United States: The Federal Circuit Forms A Trio Of Patent Eligible Subject Matter For Software Methods, Reversing Finding Of Invalidity For Three-Dimensional Computer Animation Patent

Last week, the Federal Circuit again addressed when claimed methods involving software are too abstract to be patentable. The Federal Circuit in McRO Inc. v. Bandai Namco Games America held that a combination of steps using unconventional rules for speech timing and pronunciation addresses patent eligible subject matter. McRO, No. 2015-1080, 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sept. 13, 2016).

What is Abstract?

Section 101 of the Patent Act describes what can be patented, which includes "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. But a patent cannot be obtained for material directed toward "laws of nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). Otherwise, a patent could preempt all ways of achieving the patent's claimed results. Id. at 1354; see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (pre-emption would "tend to impede innovation more than it would tend to promote it"). In other words, a patent claiming a naked idea "risk[s] disproportionately tying up the use of the underlying idea[]." Alice, 134 S. Ct. at 2354–55 (citing Mayo, 132 S. Ct. at 1294). Abstract ideas include a "fundamental economic practice long prevalent in our system of commerce," a "longstanding commercial practice," and "a method of organizing human activity." Alice, 134 S. Ct. at 2355. More generally, an idea is impermissibly abstract when it is "devoid of a concrete or tangible application." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).


McRO involved two patents that claim methods for automating the generation of 3-D computer animation. In the prior art, animators decided how animated faces should appear at points in time while pronouncing words and then draw those faces. Animators did this by setting "morph weights" for different sounds (or "phonemes") that combine into a composite facial model or image. For example, an animator could choose a half-weight of 0.5 of a face pronouncing "oh" in one image, which would appear halfway been a person pronouncing "oh" and a neutral model (a blank face). For a subsequent image, the animator could select a 0.5 "oh" and a 0.5 "da," resulting in an image that appears to have begun pronouncing the next sound. Animators had to keep a detailed list of when various sounds occurred (or "keyframes"), so they could modify weights accordingly. The patents describe employing a computer to determine both which keyframes are important and to set the morph weights at those keyframes automatically. The district court granted defendants' judgment on the pleadings that both patents' asserted claims were invalid under § 101.

Tying the Claims to the Invention and Distinguishing Prior Art

The Court characterized the invention as "us[ing] rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators." McRO, at *10. The process was not merely aided by computer automation, but rather the invention was "a distinct process" to that "previously performed by humans" that "evaluat[ed] sub-sequences, generat[ed] transition parameters, and appl[ied] transition parameters to create a final morph set," rather than merely using rules to set keyframes. Id. at *29. The Court found the invention to be a novel set of rules, not simply "the automation of further tasks." Id. It noted that "the claims themselves set out meaningful requirements for the first set of rules: they 'define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.'" Id. at *25. Therefore, the Court concluded that "[t]he specific, claimed features of these rules allow for the improvement realized by the invention." Id. The Court found no evidence that the prior art process was "the same as the process required by the claims." Id. at *29.

Throughout, the Court defused the concern of preemption. The Court emphasized the importance of analyzing whether other advances in animation would be covered by the claims, stating that the patents must "focus on a specific means or method that improves the relevant technology" rather than being "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." Id. at *28. The Court noted that "[t]he claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus." Id. at *26. The Court found it "self-evident that genus claims create a greater risk of preemption, thus implicating the primary concern driving § 101 jurisprudence, but this does not mean they are unpatentable." Id. at *26-27. Even if animators automated a process of setting keyframes by rules, it would not necessarily infringe the patents. Id. at *29. And no evidence showed animators already employed "the type of rules" that the patents described. Id. Defendants also failed to show that any rules-based animation method would infringe the claims. Id. at *31-32.

The Court ultimately concluded that "[w]hen looked at as a whole, [the patented claim at issue] 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." Id. at *33.

An Extension of Enfish and DDR Holdings?

McRO may be seen as one of a trio with Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016) and DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014). Each involved patent eligible subject matter because the claims are limited and circumscribed to a novel solution; no patent merely claimed a computer implementation of a prior art solution. In Enfish, the claims described a new computer database model—one that employed self-referential tables. See Enfish, at1339. Similarly, the claims in DDR Holdings were patent eligible because they addressed an unsolved Internet problem where conventional websites would have to redirect customers for purchases of displayed products sold by third-parties. Claims related to hybrid web pages "specify how interactions with the Internet are manipulated to yield a desired result–a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257-58.


The Court reemphasized that § 101 preempts patents covering "basic tools of scientific and technological work." Alice, 134 S. Ct. at 2354. But McRO again demonstrates that logical rules can be patented provided they are novel and sufficiently narrow. Claims that track the inventive improvement over prior art limit potential preemption and are more likely to satisfy § 101. Whereas, inventions that only improve human processes by doing those same processes better through a computer remain invalid.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
1 May 2019, Conference, California, United States

Th 5th Games Industry Law Summit will kick off with two days of presentations and panel discussions by legal and business development professionals from over 30 different countries.

5 May 2019, Seminar, California, United States

Docs and Hackers is back in Mountain View! This time with a special conversation on the Legal Aspects of Starting and Scaling a Healthcare Business with Michael Esquivel, Stefano Quintini and Andrew Harper from Fenwick and West.

16 May 2019, Webinar, California, United States

J​oin Fenwick lawyers for a live 110-minute CPE webinar with an interactive Q&A. This webinar will provide tax advisers with a practical guide to calculating and reporting the Section 250 tax deduction for foreign-derived intangible income (FDII).

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions