McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)

By Michael Borella --

Patentee McRO sued a number of video game developers and publishers in the Central District of California and the District of Delaware for alleged infringement of U.S. Patent Nos. 6,307,576 and 6,611,278.  Several of the Delaware suits were transferred to the Central District of California, and the defendants filed a Rule 12(c) motion therein to invalidate the claims as allegedly being directed to ineligible subject matter under 35 U.S.C. § 101.  The combined cases from that court are the subject of this appeal.

But this decision is notable not only for its outcome (which we will get to shortly), but also for possibly being the most anticipated Federal Circuit § 101 decision since Ultramercial v. Hulu back in November of 2014.  Oral arguments were held on December 11 of last year, and the lag time between then and now suggests that the panel (consisting of Judges Reyna, Taranto, and Stoll) either struggled to reach consensus, or took the time to write a carefully-worded opinion.

Claim 1 of the '576 patent was deemed representative.  It recites:

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 sequence;
    obtaining a timed data file of phonemes having a plurality of sub-sequences;
    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 claimed invention relates to generating automated lip-synchronization and associated facial expression for 3D animated characters.  The prior art generally encompassed a "morph target" approach, where the 3D character's facial orientation would be represented by a vector of values ("morph weights") associated with various vertices disposed across the character's face.  The facial orientation would change based on differences in vertex values from those assigned to the face at rest.  To animate the character's speech, for example, one would manually insert the appropriate morph weights at critical times (in "keyframes") in the associated recording, and a computer program would interpolate between the facial expressions to provide a visual impression of different sounds being uttered.  This process, however, was inefficient and tedious, since many morph targets would need to be manually set in order to make the animated facial expression accurately match the recording.  "For each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right—a visual and subjective process."

McRO's contribution automates this process by feeding time-aligned phonetic transcripts into a computer, and setting rules for how to apply various morph targets to manipulate the 3D character's facial expressions based on this input.  According to the Court, "these rule sets aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context."  For instance, in the prior art, a computer would interpolate a continuous transition between two points defined by keyframes, but this transition might have an unrealistic quality.  The animator would then manually correct the problem by inserting a keyframe between the two points.  The invention, on the other hand, "uses 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."

As set forth by the Supreme Court in Alice Corp. v. CLS Bank, compliance with § 101 requires use of a two-prong test.  First, one must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.  But generic computer implementation of an otherwise abstract process does not qualify as "significantly more."  A goal of this test is to prevent one from patenting one of the judicial exclusions, and thereby preempting others from using this basic scientific tool.

When the District Court applied this test, it stated 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" and that "novel portions of [the] invention are claimed too broadly."  Thus, in the District Court's view, the claims failed to meet the requirements of the § 101 inquiry.

On review, the Federal Circuit briefly conducted claim construction, noting that "the claims are limited to rules that evaluate subsequences consisting of multiple sequential phonemes," as "[t]his limitation is apparent on the face of the claims."  Moving on to the substantive § 101 analysis, the Court reiterated that "claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter" under prong one, and "we look to both the claim as a whole and the individual claim elements" under prong two.

Notably, the Court disagreed with the District Court's conclusion that the claims are "drawn to the [abstract] idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation."  The Court criticized this characterization as oversimplifying and "failing to account for the specific requirements of the claims."  To that point, the Court pointed out that the claims "define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence" and "require applying said first set of rules to each sub-sequence . . . of timed phonemes."  The Court implied that the District Court had improperly ignored these elements.

The Court went on to state that "the claimed improvement here is allowing computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators."  Unlike the inventions in Parker v. Flook, Bilski v. Kappos, and Alice, the computer automation and the prior human-performed methods are different.  Particularly, the "computer automation is realized by improving the prior art through the use of rules, rather than artists, to set the morph weights and transitions between phonemes."  The Court clarified further, stating "processes that automate tasks that humans are capable of performing are patent eligible if properly claimed."

