The Court of Appeals for the Federal Circuit has approved, for only the third time since the Alice Corp decision in June 2014, a computer program as being patent eligible subject matter under 35 U.S.C. § 101 because the invention was an ordered combination of claimed steps for automatically animating lip synchronization, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, as not being directed to an abstract idea. MCRO Inc. v. Bandai Namco Games America Inc., Case No. 2015-1080 (Fed. Cir. Sept. 13, 2016) (Available Here). Since the June 2014 Supreme Court decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (“Alice Corp”), U.S. District Courts and the Appeals Court have invalidated over 170 computer program patents. The McRO decision represents only the third decision by this Appeals Court (the Federal Circuit which hears all patent appeals) wherein the Court has declared any type of computer patent to pass muster under the Alice Corp decision. See Bascom Global Internet Services Inc. v. AT&T Mobility LLC, Case No. 2015-1763 (Fed. Cir. June 27, 2016)(computer program patent for a content filtering system retrieved from an Internet computer network is patent eligible) and Enfish LLC v. Microsoft Corp., 2016 WL 2756255 (Fed. Cir. May 12, 2016)(a patent to a particular improvement to a database system was patent eligible under Step One of Alice Corp because the invention was directed to those specific improvements in computer technology).
In McRO, the Federal Circuit held that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, was not directed to an abstract idea and was therefore patent-eligible subject matter under § 101 and reversed the lower court’s decision.
McRO’s invention involved matching an audio voice track to on-screen animated characters. Prior art 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.” Essentially, the McRO patents seek to automate a human 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.
McRO’s patent was for a method for automatically animating lip synchronization and facial expression of animated characters. The claims define the invention and are the focal point for the patent eligible/ineligible subject matter analysis. McRO’s claim follows.
A method for automatically animating lip synchronization and facial expression of three dimensional
characters comprising: [a] 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; [b] obtaining a timed data file of phonemes having a plurality of sub-sequences; [c] 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; [d] 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 [e] 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. McRO’s ‘576 patent, cl. 1, col. 11, ll. 27-47.
The McRO defendants argued that these claims and the patent tie up too much future use of any abstract idea that they apply. They argued that the generic reference to “rules” tied up all rules for
automatically animating lip synchronization. The district court, in declaring the patent to be ineligible subject matter, “factored out conventional activity” by comparing the claims to the admitted prior art process that the patent sought to improve.
The district court was concerned that the patent preempted an entire class of automatically animating lip synchronization. In the district court’s view, because the claims were not limited to specific rules, but rather purported to cover all such rules, the claims merely call for application of the abstract idea of using rules. The district court found 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.” The district court concluded that the claims were unpatentable because “the novel portions of [the] invention [were] claimed too broadly.”
McRO argued that the Supreme Court case of Diamond v Diehr controls and that the claims were not directed to an abstract idea because they generated a tangible product, namely “a video of a 3-D character speaking the recorded audio.” McRO further argued that even if the claims were directed to an abstract idea, they were nonetheless patent eligible because they “effect an improvement in [a] technology or technical field,” specifically 3-D computer generated lip-synchronization. The claimed type of rules are only those “rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence.” McRO argued that its claims did not preempt the field because other techniques exist that automate facial synchronization by capturing actors’ facial motions and applying those motions to 3-D animated characters.
The Federal Circuit Appeals Court applies a Two-Step analytical framework the determine patent eligible subject matter under Section 101 as set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012), and Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) and as further explained in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). In Step One: The court must first “determine whether the claims at issue are directed to a patent-ineligible concept.” Alice Corp. In Step Two: if so, the court must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., quoting Mayo, 132 S. Ct. at 1298, 1297 and Myriad, 133 S. Ct. at 2116.
In Step Two, the Court considers whether the claims contain an ”inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355. The Court looks to both (a) the claim as a whole and (b) the individual claim elements to determine whether the claims contain “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”‘ Alice Corp., quoting Mayo, 132 S. Ct. at 1294.
The Federal Circuit found that the McRO claims were limited to rules with specific characteristics. As the district court recognized during claim construction, “the claims themselves set out meaningful requirements for the first set of rules: they ‘define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.”‘ They further require “applying said first set of rules to each sub-sequence … of timed phonemes.” Whether at Step One or Step Two of the Alice test, in determining the patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps. The claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus.
As for the Alice Corp preemption concern, the Court looks to whether the claims in the patent focus on a specific a means or a 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. “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.” McRO. Therefore, the computer program claims defined patent eligible subject matter under Section 101.
