Clarifying 35 U.S.C. § 101 in McRO, Inc. v. Bandai Namco Games America
The U.S. Court of Appeals for the Federal Circuit, in McRO, Inc. v. Bandai Namco Games America, reversed the district court’s judgment on the pleadings that the asserted claims of U.S. Patent Nos. 6,307,576 (the ‘576 patent) and 6,611,278 (the ‘278 patent) were directed to patent-ineligible subject matter and therefore invalid under 35 U.S.C. § 101. The much-anticipated decision, issued on September 13, 2016, provides greater insight into identifying patent-eligible subject matter for computer-based inventions. In particular, the court highlights the significance of claim construction and preemption in conducting a patentability analysis.
The patents-in-suit, both issued to Maury Rosenfeld, relate to a method of automatically animating lip synchronization and facial expression of animated characters. The method uses a set of rules to define values for transitioning between facial expressions as a function of sequences of sounds in the speech of animated characters. According to the patentee, the prior art encompassed a “keyframe” approach, where a human animator would manually set the appropriate “morph weights” at certain important times in the transcript instead of at every frame. The claimed invention essentially “automate[s] a 3-D animator’s task, specifically, determining when to set keyframes and setting those keyframes through rules that are applied to the timed transcript to determine the morph weight outputs.”
In 2012 and 2013, patentee McRO, Inc. filed lawsuits against various video game developers and publishers (collectively, Bandai) for alleged infringement of the ‘576 and ‘278 patents. The U.S. District Court for the Central District of California granted the defendants’ motion on the pleadings that the asserted claims were directed to patent ineligible subject matter under § 101, thereby holding the patents invalid. Although admitting the claims facially did not appear to be directed to an abstract idea, the district court nonetheless found the claims too broadly preemptive to satisfy §101. The district court reasoned that because the claims were not limited to specific rules, but rather “purport to cover all such rules,” the claims merely call for the application of the abstract idea of using rules. Ultimately, the district court found that “while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach.” The district court concluded that the claims were ineligible for patent protection because the “novel portion of [the] invention are claimed too broadly.”
McRO subsequently appealed, arguing that its patents were not directed to an abstract idea and further that the specific claimed rules did not preempt the field of using rules in speech animation. Bandai, on the other hand, maintained that the McRO patents merely amounted to an automation of a preexisting process on a general-purpose computer.
Claim 1 of the ’576 patent was deemed representative and dispositive of the asserted claims for the purposes of appeal:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
In reversing the district court’s ruling, the Federal Circuit cautioned against an oversimplification of the claims. The court noted that under the Alice test, “a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps” in determining the patentability of a method. Here, the court determined that the claims are limited to rules with particular characteristics. Specifically, “the claims themselves set out meaningful requirements for the first set of rules: they ‘define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’”
Addressing the defendant’s position that the claims are abstract because they do not claim specific rules, the court explained that the claimed rules “are limited to rules with certain common characteristics, i.e., a genus.” While acknowledging a greater risk of preemption, the Federal Circuit pointed out that claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable. The preemption concern arises when the claims improperly monopolize “the basic tools of scientific and technological work.” To this end, the court shifted its attention to “whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” The court noted that preemption, not tangibility, is the underlying concern, and emphasized “the narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules.”
Ultimately, the court concluded that the specific structure of the claimed rules prevents broad preemption of all rules-based means of automating lip synchronization. The court noted that the claims focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type to be rendered in a specific way. The court explained that while the rules are embodied in computer software that is processed by general-purpose computers, there was no evidence that claims would preempt all uses of rules in 3-D animation or that they even encompassed the same process previously used by animators. In particular, the cited prior art discloses that “an animator’s process was driven by subjective determinations rather than specific, limited mathematical rules.” Moreover, “motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions.”
Significantly, the Federal Circuit rejected the assertion that the claims ““simply use a computer as a tool to automate conventional activity,” noting how “the incorporation of the claimed rules, not the use of the computer” improved the existing animation process. This, according to the Federal Circuit, differentiates the present case from that of Flook, Bilski, and Alice, where “the claimed computer-automated process and the prior method were carried out in the same way.”
As a result, the Federal Circuit held “that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101.”
In McRO, the Federal Circuit further clarified Alice and its application to computer and software-related patents. The Court reached its holding after a detailed preemption analysis in step one of the Alice test. The Federal Circuit premised its patent eligibility determination on the construction of the asserted claims, thus emphasizing the highly fact-specific nature of the Alice inquiry. Additionally, the Federal Circuit’s decision also underscores the importance of preemption in the §101 analysis.