The Federal Circuit overturned a District Court ruling that a
patent directed to automated lip synchronization and manipulation
of animated characters' facial expressions was invalid under
Section 101 as being an abstract idea. The patent disclosed that
this automation is accomplished through rules that aim to produce
more realistic speech by taking into consideration the differences
in mouth positions for similar phonemes based on context.
The Federal Circuit noted that the District Court concluded the
claims were too broadly preemptive to satisfy § 101. In the
District Court's view, because the claims were not limited to
"specific" rules, but rather purport to cover all
such rules, the claims merely call for application of the abstract
idea of using rules. 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
unpatentable because "the novel portions of [the] invention
are claimed too broadly."
The Federal Circuit disagreed that the claims were drawn to an
abstract idea, finding that the claims were limited to rules with
specific characteristics and further require applying a set of
rules to each sub-sequence of timed phonemes. The Federal Circuit
stressed that whether at step one or step two of the Alice test, in
determining the patentability of a method, a court must look to the
claims as an ordered combination, without ignoring the requirements
of the individual steps. It added that the specific, claimed
features of these rules allow for the improvement realized by the
In so doing, the Federal Circuit rejected Defendants'
argument that the claims are abstract because they do not claim
"specific" rules and that the claims simply use a
computer as a tool to automate conventional activity. Rather, the
Federal Circuit found that it was the incorporation of the claimed
rules, not the use of the computer, that improved the
existing technological process. The Federal Circuit distinguished
this case from Flook, Bilski, and Alice, reasoning that in those
cases, the claimed computer-automated process was carried out in
the same way as the prior art.
As in this case, it has become common for defendants to file a
motion for judgment on the pleadings that the asserted claims are
directed to patent ineligible subject matter under § 101. Many
of these motions have been granted. While this likely will continue
to be a common defense tactic, it is also likely that in light of
this decision, fewer of those motions may be granted. This decision
and others like it also provide guidance to practitioners and
applicants regarding what is – or more precisely, what is not
– considered to be abstract ideas.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt writing.
The PTO launched the Post Prosecution Pilot Program, which affords patent applicants an attractive alternative to the procedures currently available for responding to "finally" rejected patent applications.
The second prong of the Alice test is commonly abbreviated as requiring an "inventive concept." Of course, that same nomenclature is used by many international patent laws as a synonym for nonobviousness.
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