Widely Watched Federal Circuit McRO Decision Holds Certain Software Claims to Be Patent Eligible
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 follows:
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 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.
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Carl A. Kukkonen III
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Matthew A. Ferry
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