McRO, Inc. ("McRO") filed a lawsuit against multiple video game developers ("the Developers"), alleging that the Developers infringed three method claims of U.S. Patent No. 6,611,278 ("the '278 patent"), owned by McRO. The district court held the claims invalid for ineligibility under 35 U.S.C. § 101, but the Federal Circuit ("the Court") reversed that holding in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I). On remand, the district court held that the Developers were entitled to summary judgment of non-infringement, because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims. McRO appealed.

The Court affirmed the judgment that the Developers did not infringe the '278 patent and reversed (for a second time) the judgment that the Developers were entitled to summary judgment that the '278 patent is invalid for lack of enablement. The Court remanded for the district court to consider appropriate further proceedings in light of the Developers' offer to withdraw their invalidity counterclaims without prejudice.

            The '278 patent describes and claims a method for automatically generating animations, with a 3D appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: "phonemes" and "morph targets."

            Claim 1 is representative:

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

                    obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;

                    obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;

                    generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and

                    applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

In 2012, McRO sued the Developers for patent infringement based on the Developers' production and sale of video games that used third-party software applications to model facial animations. After claim construction, the Developers filed a motion for judgment on the pleadings, arguing that each asserted claim is invalid under 35 U.S.C. § 101. In 2014, the district court granted the Developers judgment on the pleadings and terminated the case. McRO, Inc. v. Sony Computer Entertainment America, LLC, 55 F. Supp. 3d 1214 (C.D. Cal. 2014).

The Federal Circuit reversed the district court's determination. McRO I, 837 F.3d at 1302–03. Holding that the patent does not preempt the field of rules-based animation, the Court stated that the claims were limited to rules with certain common characteristics, i.e., a genus.

In November 2018, the district court granted the Developers' motion for summary judgment of invalidity (asserted by the Developers through counterclaims). The district court noted that the Developers had identified two animation techniques—bones animation and the "BALDI system"—that are not enabled by the specification of the '278 patent. McRO, Inc. v. Namco Bandai Games America, Inc., No. CV 12-10322-GW(FFMx), 2018 WL 9410401, at *12 (C.D. Cal. Nov. 13, 2018) (Enablement Opinion). The court concluded that the Developers had provided clear and convincing evidence that "at the time of the invention, a person of skill in the art would not have the tools to practice the full scope of the 'first set of rules' limitation." The district court entered a final judgment of non-infringement and invalidity on January 9, 2019. McRO appealed.

McRO appealed the judgment of non-infringement. The parties did not dispute the construction of the term "morph weight set" ("set of values, one for each delta set, that, when applied, transform the neutral model to some desired state, wherein each delta set is the set of vectors from each vertex on the neutral (reference) model to each vertex on a model of another mouth position," as defined by the district court). However, the parties disagreed about the meaning of "vector". The Developers argued that "vectors constituting the 'delta set' must be vectors in three-dimensional space" and McRO argued that a vector is "an ordered set of numbers." The district court construed "vector" as "a vector with direction and magnitude in three-dimensional space", which was in line with the Developers' position.  On appeal, the Federal Circuit concluded that the district court was correct as a matter of law in ruling that a "vector," in the context of the '278 patent, must have "3-D magnitude and direction computed by pure subtraction/addition between the neutral and target models, with one vector corresponding to each set of two vertices." Because the parties agree that there was no infringement under this construction, the Court affirmed the district court's grant to the Developers of summary judgment of non-infringement.

McRO appealed the judgment of invalidity based on the specification's failure to enable the full scope of "first set of rules" of claim 1. On appeal, the Court pointed out that all the enablement cases on which the district court and the Developers relied, involved specific identification of products or processes that were within the scope of the claims and were allegedly not enabled. "In short, none of the cases invoked by the district court and by the Developers have involved an abstract assertion of breadth, without concrete identification of matter that is not enabled but is or may be within the claim scope. As next explained, this case, in its current posture, involves such an abstract assertion of breadth. Under our claim construction, the bones and BALDI techniques [offered by the Developers to argue lack of enablement] are non-infringing and so cannot support a non-enablement determination. And no other concretely identified animation techniques have been advanced to support the district court's and Developers' enablement analyses."

The Court reminded that 35 U.S.C. 112, first paragraph, requires enablement only of what is claimed. The enablement inquiry necessarily depends on an interpretation of the claims. Once the precise scope of the claimed invention is defined, the question is whether undue experimentation is required to make and use the full scope of the embodiments of the claimed invention.

The Court agreed with McRO that the Developers failed to identify with particularity any method of animation that falls within the scope of claim 1 and is not enabled. Two examples offered by the Developers' expert fall outside the scope of the claims and are not relevant to the enablement issue. BALDI's "parameter target values corresponding to each phoneme do not represent delta sets as construed" and BALDI's equations "do not represent the displacements of each vertex in terms of a simple xyz displacement vector." "Without any specific examples, the district court's reasoning is too abstract, too conclusory, to support summary judgment. We do not go so far as to hold that there is a triable issue of fact on enablement—instead, we vacate the judgment and remand for the district court to consider how to proceed." "Where, as here, there is at least some expert testimony supporting enablement, even if at a high level of generality . . . the district court's reasoning and the support offered by the Developers are not enough to justify summary judgment of non-enablement for the Developers." The Court concluded that a fuller set of fact-findings about what is within the scope of the claims is necessary "to decide the enablement issue."

Although it is not required to describe what is well known in the art in a patent application, patent applicants and drafters have to ensure that the specification is enabling with respect to the claims. To challenge invalidity based on lack of enablement, a challenger should identify products or processes that are within the scope of the claims and are not enabled.  


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