September 19, 2016
On September 13, 2016, in McRO, Inc. v. Bandai Namco Games America Inc., et al., the U.S. Court of Appeals for the Federal Circuit upheld the patent eligibility of two patents directed to animating facial features in video games. The case involved U.S. Patent No. 6,307,576 (’576) and U.S. Patent No. 6,611,278 (’278), both titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters.” The court held that “the ordered combination of claimed steps, using unconventional rules [specified in the patent claims], is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101.” In its holding, the court only applied the first step of the two-step framework of Alice Corp. v. CLS Bank Int’l. The holding in McRO further clarifies what constitutes an abstract idea under the two-step framework of Alice and provides guidance in delineating the types of claims that are likely to be struck down as abstract from those likely to be upheld.
In Alice Corp. v. CLS Bank Int’l, the U.S. Supreme Court applied a two-step framework (now commonly known as the “Alice framework”) for analyzing whether claims are patent eligible:
First Step: Is the claim at issue directed to a judicial exception, such as an abstract idea? (If yes, proceed to second step.)
Second Step: Does the claim contain an inventive concept sufficient to transform the nature of the claim into a patent-eligible application?
In applying the first step of this two-step Alice framework, the court in McRO reemphasizes that the “abstract idea exception" prevents patenting of claims that "‘would prohibit all other persons from making the same thing by any means whatsoever.”
In its analysis, the Federal Circuit 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. Instead, the court emphasized that under the Alice framework, courts must look to the claims as an ordered combination, without ignoring the requirements of the individual steps. Recognizing that the claims at issue were broad genus claims, the court reasoned that when the claims monopolized “the basic tools of scientific and technological work” and were not directed to a “specific invention,” a preemption concern arises. However, the court concluded that although the genus claims “create a greater risk of preemption, . . . this does not mean they are unpatentable,” and instead reiterated that courts must evaluate whether the claims at issue “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.”
In analyzing the claims at issue under the first step of the Alice framework, the court reasoned that the claims in the ’576 and ’278 patents allow “computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characteristics’ that previously could only be produced by human animators” by using specific rules. In this case, the patent rules operated by defining what the patentee termed “morph weight sets as a function of the timing of phoneme sub-sequences.” The court determines that the “claimed rules . . . are limited to rules with certain common characteristics. . . .” Further, the court provides that it is “the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks” (emphasis added).
The decision states that the claimed “automation goes beyond merely ‘organizing existing information into a new form’ or carrying out a fundamental economic practice.” Instead, “[t]he claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronization, animated characters.” The court concluded that the claimed rules is one set of rules—a limitation that does not preempt all processes or techniques for automating 3-D animation that rely on rules.
Moreover, the court pointed out that “the [’576 and ’278 patents’] description of one set of rules does not mean that there exists only one set of rules, and does not support the view that other possible types of rules with different characteristics do not exist.” Thus, the defendants’ reliance on the patents’ description of one type of rules is not sufficient to show that other types of rules do not exist. Further, the decision pointed out that the “defendants provided no evidence that the process previously used by animators is the same as the process required by the claims” to show that the claims at issue simply use a computer to automate conventional activity.
The court concluded that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process . . . [that] does not preempt approaches that use rules of a different structure or different techniques” and “as a whole . . . is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques.” The court continued, “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.”
McRO was an appeal from a consolidated group of district court cases, and the district court had held the claims to be patent-ineligible on summary judgment. After reversing this decision the Federal Circuit remanded the cases back to the district court for further proceedings.
This decision is one of a series of Federal Circuit decisions that have helped to clarify the Alice framework. Here the incorporation of specific mathematical rules into the claim—rather than a general functional statement—was sufficient to survive an eligibility challenge.
For more information on this decision, please contact Fitch Even partner Steven M. Freeland.
--Written by Fitch Even attorney Jennifer V. Suarez
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