Is the tide turning? Federal circuit says lip synchronization is not abstract.
The United States Court of Appeals for the Federal Circuit has issued a decision in the much anticipated case McRo, Inc. v. Bandai Namco Games America, which found that the software patent claims at issue were not directed to an abstract idea and therefore are patent-eligible subject matter under 35 U.S.C. 101.
This case reached the federal circuit from the United States District Court for the Central District of California (having been transferred from Delaware and consolidated). After holding a Markman hearing—a pretrial U.S. District Court hearing in which a judge considers evidence on the appropriate meanings of key words used in a patent clam in a patent infringement case—the district court granted the defendants’ motion on the pleadings that all asserted claims were unpatentable. The district court said that the claims, on their face, do not seem to be directed to an abstract idea, but ultimately determined that the claims were too broad and not limited to a specific set of rules, which in the mind of the court meant they were abstract ideas. Ultimately, the court found that while the claims do not preempt the field of lip synchronization for computer-generated 3D animation, the claims did preempt lip synchronization using a rules-based morph target approach.
The federal circuit panel of Judges Jimmie V. Reyna, Richard G. Taranto and Kara Farnandez Stoll reversed. Judge Reyna delivered the opinion for the panel.
The patents in question relate to automating a part of a 3D animation method. Essentially, the patents cover lip synchronization of animated characters so that the lips of the animated character
move in a normal fashion to the point where the animated character’s lips can be read.
In the prior art, to animate the character as it speaks, the method morphs the character’s expression between models—for example, with the “neutral model” that 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 makes a certain sound (i.e., pronounces a phoneme). The soft ware patents at issue criticize the preexisting approaches as tedious and time consuming, as well as inaccurate.
The invention covered in the patents in question aims to automate a 3-D animator’s tasks. Automation is accomplished through rules applied to the timed transcript to determine the morph weight outputs. The patents describe many exemplary rule sets that go beyond matching single phonemes from the timed transcript with the appropriate morph target. As a result, the rule aims to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.
At the outset of the federal circuit discussion, Judge Reyna noted that in this case the claim construction carried out by the district court was “helpful to resolve the question of patent eligibility under Section 101.” This statement almost sounds out of place until you realize that most times, district courts do not engage in a claim construction analysis prior to determining whether the claims are patent eligible. It is astonishing that any court could even attempt to determine whether a claim is patent eligible because it merely covers an abstract idea without first engaging in a thorough analysis of what the claim actually covers. Merely looking at a claim on its face and pretending to be able to determine what is covered is the type of analysis one would expect from the uninformed, not something that ostensibly passes for justice.
After going through a two-plus-page recitation of the law, Judge Reyna summarized the district court holding that the claims were drawn to an abstract idea of automating rules-based use of morph targets and delta sets for lip synchronization in 3D animation. Reyna explained that the federal circuit disagreed with that determination, reminding the district court that the circuit has cautioned courts to carefully “avoid oversimplifying the claims.” Reyna said these claims are specifically “limited to rules with specific characteristics.”
When addressing the rules’ specific limitations, the federal circuit in McRo did not cite to Enfish v. Microsoft, but did observe: “The specific, claimed features of these rules allow for the improvement realized by the invention.” Recall that the patents at issue in Enfish explained that the claimed invention in that case was an improvement, which the federal circuit would make a
great deal about in its patent eligibility analysis. The circuit explained in Enfish that the claims at issue plainly focused on improvements to computer functionality. This led the Enfish panel to unanimously conclude, “the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice (the landmark 2014 case so damaging to software patents). Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”
It would seem that again, the fact the claims covered an improvement was to some extent pivotal in the circuit’s analysis. For example, Judge Reyna wrote: “As the specification confirms, 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.”
There is no denying that rules at issue in the ‘576 patent claims being viewed as specific and limiting played an important role in the outcome of this case. However, it is hard to ignore the fact that the federal circuit again noted the innovation at issue was an improvement. This should give patent practitioners important clues into how to characterize software-related innovations so as to maximize the likelihood of prevailing in Alice-inspired challenges and rejections.
Hopefully, the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable. The tide seems to be turning relating to patent eligibility, and it is time for the patent office to both instruct patent examiners and demand that examiners follow the law. Enfish,
BASCOM, Rapid Litigation Management and now McRo represent a trend. Examiners claiming these cases are an aberration and that they won’t be followed is unacceptable