The federal circuit recently reversed a decision in McRO, Inc. v. DBA Planet Blue that asserted claims in patents at issue, relating to a method for automatically animating lip synchronization and facial expression of animated characters, were directed to patent ineligible subject matter and thus invalid.

The McRO decision marks another significant signpost on how patent eligibility standards set forth in Alice Corp. are to be applied to software-related patents. The federal circuit, in overturning the district court’s invalidity determination, relied on the lack of preemption based on technological improvement recited in the claims. This decision provides guidance on how the preemption analysis should be applied, and gives teeth to lack of preemption arguments that may be utilized before the U.S. Patent and Trademark Office, as well as in litigation. The decision further reaffirms the requirement that courts review the claims as a whole during the eligibility/preemption analysis, and also indicates that claim construction may be necessary before an eligibility decision may be made.

The patents at issue in McRO recite an improvement in prior art lip synchronization techniques that required an animator to manually synchronize an animated character’s lips and facial expressions to specific phonemes (distinct units of sound that distinguish one word from another) using his or her subjective judgment to determine key points in the character’s speech and apply a weighted factor, or morph weight, at those key points. The claims at issue automate the lip synchronization process by applying a set of rules to determine both the key points in the character’s speech and the appropriate morph weight to be applied, without the need for manual input.

Lack of Preemption Leads to Eligibility

The federal circuit’s decision provides guidance on how preemption should be evaluated in the context of the subject matter eligibility context, as well as a benchmark for arguing that a lack of preemption supports eligibility of a patent’s claims.

In McRO, the district court found the claims at issue too broadly preemptive to satisfy the §101 eligibility requirements. Specifically, the court determined that the claims merely added the use of rules, rather than artists, to set the morph weights and transitions between phonemes in the character’s speech. The district court further determined that the claims were ineligible as not limited to specific rules and therefore preemptive of the field of lip synchronization using a rules-based approach.

The federal circuit indicated that the preemption analysis required looking to whether the claims focus on a specific means or method that improves the relevant technology, or are instead directed to a result or effect that it is the abstract idea and merely invoke generic processes and machinery. The federal circuit disagreed with the district court’s analysis, finding that the claims at issue fell in the former category based on the use of unconventional rules that were related to specific characteristics of the speech being synchronized. The court noted that it was the incorporation of the claimed “unconventional” rules, not the use of the computer that improved the existing technological process by allowing automation.

The federal circuit determined that the claims at issue required the recited rules to be rendered in a specific way, such that the specific structure of the claimed rules would prevent broad preemption of all rules based means of automating lip synchronization. Although the claims were directed to rules with certain common characteristics, i.e., a genus, the federal circuit noted that claims directed to a genus may be patent eligible. The federal circuit relied on the fact that there was no showing that all rules-based lip synchronization processes must use rules with the specifically claimed characteristics, and no evidence that the process previously used by the animators, which relied on subjective determinations rather than rules, was the same as the process required by the claims. Thus, the federal circuit deemed the claims to be eligible based on the lack of preemption.The federal circuit determined that the claims at issue required the recited rules to be rendered in a specific way, such that the specific structure of the claimed rules would prevent broad preemption of all rules based means of automating lip synchronization. Although the claims were directed to rules with certain common characteristics, i.e., a genus, the federal circuit noted that claims directed to a genus may be patent eligible. The federal circuit relied on the fact that there was no showing that all rules-based lip synchronization processes must use rules with the specifically claimed characteristics, and no evidence that the process previously used by the animators, which relied on subjective determinations rather than rules, was the same as the process required by the claims. Thus, the federal circuit deemed the claims to be eligible based on the lack of preemption.

Claims Analyzed as a Whole for Eligibility

The federal circuit criticized the district court’s preemption analysis in noting that courts must be careful to avoid oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims. Specifically, the district court attempted to factor out conventional activity by comparing to the claims to the admitted prior art. The district court then looked at each claim element individually and found that the “novel portions of the claim” were claimed too broadly for patent eligibility. The federal circuit reiterated that the court must look at claims as an ordered combination without ignoring the requirements of the individual steps. In doing so, the federal circuit determined that when looked at as a whole, the claims-at-issue were directed to a patentable, technological improvement over existing manual 3-D animation techniques.

Requirement for Claim Construction

Finally, while not going so far as to set a general rule that claim construction is required for an eligibility determination, the federal circuit noted the importance of claim construction in reaching its decision in this case. The court relied heavily on the district court’s claim construction in determining that the claims were limited to a specific set of rules to be applied. Thus, the McRO decision provides a basis for arguing that eligibility decisions under §101 require claim construction in certain circumstances to avoid early dismissal on a motion to dismiss based on lack of subject matter eligibility.

As a result, the McRO decision provides another significant precedent and tool to use when arguing for the patentability of software patents. LeClairRyan's patent prosecution attorneys will continue to monitor the district courts, federal circuit, and Patent Trial and Appeal Board for application of the 101 analysis to software patents. We will also monitor the U.S. Patent and Trademark Office's approach in view of this new precedent.