Method claims reciting specific means or improvements to the art are patentable, while method claims directed to abstract results or effects using generic processes and machines are not
McRO, Inc. v. Bandai Namco Games America, No. 2015-1080 (Fed. Cir. Sept. 13, 2016)
The patent owner sued numerous companies alleging infringement of a patent related to automating lip synchronization and facial expression. Both the district court and the Federal Circuit considered a single method claim as representative, which included the limitation “obtaining a first set of rules.” The district court found this language to be preemptive and non-patentable. The Federal Circuit reversed.
For Alice Step 1, the Federal Circuit considered two aspects: 1) the specific limitations and 2) whether the claims were “directed to” an abstract idea. The limitations in the claims were found to not be abstract because they required that the rules be rendered in a specific way as a relationship between subsequences of certain features. In considering the specific limitations, the Federal Circuit directed that “a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” The alleged infringer’s argument that the claims “do not claim specific rules” was rejected because the claims “are limited to rules with certain common characteristics, i.e., a genus.” As a general matter, genus claims are patentable, but those claims “create a greater risk of preemption, thus implicating the primary concern driving 101 jurisprudence.” The key point is “whether the claims focus on 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.”
The claims were also not “directed to” an abstract idea. The court rejected the alleged infringers’ argument that the claims use the computer as a tool to automate conventional activity. The court recognized that the rules were performed on a general purpose computer but explained that the alleged infringers “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. This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way.”