[co-author: Eddie Obissi]

Note: This coverage of a district court case from last year provides an overview of the patented invention, as well as the decision currently being appealed to the Federal Circuit.  In a subsequent article, we will review the parties' briefs.

On November 21, 2012, McRo, Inc., doing business as Planet Blue, initially commenced action in the District Court of the District of Delaware against a number of defendants.  Planet Blue alleged infringement of U.S. Patent Nos. 6,307,576 and 6,611,278, the latter a continuation of the former.  More defendants were added in subsequent suits, and the cases were consolidated and transferred to the Central District of California.  The defendants -- now numbering 23 -- jointly filed a motion for judgment on the pleadings based on 35 U.S.C. § 101.  On September 22, 2014, District Court Judge Wu ruled for the defendants on the motion.  Planet Blue's appeal to the Federal Circuit is currently pending.

Ever since the Supreme Court's decision in Alice Corp. v. CLS. Bank Int'l, the federal courts and the U.S. Patent and Trademark Office have struggled to apply the two-step subject matter eligibility test therein.  Last year, Federal Circuit case law refined the boundaries of § 101 to some extent.  In Ultramercial v. Hulu, the Court reiterated that a disembodied method merely using general-purpose technology (i.e., the Internet) fails to meet the requirements of § 101, while in DDR Holdings  v. Hotels.com, the Court stated that a claimed invention that is necessarily rooted in computer technology (e.g., one that changes the technology itself rather than just using it) is patent-eligible.

While distinguishable, the line between Ultramercial and DDR Holdings is fine.  Patentee and defendant arguments often boil down to whether the claims under dispute are more or less like those of one case or the other.  The present case is being viewed as an opportunity for the Federal Circuit to clarify its interpretation of § 101.  Thus, it is helpful to consider the proceedings in the District Court.

Judge Wu's patent-eligibility analysis focused on claim 1 of the '576 patent, which recites:

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.

The claimed invention relates to generating automated lip-synchronization and associated facial expression for 3D animated characters.  The prior art generally encompassed a "morph target" approach, where the 3D character's facial orientation would be represented by a vector of values ("morph weights") associated with various vertices disposed across the character's face.  The facial orientation would change based on differences in vertex values from those assigned to the face at rest.  To animate the character's speech, for example, one would manually insert the appropriate morph weights at critical times (in "keyframes") in the associated recording, and a computer program would interpolate between the facial expressions to provide a visual impression of different sounds being uttered.  This process, however, was inefficient and tedious, since many morph targets would need to be manually set in order to make the animated facial expression accurately match the recording.  Planet Blue's contribution was intended to automate this process by feeding time-aligned phonetic transcripts into a computer, and setting rules for how to apply various morph targets to manipulate the 3D character's facial expressions based on this input.

The defendants argued that, under the post-Alice § 101 framework, the claims of the patents were ineligible because they simply "set forth the previously-known animation method as a series of mathematical steps, and instruct the user to perform those steps on a computer."  To evaluate this argument, Judge Wu focused on interpreting the Alice ruling.

The first step in the Alice test is whether the claims incorporate a patent-ineligible concept (e.g., an abstract idea, law of nature, or natural phenomenon).  The second step is whether the claims also supply an 'inventive concept' that renders the claims patentable, despite the inclusion of the patent-ineligible concept.  According to this test, an 'inventive concept' is "an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself."  In considering Alice, Judge Wu observed that, "so far, the two-part test for identifying an abstract idea appears to be of limited utility, while comparisons to previously adjudicated patents -- or more precisely, to past cases' characterizations of those patents -- have done the heavy lifting."  Despite criticizing the Alice opinion as setting forth an "I know it when I see it" test, he shrugged off the implications thereof and noted "[i]n any event, the Supreme Court has spoken, and § 101 now plays an important limiting role."

Beginning his substantive analysis, Judge Wu wrote a section entitled "The Claims, In Isolation, Appear Tangible and Specific."  He observed that the claims did not appear to preempt all uses of rules for 3-D lip synchronization.  He further noted that the claims did not preempt the prior art methods of computer-assisted lip synchronization.  Thus, Judge Wu admitted that "[a]t first blush, it is therefore difficult to see how the claims might implicate the basic underlying concern that these patents tie up too much future use of any abstract idea they apply."

After making these remarks that seemed encouraging for the patentee, Judge Wu determined that "it is not enough to view the claims in isolation."  Rather, he carried out an analysis that is reminiscent of the abstraction-filtration-comparison test for substantial similarity of computer programs described in the copyright case of Computer Associates International, Inc. v. Altai, Inc.  First, he decided that in § 101 analyses, it is appropriate to remove "conventional activity."  Thus, if the elements of the claims not covered by the prior art are directed to an abstract idea, the invention can be patent-ineligible under § 101.  Such a method of claim evaluation has been called a "point of novelty" analysis.

