In a unanimous decision on September 13, 2016, the Federal
Circuit in McRO, Inc. v. Bandai Namco Games America
reversed the district court's holding that certain software
patent claims were directed to ineligible subject matter under 35
U.S.C. § 101. The claims in this case were directed to
applying certain rules to automatically generate animated facial
expressions based on a sound transcript, or "phoneme
sequence." Because the claims were directed to a genus of
rules, rather than the general concept of applying rules in the
field, the Federal Circuit held there was no preemption of an
abstract idea. Thus, the claims were not directed to ineligible
subject matter under § 101.
The plaintiff McRO, Inc. sued several video game developers and
publishers for infringing U.S. Patent No. 6,307,576, which is
generally directed to animating facial expressions and lip
synchronization based on a phoneme sequence. The rules described in
the patent not only correlate the individual sound with its
illustration, but also account for previous and subsequent sounds
and their effects on the facial expressions. According to the
patent, by viewing the greater phoneme sequence, animated
characters' expressions can be made more realistic and avoid
the need for later manual edits. Representative claim 1 reads as
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
obtaining a timed data file of phonemes having a plurality of
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 defendants moved for judgment on the pleadings that the
asserted claims were directed to patent-ineligible subject matter
under § 101. The district court granted the motion
because the claims were not limited to specific rules, but rather
"purport to cover all such rules" and thus merely call
for the application of the abstract idea of using rules to lip
synchronization. The patentee appealed.
The Federal Circuit reversed. As an initial matter, the Federal
Circuit held the claim's lack of any tangible elements was not
material. Expanding on § 101 jurisprudence, the Federal
Circuit noted that the "concern underlying the exceptions to
§ 101 is not tangibility, but preemption." The
Federal Circuit reiterated its caution that district 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."
Taking a close look at the claim language, the Federal Circuit
held that the claimed "first set of rules" were not
unlimited or unbounded—rather, they must evaluate
sub-sequences consisting of multiple sequential phonemes. The
claimed rules thus did not preempt the field, but rather were
directed to a set of "rules with common characteristics, i.e.,
a genus." While genus claims may implicate enablement and
written description issues under 35 U.S.C. § 112, the
Federal Circuit explained, their breadth generally does not
implicate § 101 subject matter eligibility issues.
Thus, the "specific structure of the claimed rules would
prevent broad preemption of all rules-based means of automating
lip-synchronization, unless the limits of the rules themselves are
broad enough to cover all possible approaches." Here, the
"limitations in claim 1 prevent preemption of all processes
for achieving automated lip-synchronization of 3-D
characters." Following the earlier Enfish decision,
the Federal Circuit thus held the representative claim was not
directed to an abstract idea, and thus did not meet Alice
step one, thereby ending the inquiry.
The Federal Circuit's decision provides another data point
for software patents generally. Key to the Federal Circuit's
holding was that there are other alternatives to the claimed method
(e.g., rules that only evaluated individual phonemes). Thus,
although the representative claim was not directed to tangible
material, it claimed patent-eligible subject matter because it did
not preempt the underlying broader abstract concept.
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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