By Mark Engstrom, J.D.
Two patents on a method for automatically producing realistic animations of synchronized lip movements did not encompass an unpatentable an abstract idea, the U.S. Court of Appeals for the Federal Circuit has ruled. The contrary judgment of the district court was therefore reversed (McRO, Inc. v. Bandai Namco Games America Inc., September 13, 2016, Reyna, J.).
The district court awarded judgment on the pleadings to 24 defendants—mostly developers and publishers of video games—after finding that 15 claims of two McRO patents (U.S. Patent Nos. 6,307,576 and 6,611,278, titled "Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters") were invalid abstract ideas. According to the district court, the asserted claims described the application of an abstract idea—"using rules"—because the claims were not limited to specific rules, but instead purported to cover "all such rules." Ultimately, the district court found that the claims were unpatentable because the novel portions of the invention were claimed too broadly.
The Federal Circuit disagreed with the district court’s finding. According to the Federal Circuit, the ordered combination of the claimed steps, "using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets," was not directed to an abstract idea. Therefore, the asserted claims contained patent-eligible subject matter under 35 U.S.C. §101.
The appellate court found that the claimed improvement over the prior art was the computer production of "accurate and realistic lip synchronization and facial expressions in animated characters"—processes that previously could be produced only by human animators. Computer automation was realized, the court explained, by improving the prior art through the use of rules, rather than artists, to set "morph weights" and "transitions between phonemes." The claimed rules were limiting because they defined morph "weight sets" as a function of the timing of phoneme sub-sequences.
The defendants argued that the asserted claims were abstract because they did not claim specific rules, but the Federal Circuit disagreed. The claimed rules were limited to rules with common characteristics—a genus—and claims to the genus of an invention, rather than a particular species, were patentable, according to the court.
A preemption concern arose when claims "improperly monopolize[d]" the basic tools of scientific and technological work, the Federal Circuit explained. Because a patent could issue for the means or method of producing a certain result or effect, and not for the result or effect that was produced, the court considered whether the asserted claims focused on a specific means or method that improved the relevant technology, or were instead directed to a result or effect that itself was the abstract idea.
The representative and dispositive patent claim—Claim 1 of the ’576 patent—focused on a specific improvement in computer animation: the automatic use of rules of a particular type, the court observed. Although the claimed rules were embodied in computer software that was processed by general-purpose computers, the defendants failed to provide any evidence to show that the process that was previously used by the prior art animators was the same process that was required by the claims.
McRO noted that animators would initially set "keyframes" on an animation, at the point that a phoneme was pronounced, to represent the corresponding morph target as a starting point for further fine tuning. However, that activity—even if it was automated by rules—would not lie within the scope of the claims because it failed to evaluate sub-sequences, generate transition parameters, or apply transition parameters to create a final morph weight set. The incorporation of the claimed rules, not the use of a computer, improved the existing technological process, the court explained, and that improvement was achieved by allowing the automation of further tasks.
Further, the automation went beyond the mere organization of existing information into a new form or the implementation of a fundamental economic practice. According to the court, the claimed process used a combined order of specific rules that rendered information into a specific format that was used and applied to create the desired results: a sequence of synchronized, animated characters.
Although the desired result may not have been tangible, nothing required a patentable method to be tied to a machine or to transform an article, according to the court. Significantly, the concern behind the patentability exceptions to §101 was not tangibility, but preemption, and in this case, the narrow concern was whether the claimed genus of rules preempted all techniques for automating the 3-D animation that relied on rules.
In the court’s view, Claim 1 required that the rules be rendered in a specific way—as a relationship between subsequences of phonemes, timing, and the weight to which each phoneme was expressed visually at a particular time, as represented by the morph weight set. The specific structure of the claimed rules would prevent the broad preemption of all rules-based means of automating lip synchronization, the court explained, unless the limits of the rules themselves were broad enough to cover all possible approaches.
In this case, the evidence did not show that a rules-based lip-synchronization process had to use rules with the specifically claimed characteristics. The defendants’ argument that any rules-based lip-synchronization process had to use the claimed type of rules was appealing, but the record was devoid of any evidence that supported that conclusion.
Ultimately, the Federal Circuit decided that, when considered as a whole, the representative claim was directed to a patentable, technological improvement over the existing techniques for manual 3-D animation. The claim used limited rules in a process that was specifically designed to achieve an improved technological result in conventional industry practice, the court observed. Therefore, the representative claim was not directed to an abstract idea. Because the representative claim was not directed to ineligible subject matter, the second step of Alice was not considered.
The case is Nos. 2015-1080, 2015-1081, 2015-1082, 2015-1083, 2015-1084, 2015-1085, 2015-1086, 2015-1087, 2015-1088, 2015-1089, 2015-1090, 2015-1092, 2015-1093, 2015-1094, 2015-1095, 2015-1096, 2015-1097, 2015-1098, 2015-1099, 2015-1100, and 2015-1101.
Attorneys: Jeffrey A. Lamken (MoloLamken LLP) for McRO, Inc., d/b/a Planet Blue. Sonal Naresh Mehta (Durie Tangri LLP) for Electronic Arts Inc.; Capcom USA, Inc.; Activision Publishing, Inc.; and Blizzard Entertainment, Inc. Edward R. Reines (Weil, Gotshal & Manges LLP) for Bandai Namco Games America Inc.; Sega of America, Inc.; Disney Interactive Studios, Inc.; Neversoft Entertainment, Inc.; Treyarch Corporation; Atlus U.S.A., Inc.; Infinity Ward, Inc.; LucasArts, a Division of LucasFilm Entertainment Company Ltd. LLC; and Warner Bros. Interactive Entertainment, a Division of Warner Bros. Home Entertainment Inc. Basil Trent Webb (Shook, Hardy & Bacon, LLP) for Naughty Dog, Inc.; Sony Computer Entertainment America LLC; and Sucker Punch Productions, LLC. Wendy J. Ray (Morrison & Foerster LLP) for Konami Digital Entertainment, Inc., and Square Enix, Inc. Andrew David Tsu (Spach, Capaldi & Waggaman LLP) for Obsidian Entertainment, Inc. Jan Patrick Weir (Michelman & Robinson, LLP) for Valve Corporation. Kevin W. Kirsch (Baker & Hostetler LLP) for Codemasters, Inc.; Codemasters USA Group, Inc.; Codemasters Software Inc.; and The Codemasters Software Company Limited.
Companies: McRO, Inc., d/b/a Planet Blue; Electronic Arts Inc.; Capcom USA, Inc.; Activision Publishing, Inc.; Blizzard Entertainment, Inc.; Bandai Namco Games America Inc.; Sega of America, Inc.; Disney Interactive Studios, Inc.; Neversoft Entertainment, Inc.; Treyarch Corporation; Atlus U.S.A., Inc.; Infinity Ward, Inc.; LucasArts, a Division of LucasFilm Entertainment Company Ltd. LLC; Warner Bros. Interactive Entertainment, a Division of Warner Bros. Home Entertainment Inc.; Naughty Dog, Inc.; Sony Computer Entertainment America LLC; Sucker Punch Productions, LLC; Konami Digital Entertainment, Inc.; Square Enix, Inc.; Obsidian Entertainment, Inc.; Valve Corporation; Codemasters, Inc.; Codemasters USA Group, Inc.; Codemasters Software Inc.; The Codemasters Software Company Limited
MainStory: TopStory Patent FedCirNews
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