On September 13, 2016, the United States Court of Appeals for the Federal Circuit (CAFC) issued a decision in the highly anticipated case McRo, Inc. v. Bandai Namco Games America. The decision found that the software patent claims at issue from U.S. Patent Nos. 6,307,576 and 6,611,278 are patent eligible subject matter under 35 U.S.C. § 101.
This case originated in a District Court in Delaware and was transferred and consolidated to the United States District Court for the Central District of California. The claims in question relate to methods for automatically animating lip synchronization and facial expression of animated characters. After holding a Markman hearing – a pretrial hearing in a U.S. District Court where a judge examines evidence from all parties on appropriate meanings of relevant key words used in a patent claim, when a plaintiff alleges infringement – the District Court granted the Defendant’s motion that all asserted claims were unpatentable. Originally the Court did not believe the claims to be directed at an abstract idea, but later determined the claims too broad and not limited to a specific set of rules, which in the eyes of the District Court meant, they were abstract ideas.
As set forth by the Supreme Court in Alice Corp. v. CLS Bank, compliance with § 101 requires the use of a two-step test to determine whether claims are patent eligible. First, one must determine if the claim at issue is directed to an abstract idea, a judicial exception, a law of nature, or a natural phenomenon. If so, the claims are then directed to the second step where one must then identify elements showing an inventive concept; whether any element or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.
After the test was applied, the District Court found “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” and that “novel portions of [the] invention are claimed too broadly.” Thus, the District Court believed the claims failed to meet § 101 requirements.
Notably, the CAFC did not side 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.” The CAFC criticized this characterization and went on to point out that the claims “define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” and “require applying said first set of rules to each sub-sequence . . . of timed phonemes.” The CAFC implied that the District Court had improperly ignored these elements stating “We have previously cautioned 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.”
In a concluding paragraph, Judge Reyan wrote:
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. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.
The CAFC concluded:
Claim 1 is not directed to an abstract idea and recites subject matter as a patentable process under § 101. Accordingly, we reverse and hold that claims 1, 7–9, and 13 of the ’576 patent and claims 1–4, 6, 9, 13, and 15–17 of the ’278 patent are patentable under 35 U.S.C. § 101.
The CAFC’s ruling has brought clarification to the muddled interpretation of § 101 and highlighted pertinent information to aid future cases through the murky waters of § 101.