McRo, Inc., dba Planet Blue v. Bandai Namco Games America, post-Alice decision finding software invention patentable, Federal Circuit 2016 (Software Patents)

This was an appeal from a grant of judgment on the pleadings that the asserted claims of two software patents, U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and 6,611,278 (‘‘the ’278 patent’’) were invalid.

The software patents relate to automating part of a preexisting 3-D animation method. A prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. To animate the character as it speaks, the method morphs the character’s expression between the models. The “neutral model” is the 3-D representation of the resting, neutral facial expression of an animated character. The other models of the character’s face are known as “morph targets,” and each one represents that face as it pronounces a phoneme, i.e., makes a certain sound. This visual representation of the character’s face making a sound is also called a “viseme.” Animation of the character and lip synchronization preexisting the invention was generally accomplished by a human animator with the assistance of a computer.

Animators used a ‘keyframe’ approach, where the artist set the appropriate morph weights at certain important times (‘keyframes’)” instead of at every frame. Animators knew what phoneme a character pronounced at a given time from a “time aligned phonetic transcription” (“timed transcript”). This listed the “occurrence in time” of each phoneme the character pronounced.

The patents automate a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes. This automation is accomplished through rules that are applied to the timed transcript to determine the morph weight outputs. The patents describe many exemplary rule sets that go beyond simply matching single phonemes from the timed transcript with the appropriate morph target. Instead, these rule sets aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.

Claim 1 of the ’576 software patent 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 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 Federal Circuit noted, as an initial matter, that claim construction is helpful to resolve the question of patentability under §101. (Malhotra Law Firm PLLC does not see how a §101 can be performed without claim analysis).  Specifically, the parties’ dispute about whether the “first set of rules” must evaluate sequential phonemes or can evaluate individual phonemes is resolved by the claim language. The Federal Circuit agreed with McRO that the claims are limited to rules that evaluate sub-sequences consisting of multiple sequential phonemes. This limitation is apparent on the face of the claims.

The defendants did not dispute that processes that automate tasks that humans are capable of performing are patent eligible if properly claimed; instead, they argued that the claims are abstract because they do not claim specific rules.

The Federal Circuit noted that the claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus, and observed that claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable. See, for example, the Supreme Court’s decision in Diamond v. Chakrabarty. Patent law has evolved to place additional requirements on patentees seeking to claim a genus; however, these limits have not been in relation to the abstract idea exception to §101. Rather they have principally been in terms of whether the patentee has satisfied the tradeoff of broad disclosure for broad claim scope implicit in 35 U.S.C. §112. E.g., Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008).

According to the Federal Circuit, the preemption concern arises when the claims are not directed to a specific invention and instead improperly monopolize “the basic tools of scientific and technological work.” Alice, 134 S. Ct. at 2354 (quoting Myriad, 133 S.Ct. at 2116). The abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where “it matters not by what process or machinery the result is accomplished.” Morse, 56 U.S. at 113; see also Mayo, 132 S. Ct. at 1301. “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.” Le Roy v. Tatham, 55 U.S. 156, 175 (1853).

A patent may issue “for the means or method of producing a certain result, or effect, and not for the result or effect produced.” Diehr, 450 U.S. 175, 182 n.7. The Federal Circuit then looked to their recent Enfish decision and stated that they, therefore, look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. Enfish,
LLC v. Microsoft Corp.; see also Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., No. 2015-1570, 2016 WL 3606624, at *4 (Fed. Cir. July 5, 2016).

Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.  The Federal Circuit disagreed with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.

It is the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks.  Alice.

This was unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way. Flook, 437 U.S. at 585–86;  Bilski, 561 U.S. at 611; Alice, 134 S. Ct. at 2356.

Further, the automation goes beyond merely “organizing [existing] information into a new form” or carrying out a fundamental economic practice.  Digitech, 758 F.3d at 1351; see also Alice, 134 S. Ct. at 2356. 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. While 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. Bilski, 561 U.S. at 603 (discussing 35 U.S.C. § 100(b)).  The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S. Ct. at 1301.

Even so, the Federal Circuit has recognized that “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules.  Claim 1 requires that the rules be rendered in a specific way: as a relationship between sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). 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. There was no showing that any rules-based lip-synchronization process must use rules with the specifically claimed characteristics.

The only information cited to the court about the relationship between speech and face shape points to the conclusion that there are many other possible approaches to automating lip synchronization using rules.

The Federal Circuit concluded that, when looked at a whole, claim 1 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. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.

Because the Federal Circuit found that claim 1 is not directed to ineligible subject matter, the Federal Circuit did not reach Alice step two. Enfish, 822 F.3d at 1339.