AUTOMATED PROCESSES ARE NOT INELIGIBLE SIMPLY BECAUSE THEY ARE PERFORMED ON A GENERAL PURPOSE COMPUTER
| October 4, 2016
McRO, Inc. v. Bandai Namco Games America Inc. et al.
September 13, 2016
Before Reyna, Taranto, and Stoll. Opinion by Reyna.
Summary:
McRO appealed a grant of judgment on the pleadings under FRCP 12(c) that the asserted claims of 6,307,576 (“the ’576 patent”) and 6,611,278 (“the ’278 patent”) are invalid under §101 by the District Court for the Central District of California. The District Court held that the asserted claims are directed to patent-ineligible subject matter and are therefore invalid under under §101. However, the Federal Circuit reversed the decision and held that the claims are not directed to an abstract idea and recite subject matter as a patentable process under §101 because an “order combination of claimed steps using unconventional rules” is not directed to an abstract idea and is therefore patent-eligible subject matter under §101.
Details:
The patents are directed to matching audio to a 3-D animated mouth movement to provide lip-synched animation. In the past, this process was done by an animator, which manually matches the mouth shape of a computer animation to an audio stream based on a time transcript. This process was time consuming, and manually renderings (setting values that render animations on a computer to match the audio at “keyframes” in the transcript) were subjective depending on the animator. The specification discloses that the old approach to be “very tedious and time consuming, as well as inaccurate due to the large number of keyframes necessary to depict speech.”
However, McRO’s patents automated this process by developing specific rule sets and eliminating manual intervention. They discloses determining when to set keyframes and setting those keyframes. In other words, McRO’s inventions introduced a new process, which turns a subjective method into an objective method according to rule sets.
A representative claim 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.
Dependent claims recite more details about the first set of rules and an optional secondary set of rules.
District Court:
The District Court found that the claims “too broadly preemptive to satisfy §101.” The District Court held that the claims merely call for application of the abstract idea of using rules and preempt “the field of such lip synchronization using a rules-based morph target approach.”
The Federal Circuit:
McRO argues that the claims are not directed to an abstract idea because they generate a tangible product (“a video of a 3-D character speaking the recorded audio”). In addition, McRO argues that the claims provide an improvement in a technology or technical field of 3-D computer generated lip-synchronization. Finally, McRO argues that the claims cannot preempt the field because other techniques exist that automate facial synchronization.
Defendants argue that the claims are unpatentable algorithms that “can be performed solely with pencil and paper,” and that broad preemption occurs (“preempting all possible rule-based methods).
The Federal Circuit agreed with McRO that the specification discloses an improvement of allowing computer to produce “accurate and realistic lip synchronization and facial expressions in animated characters” that previously could only be produced by human animators. In addition, the Federal Circuit held that the claimed process uses “a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters.” Furthermore, the Federal Circuit disagreed with defendants’ preemption argument, and held that the claims recite the rules be rendered in a specific way. The Federal Circuit noted that this specific structure of the claimed rules would prevent preemption of all rule-based methods for automated lip synchronization.
Therefore, the Federal Circuit held that the claims are not directed to ineligible subject matter under step 1 of the Alice test (step 2 was not discussed).
Procedural Note:
As noted above, this case is an appeal from a motion on the pleadings, which means that the record has not been fully developed. The Federal Circuit referenced to the lack of evidence in several occasions:
“Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.”
“Defendants’ attorney’s argument that any rules-based lip-synchronization process must use the claimed type of rules has appeal, but no record evidence supports this conclusion.” (for preemption arguments)
Would the decision by the Federal Circuit be different if the evidence is fully developed between the parties?
Takeaway:
This case may provide a warning to patent challengers when raising issues without evidence.
Preemption arguments turn out to be a significant part of the §101 analysis.
Technological improvements could be associated with step 1 of the Alice test, rather than step 2 of the Alice test.
Tags: §101 > automated process > judgment on the pleadings under FRCP 12(c) > preemption > technological improvement
