer, which acknowledge that "[v]enue properly lies [in the Central District of California]."

Defendants filed a motion for claim construction and moved for summary judgment on a number of grounds. The district court engaged a Special Master, who issued a report on each of the pending motions. The Special Master's cursory report regarding Defendants' motion for summary judgment of invalidity for lack of enablement included no discussion of the asserted claims. The Special Master nonetheless recommended denying the motion because neither Sitrick nor Defendants presented specific evidence regarding the level of ordinary skill in the art.

The district court declined to adopt the Special Master's recommendation and in a detailed and thorough opinion granted summary judgment in favor of Defendants because it found all asserted claims of the '864 and '825 patents invalid for lack of enablement as to movies. Sitrick v. Dreamworks, LLC, No. 03-4265 (N.D.Cal. July 21, 2006). The district court did not reach the issue of whether the asserted claims would have been enabled for video games. Id. at 73. 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. Id. at 17, 84-91.

The asserted claims encompass both video games and movies. The '864 patent states that the system "provides an environment whereby a user can create a video or other image . . . and whereby the user created image . . . can be communicated and integrated into the audiovisual presentation, and game play of a video game." '864 patent col.1 ll.54-62. The '825 patent states that "[t]his invention relates to predefined video and audiovisual presentations such as movies and video games." '825 patent col.1 ll.9-10: The Summary of the Invention provides that the "present invention encompasses an entertainment system capable of integrating images into a predefined audiovisual presentation" through use of a "controller" said to receive audio and video signals from any source and that "analyzes the audio and video signals and modifies the signals to integrate the user image into the audiovisual presentation." Id. at col.2 ll.30-45. Despite his arguments on appeal, Sitrick has conceded that the asserted claims encompass , movies. He convinced the district court to deny Defendants' request that the claims be limited to video games. And he accused Defendants' movies of infringing the claims by incorporating computer-generated effects during production. The '825 patent characterizes as "crude" prior art systems in amusement parks that use a "blue screen, [and] a compositing computer system" to incorporate audience members into a movie clip. Id. at col.2 ll.20-27. In such prior art, the "audience member's image [merely] overlays the movie clip and is not blended into the movie." Id. According to the '825 patent, "[u]sing this approach, there can be no realistic interaction between the audience member and the cast in the movie clip." Id.

The patents also describe "user images" that consist of audio information. The '864 patent states that "[a]udio signals go beyond simple spoken words and phrases." '864 patent col.6 ll.3-4. The audio signals "can be analyzed and processed to generate voice parameters which are then used by the system to synthetically generate a voice corresponding to and sounding like the audio signals from which the voice parameters were modeled (e.g., the actual user's voice, tonal quality, pitch, etc.)." Id. at col.6 ll.4-9. The Special Master construed the term "voice synthesizer" in claim 54 to mean "any computerized electronic apparatus for the production and control of a voice sound." The district court rejected this construction because it read out of the claim the limitation "that the synthesizer must `model' the inputted voice sample." Sitrick, slip op. at 11. Thus, the district court determined that claim 54 of the '864 patent is directed to "voice parameter data. [that is] used as a model for a voice synthesizer to produce an entirely synthetic voice." Id. at 68.

Claim 56 of the '864 patent and all asserted claims of the '825 patent require "integration" or "substitution" of a visual or audio "user image" in place of a "predefined image," "pre-defined character image," or "character function" within a "presentation." The patents describe this "integration" or "substitution" as being performed by an "Intercept Adapter Interface System" (IAIS), which the district court found "the most fundamental part of both the '864 and '825 patents." Id. at 56. In a video game system, the IAIS functions to intercept address signals coming from the video game apparatus and going to the game card or storage card. If address signals correspond to the character functions that are to be replaced with a user image, the IAIS reconfigures the signals so that when the signal gets to the game card or storage card, the user image is substituted for the predefined character image.

The patents state that they are applicable to any "audiovisual image source [that] provides an audiovisual presentation output such as video (video cassette player or recorder, cable or broadcast television, laser disk, audiovisual, digital video tape, formatted image data [e.g., PICT] ), audio tape or disk, which output is coupled to a display." '825 patent col. 17 ll.3-8. The IAIS "analyzes the output of the image source . . . and identifies and intercepts selected predefined character images of the audiovisual presentation" and substitutes a user image. Id: at ll.9-13. The IAIS "allows for the replacement of the user image for the pre-existing character image in the presentation. Thus, it is the IAIS that operationalizes the invention." Sitrick, slip op. at 56, Unlike video games, "[p]re-existing movies do not employ discrete address and control signals, or any other means for requesting separate image segments to be assembled into the character or the overall image that appear within each frame of the presentation." Id. at 59:

The district court found that despite the importance of the IAIS, the patents do not explain how it would function outside of a video game. For movies, the '825 patent explains that:,

[t]he controller 260C also provides intercept logic functioning as discussed elsewhere herein such that the adapter interface system 110C additionally provides the intercept function, whereby the adapter interface system 110C selectively substitutes user image data for predefined character image data so as to provide an audiovisual presentation that includes, the image integrated therein. The intercept function analyzes the signals to determine when it's appropriate to make substitutions of user image data for predefined game character data.

'825 patent col.24 ll.56-65. In the figure illustrating this process, the controller 260C is represented by a blank box as illustrated below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Id. at fig.4C. The '825 patent states that:

There are numerous ways to implement the analysis system 260. For example, address and/or control and/or data signal analysis, timing analysis, state analysis, signature analysis, or other transform or analysis techniques can be utilized to identify when particular predefined player graphic character segments are being accessed and transferred to the video game apparatus. . . .

Id. at col.22 ll.47-54 (emphasis added). The...