Lack of Enablement for Movie Species Leads to Invalidity of Generic Presentation System Claim

In Sitrick v. Dreamworks (February 2, 2008), the Federal Circuit affirmed that although the claims directed toward "user image integration and tracking for an audiovisual presentation system" were broad enough to cover both movies and video games, the claims were invalid for lack of enablement under 35 USC § 112, ¶ 1 with regard to movies. The decision "represents a continuation of a trend over the past fifteen years in the post-Markey era to restrict the scope of generic coverage of inventions," quips Professor Wegner.

According to the opinion by Circuit Judge Moore,

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 "pre-defined 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.

. . . Neither patent specification in this case teaches how the substitution and integration of a user image would be accomplished in movies. Claim 56 of the ’864 patent and claims 1, 20,1 49, 57, 58, 62, 64, and 692 of the ’825 patent provide for the "integration" or "substitution" of a visual or audio "user image" in place of a "pre-defined character image" or "character function" within a "presentation" such as a motion picture. After thoroughly analyzing both patents, the district court determined that the specifications do not disclose how the IAIS or Controller 260C would function for movies. Sitrick, slip op. at 57. We agree. The patents do not teach how to implement the "intercept logic functioning" of Controller 260C in the context of movies. The patents do not teach how the IAIS and its Controller 260C would perform such necessary steps as "selecting" and "analyzing" the predefined character image in a movie, or "integrat[ing]" or "substituting" the image in movies. As the
district court recognized, "[m]ovies do not have easily separable character functions, as video games do, and the patent does not explain how the IAIS either selects the character functions to be substituted for a user image or intercepts signals in order to effectuate the substitution." Id. at 58.

Sitrick argues that the testimony of its expert, Dr. Vacroux, creates a genuine issue of material fact as to the enablement of visual substitutions for movies. The district court correctly held that Dr. Vacroux’s opinion regarding enablement did not raise a triable issue of fact because it was: (1) "conclusory" and "unsupported by any actual information," and (2) presented by a person who "admitted to not being skilled in the art of movie making . . . ." Id. at 60-62. We agree. . . .

. . . The district court properly held that Dr. Vacroux’s equivocations regarding whether someone skilled in the art could perform the claimed "integrat[ing]" and "substituting" in movies does not create a genuine issue of material fact.