Summary
On September 13, 2016, the Federal Circuit issued a decision in McRO, Inc. v. Bandai Namco Games America, that provides a favorable decision applicants and patentees can cite in seeking to obtain and defend claims directed to computer-implemented inventions. Specifically, the Federal Circuit held which 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.”
Accordingly, in the decision, the Federal Circuit confirmed that an ordered set of claimed steps that use “unconventional” rules in a specific way are not abstract under Alice Corp. Pty Ltd. v. CLS Bank Int’l, ___ U.S. ___, 134 S.Ct 2347 (2014).
The Technology at Issue
The patents at issue provide a method for “automatically producing accurate and realistic lip synchronization and facial expression in animated characters.” The claimed technology overcame some of the disadvantages of the prior art methods, used by human animators, which were “very tedious and time consuming, as well as inaccurate due to the large number of keyframes necessary to depict speech.” The claimed invention accomplishes automation “through rules that are applied to the timed transcript. . . .”
The District Court Decision
McRO sued numerous defendants (collectively “Defendants”), mostly video game developers and publishers, alleging that they infringed its US Patent Nos. 6,307,576 (the “’576 patent”) and 6,611,278 (the “’278 patent”). The U.S. District Court for the Central District of California granted Defendants’ motion to dismiss McRO’s suit after ruling that the asserted claims were unpatentable under 35 U.S.C. § 101, as directed to an abstract idea.
The Federal Circuit’s Analysis of the Abstract Idea Exclusion
Under the Supreme Court’s Alice decision, the Federal Circuit, district courts, and the U.S. Patent and Trademark Office employ a two-step process for assessing whether claims are directed to patentable subject matter under Section 101, namely:
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“determine whether the claim at issue is ‘directed to’ a judicial exception, such as an abstract idea” and
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“consider whether the claims contain an ‘inventive concept’ sufficient to ‘transform the nature of the claim into a patent-eligible application.’”
In its discussion, the Federal Circuit first noted “that, in this case, claim construction [was] helpful to resolve the question of patentability under § 101.” The Court agreed with McRO that “the claims [were] limited to rules that evaluate sub-sequences consisting of multiple sequential phonemes.” The Federal Circuit then turned to the question of patent-eligibility under § 101. Quoting Alice, the Federal Circuit stated that “the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the idea to a particular technological environment.” The Court further stated that “the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”
In assessing McRO’s claims, the Federal Circuit disagreed with the district court’s conclusion that the claims are “drawn to the abstract idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation.” Instead, the Federal Circuit stated that “the claims are limited to rules with specific characteristics.” The Federal Circuit recognized that the claimed rules are limited to “rules with certain common characteristics, i.e., a genus.” However, the Federal Circuit reasoned that although genus claims “create a greater risk of preemption, . . . this does not mean they are unpatentable.” To address the preemption concern, the Federal Circuit proceeded to consider 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.”
Helpfully, the Federal Circuit stated that “courts ‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims.” Noting that it was the specific features claimed that allowed for the improvement realized by the invention, the Federal Circuit emphasized that “in determining the patentability of a method, a court must look at the claims as an ordered combination, without ignoring the requirements of the individual steps.”
Echoing the discussion regarding claim constructions, the Federal Circuit pointed out that “[c]laim 1 of the ‘576 patent is focused on a specific asserted improvement in computer animation.” The Federal Circuit disagreed with the Defendants’ argument that “the claims simply use a computer as a tool to automate conventional activity” because Defendants failed to provide any evidence that “the process previously used by animators is the same as the process required by the claims.” The Federal Circuit further found that the “limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters.” The Federal Circuit also found that “there are many other possible approaches to automating lip synchronization using rules.” In conclusion, the Federal Circuit stated:
By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. . . . When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.
Finding that the asserted claims are not directed to an abstract idea, the Federal Circuit did not reach step two of Alice, and rather concluded that the claims are patent-eligible.
Patent-Eligibility for Computer-Implemented Inventions
This decision provides another helpful fact pattern for application of the first Alice step that can be used by both patent applicants and patentees.
The McRO decision follows from the Federal Circuit’s 2016 Enfish decision. Enfish, LLC v. Microsoft Corp., No. 2015-1244 (Fed. Cir. May 12, 2016). In Enfish, the claimed invention was directed “to an improvement in the functioning of a computer,” as contrasted with “simply adding conventional computer components to well-known business practices,” and thus satisfies step one of the software Alice framework. The McRO decision expands the Enfish decision by providing support for the proposition that claimed steps using “unconventional” rules in a specific way implemented on a general-purpose computer are not directed to an abstract idea, and thus are patent eligible. This rationale provides help and support for the patentability of many software patent applications, namely those that include claims reciting a specific improvement to existing technologies, even where the claims relate to “claimed rules,” and even where they are implemented by a general purpose computer. This example of use of a careful focus on the specific claim language should be helpful to many software patent applicants and patentees.
In conclusion, the McRO decision provides a favorable decision that applicants and patentees can cite in seeking to obtain and defend claims directed to computer-implemented inventions. The McRO decision, Enfish, and BASCOM Global Internet Services, Inc., v. AT&T Mobility LLC, No. 2015-1763 (upholding claims under step one of the Alice inquiry) counterbalance many post-Alice decisions that provided examples of claims that were not patentable under Alice.
In view of the continuing legal developments regarding the patentability of computer-implemented inventions, applicants and patentees continue to be well-served by developing a patent portfolio that tells a story behind inventions that provide improvements over and solutions to disadvantages of prior art technology.