Applying Alice to the claims, Judge Wu found the point of novelty of Planet Blue's claims to be "the idea of using rules, including timing rules, to automate the process of generating keyframes."  Working against Planet Blue throughout this analysis was its own admitted prior art.  Judge Wu was able to form a claim chart mapping most of the claim elements to features described as prior art in the '576 patent.  After making this comparison, Judge Wu characterized the point of novelty as simply using rules, rather than people, to set the morph targets in achieving the same result of 3D lip synchronization.

He noted that, in claiming the novel portion of the invention, the patentees described these concepts "at the highest level of generality."  The invention did not specify the exact rules to be applied in generating the morph targets, and stipulated that the user should set them to her preference.  Judge Wu found that, because the patent purported to claim all such rules but described just one set of example rules, the claims merely state an abstract idea and tell one to apply it.  Consequently, the claims do not supply an inventive concept under Alice.  Though his reasoning is couched in terms used by the Supreme Court in Alice, it simply masks Judge Wu's true argument -- that Planet Blue claimed its invention too broadly (Judge Wu's focus on the specification's level of descriptive detail for the determination of an 'inventive concept' is similar to the approach that we have recently seen in Internet Patents Corp. v. Active Network, Inc.).

Thus, despite his initial observation that the claims did not seem unduly preemptive, Judge Wu found that the claimed invention preempted "the field of automatic lip synchronization for computer-generated 3D animation . . . using a rules-based morph target approach."  And also despite stating that "the [§ 112] written description requirement guards against claims that merely recite a description of the problem to be solved while claiming all solutions to it" he made this finding under the auspices of § 101.  In short, Judge Wu used patent-eligibility to make a written description and enablement argument, and justified it by saying that the claims preempted what is indisputably a very narrow field.

Nor did inventiveness make the claims patentable.  Not unlike the Federal Circuit in Ultramercial, Judge Wu found that novelty does not necessarily preclude a finding of invalidity under § 101.  Evidence that one of the defendants called the invention "revolutionary" similarly failed to sway the decision.  Judge Wu declared that "for purposes of the § 101 inquiry, which is different from the § 103 inquiry, the revolutionary nature of an abstract idea does not weigh in favor of patentability."  To make this point, he cited Mayo Collaborative Services v. Prometheus Laboratories, Inc., where the Supreme Court gave Einstein's mass-energy equivalence in his Theory of Special Relativity as an example of something that would not be patentable under § 101.

Judge Wu's application of the Alice framework to the patents in dispute has been subject to criticism.  Perhaps the most comprehensive overview of this case is District Court Judge Pfaelzer's analysis in California Institute of Technology v. Hughes Communications.  Judge Pfaelzer offered three substantive critiques of Judge Wu's application of the Alice framework.

First, she asserted that Diamond v. Diehr represented an affirmative step by the Supreme Court to reject the point of novelty approach engendered in its previous decision in Parker v. Flook.  She noted that neither Bilski, nor, Mayo, nor Alice, nor any relevant precedent had revived the analysis in § 101 decisions.  Therefore it was inappropriate for Judge Wu to "dissect . . . a claim into old and new elements" when evaluating an abstract idea under the Alice framework.

Second, Judge Pfaelzer found that Judge Wu had conflated step one and step two of the framework.  By filtering the claim elements before determining that an abstract idea existed, he had ignored that Mayo and Alice dictate that an abstract idea be determined before evaluating whether the claims add "something more."  This point also makes clear that Judge Wu's prior assertion that using step two to find a patent valid means that "there was a categorization error . . . in step one," is not the case.  Rather, Judge Pfaelzer's point elucidates the notion accepted by the Supreme Court in Alice and Mayo that all inventions, to some degree, encompass abstract ideas.

Indeed, Alice, Mayo, and Diehr all require that claims should be considered "as a whole" or as "an ordered combination."  Step two of the Alice test allows conventional aspects of a claim to be ignored during the 'something more' determination.  But there is no authority for such piecemeal analysis during step one.

Third, Judge Pfaelzer attacked the functional implications of Judge Wu's approach.  Judge Pfaelzer went to some lengths to establish that software is still patentable after Alice, not only because of congressional recognition of such patents in the America Invents Act, but also because of express language in the Supreme Court's analysis in Alice.  However, she found that "it is difficult to imagine any software patent that survives under [Planet Blue's] approach."  Thus, she declared that Judge Wu's § 101 analysis of the invention "appears to reach the wrong conclusion."

Nearly all judges applying the Alice framework have noted that § 101 is a murky area of law, especially in the context of software inventions.  That being said, Judge Wu used a rationale based on a partial prior art and written description analysis to invalidate the patent under § 101.  This point of novelty approach to patentability is subjective and has led to a counter-intuitive result -- an innovative, "revolutionary" patent being struck down as "too broad," even when there is no prior art of record that discloses or suggests the claimed invention as a whole.

But even if the Federal Circuit disagrees with Judge Wu's analysis, it may come to the same ultimate conclusion.  Based on Alice, Mayo, Ultramercial, and DDR, one can craft reasonable arguments that could find Planet Blue's patent valid or invalid under § 101.  Unfortunately, this case boils down to whether the Federal Circuit truly knows a patent-eligible claim when they see it.