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Harmonix Music Systems, Inc., along with a host of game retailers, is asking a court in Tennessee to resume proceedings in a patent suit brought by Gibson Guitar Corporation over the "Guitar Hero" line of video games.

The suit was filed by Gibson in 2008, and alleged that the Guitar Hero games infringed U.S. Patent No. 5,990,405, entitled “System and Method for Generating and Controlling a Simulated Musical Concert Experience.” The claims in the patent were generally directed to simulating participation in a musical performance, and included the following language (claim 1) specifying a “musical instrument”:
a. a musical instrument, the musical instrument generating an instrument audio signal at an instrument audio output, the instrument audio signal varying in response to operation of the instrument by the user of the system;
Shortly after the suit was filed, it was stayed (e.g., placed on hold) because the U.S. Patent and Trademark Office (PTO) had decided to open a reexamination proceeding to reconsider the validity of the patent. It is common for courts to stay cases pending reexamination, since the outcome of the reexamination can alter the patent’s scope (or render it invalid altogether).

During the PTO reexamination, the patentee altered the scope of the claim 1 “musical instrument” as follows:

a. a musical instrument adapted for (i) making musical sounds and (ii) generating an instrument audio signal representative of the musical sounds at an instrument audio output, the instrument audio signal comprising an electrical signal output by the musical instrument that varies in response to operation of the instrument by the user of the system;
This change was made after the PTO rejected the original claim as being the same as another U.S. patent (Zimmerman, U.S. Patent No. 5,488,196, entitled “Electronic Musical Re-Performance and Editing System”). The patentee argued that the Zimmerman patent did not show a musical instrument adapted for “making musical sounds” and “generating an instrument audio signal …” as recited in the new claim 1. The PTO agreed, and indicated that it will be issuing the reexamined patent with the new claim language.

Harmonix feels that the Guitar Hero game does not have the kind of “musical instrument” that will be required by the new claim 1. In its motion asking the court to lift the stay, Harmonix indicates that once the stay is lifted, it will file a motion for summary judgment that the Guitar Hero game does not infringe on this basis.

Harmonix also indicated that it will offer a second basis for summary judgment of non-infringement. That second basis comes from a California court’s ruling in another case involving Gibson and Activision, makers of the “Rock Band” game. In that case, the California court concluded that the Gibson patent simply did not cover interactive video games, and Harmonix will ask the Tennessee court to make a similar ruling.

So now we wait and see if/when the parties take the stage again. The motion to lift the stay seems likely to be granted, since the PTO reexamination proceedings are ending. Once the stay is lifted, we will likely see Harmonix’s summary judgment motion, and that may well signal the conclusion of this case. As a caveat, though, the patentee also added a number of new claims to the patent in the reexamination process, and some of those new claims don't have the "musical instrument" language quoted in claim 1. It remains to be seen whether those new claims become the new center of attention going forward.

The case is Gibson Guitar Corp. v. Wal-Mart Stores Inc., et al., No. 3:08-0279 (M.D. Tenn.), and we’ll keep you posted as we learn more.
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