Addressing the defendants' position that the claims "are abstract because they do not claim specific rules," the Court stated that claims to the genus of an invention (as opposed to a species thereof) are patentable so long as they do not improperly preempt a judicial exception to § 101.  Putting it more concretely, the Court contrasted a claim drafted to only a particular outcome rather than specific steps carried out to achieve that outcome.  "A patent is not good for an effect, or the result of a certain process because such patents would prohibit all other persons from making the same thing by any means whatsoever."  But "[a] patent may issue for the means or method of producing a certain result, or effect, and not for the result or effect produced."  Thus, the question was whether McRO's claims are focused on a specific method to improve animation technology, not just the result of a generic process operated by generic machinery.  To be eligible, such a specific method should not be mere automation of a known manual process.

To answer, the Court noted that the "[d]efendants provided no evidence that the process previously used by animators is the same as the process required by the claims."  Particularly, the "animator's process was driven by subjective determinations rather than specific, limited mathematical rules."  The prior art activity of setting keyframes at the point that phonemes were pronounced was not "within the scope of the claims because it does not evaluate sub-sequences, generate transition parameters or apply transition parameters to create a final morph weight set."  As a result, claim 1 does not preempt "all processes for achieving automated lip-synchronization of 3-D characters."  For instance, "motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions."

Digging further, the Court addressed the concern of "whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules."  But due to the fact that the claims require the rules to reflect "a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing," such broad preemption is avoided.  Indeed, the Court pointed to academic literature indicating that other types of rules could be developed.  Thus, future discoveries in the field are not foreclosed.  The Court also noted that "[w]hile the result may not be tangible, there is nothing that requires a method be tied to a machine or transform an article to be patentable."

As a consequence, claim 1 and the other claims under review were found to be non-abstract under prong one of Alice.  The Court did not have to address prong two to find the claims patent-eligible.

This case provides ample fodder for rebutting § 101 challenges, and there are a handful of observations to be made:

• Preemption played a large role in the Court's reasoning.  Here, it was a deciding factor in whether the invention was abstract vis-à-vis prong one.  The USPTO has downplayed preemption in its § 101 guidance, and has provided little advice to examiners on how to respond to non-preemption arguments.  Perhaps that will change?

• Here, as well as in Enfish v. Microsoft, the Court has reiterated that the § 101 analysis must not be divorced from the specific language of the claims.  This is a promising turn of events, as doing so adds objectivity to the § 101 inquiry, and prevents claims from being viewed as abstract by ignoring critical details therein.

• The open issue of whether an invention that automates a manual process is patent-eligible may have been answered.  In the past, the Court has addressed this concern in view of claims there were quite broad and vague (see, e.g., OIP Technologies v. Amazon.com), and has found such claims ineligible even if they render results more rapidly and accurately than those performed by humans.  Here, the Court clarifies that there is a difference between merely automating a known manual process and automating a process that is not known to have been previously performed manually.  The latter can be patent-eligible.  Thus, a critical eligibility distinction has been made between processes that have been performed manually and processes that could be performed manually.

In any event, today has brought some extent of clarification to the § 101 morass.

McRO, Inc. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)
Panel:  Circuit Judges Reyna, Taranto, and Stoll
Opinion by Circuit Judge Reyna

Comments

[skeptical]

My biggest problem with the decision is that it is an absolute mush and a false rehashing of the actual history of the prior Supreme Court decisions in an attempt to make the 101 jurisprudence seem to be on some steady evolving course of clarity (where no such clarity is indeed possible given the actual decisions).

For example, conveniently left out in the retelling was that Benson and Flook were cabined by Diehr (see Bilski), and yet, the very parts cabined are being reborn and placed next to Diehr as if there is no disparity.

Instead of new and actual clothes, we are just being asked to admire the "new" nakedness of this season's fashion line as some "improvement" over last season's fashion line of nakedness.

Anyone who actually studies the Supreme Court decisions - including noting exactly who said what when (and why) would quickly realize the falsity in the "new" narrative.

As another example, the "warning" in Chakrabarty is conveniently nowhere to be seen.

[GrzeszDeL]

I bet when you guys originally launched a "Biotech & Pharma Patent Law & News Blog," you had no idea how much time you would end up spending to cover § 101 software cases. It is funny how the SCotUS had brought us pharma types together with the software people.

[Mike Borella]

My humble suggestion for a new tag line:

"Patent Docs: Biotech, Pharma, Software, and Business Methods"