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Federal Circuit Lays Out Another Piece of the Software Patent Eligibility Puzzle
September 29, 2016
Carter, DeLuca, Farrell & Schmidt, LLP
Most patent practitioners would agree that, fundamentally, software patent claims are directed to patent eligible subject matter. Those same patent practitioners may not agree, however, if asked whether a court would find a particular set of software patent claims to be patent eligible. This uncertainty amongst patent practitioners is borne from the highly volatile legal landscape now encompassing software patent claims in the wake of Alice Corp. v. CLS Bank Int’l1 (“Alice”).
In Alice, the Supreme Court laid out a specific framework for analyzing patentable subject matter with one stark exception; it never set forth specific criteria for determining what constitutes an “abstract idea” and essentially adopted Justice Potter’s “I know it when I see it” approach.2 Notably, since Alice was decided in 2014, only two examples of software patent claims have been held to recite patent eligible subject matter by the Federal Circuit: DDR Holdings v. Hotels.com3 and Enfish. Indeed, most decisions since Alice have identified what is not patent eligible, leaving practitioners at a loss to define what is patent eligible. At best, practitioners have been pinning their hopes on drafting claims that avoid similarities to those on the ever growing list of non-patent eligible claims and where possible, identifying similarities to the claims from DDR Holdings or Enfish.
Ever since oral arguments were heard back in November of 2014, patent practitioners have been eagerly awaiting the decision of the Court of Appeals for the Federal Circuit (“CAFC”) in McRO, Inc. v. Bandai Namco Games America Inc. (“McRO”). In a decision that surely made McRO’s attorneys’ collective heads ache, the district court found first that “[f]acially, these claims do not seem directed to an abstract idea. They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process.”4
1 134 S.Ct. 2347 (Fed. Cir. 2014).
2 See also, Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2014) (stating that “[t]he Supreme Court has not established a definitive rule to determine what constitutes an ‘abstract idea’ sufficient to satisfy the first step of the Mayo/Alice inquiry.”) (“Enfish”).
3 773 F.3d 1245 (Fed. Cir. 2014).
4 Dist. Ct. Patentability Op., 55 F. Supp. 3d 1214, 1224.
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Next the district court found that “the claim adds to the prior art . . . the use of rules, rather than artists, to set the morph weights and transitions between phonemes.”5 Despite these findings, however, the district court nonetheless ruled 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.”6 The district court concluded that the claims were unpatentable because “the novel portions of [the] invention are claimed too broadly.”7
Thus the issue upon appeal in McRO was what level of specificity is required to avoid a preemption based determination that a claim is directed to an abstract idea, and therefore patent ineligible under 35 U.S.C. § 101, when considering the claims as a whole.
The dispute in McRO pertains to two patents, U.S. Patent No. 6,611,278 (“the ’278 Patent”) which is a continuation application of U.S. Patent No. 6,307,576 (“the ’576 Patent”). The court found that claim 1 of the ’576 patent is representative and dispositive of the asserted claims and therefore, only analyzed claim 1, which reads:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
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;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
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;
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
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.8
Essentially, McRO Inc.’s (“McRO”) method automates a portion of a preexisting 3-D animation method of modeling a character’s face to depict various facial expression made during speech.9 This prior art method morphs the character’s expression between a “neutral model” that is the 3-D representation of a resting, neutral facial expression and “morph targets” which represent the face as it pronounces a phoneme (i.e., make a certain sound).10 Each of the morph targets and the neutral model have identified points or vertices at certain locations on the face, and the difference between each of these vertices between the neutral model and the morph
5 Id. at 1227.
7 Id. at 1230.
8 The ’576 Patent, cl. 1, col. 11, ll. 27-47.
9 See, e.g., the ’576 Patent, col. 1, l. 14 – col. 2, l. 37.
10 McRO Br. at 7.
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target form a “delta set” of vectors representing the change in location of the vertices between the two models. In the prior art method, to animate the character’s speech, “the animators used ‘a ‘keyframe’ approach, where the artist set the appropriate [morph] weights at certain important times (‘keyframes’)’ instead of at every frame.”11 Essentially, “[f]or each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right – a visual and subjective process.”12
As one can imagine, this manual process is “very tedious and time consuming, as well as inaccurate due to the large number of keyframes necessary to depict speech.”13 McRO’s method aims to automate this process by “determining when to set keyframes and setting those keyframes . . . through rules that are applied to the timed transcript to determine the morph weight outputs.”14 Specifically, “these rules sets aim to produce more realistic speech by ‘tak[ing] into consideration the differences in mouth positions for similar phonemes based on context.’ ”15 For example, in the prior art method, a computer interpolates a continuous transition between two points defined by keyframes, potentially resulting in an unrealistic transition. To correct this issue, the animator is required to identify the problem area and insert a keyframe between the two points to smooth out the transition. McRO’s method, on the other hand, “uses rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously- achieved manually by animators.”16
In view of the above claim construction, the district court, applying the two part Alice framework, found that “because the claims were not limited to specific rules, but rather ‘purport to cover all such rules,’ the claims merely call for application of the abstract idea of using rules.”17 Therefore, as noted above, the district court found that the claims were not directed to patent eligible subject matter under 35 U.S.C. § 101.18
The CAFC started its analysis by first noting that “[w]e have previously cautioned 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.”19 In an apparent hint that the district court ignored specific elements of claim 1 of the ’576 Patent, the CAFC stated that “[a]s the district court recognized during claim construction, ‘the claims themselves set out meaningful requirements for the first set of rules: they ‘define morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’’”20
The CAFC went on to state that “[w]hether 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
11 McRO at 7, citing the ’576 Patent at col. 2, ll. 31-33.
12 McRO Reply Br. at 4 (emphasis removed).
13 The ’576 Patent at col. 2, lines 35-37.
14 McRO at 9.
15 The ’576 Patent at Col. 10, ll. 6-7.
16 McRO at 10.
17 McRO at 14, quoting Dist. Ct. Patentability Op., 55 F. Supp. 3d 1214, 1227.
18 See e.g., Supra, p. 1.
19 McRO at 21, quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
20 McRO at 21, quoting J.A. 4171 (Dist. Ct. Claim Construction Op. 16) (quoting the ’576 Patent, cl. 1).
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combination, without ignoring the requirements of the individual steps.”21 Notably, the CAFC stated that “[t]he specific, claimed features of these rules allow for the improvement realized by the invention;”22 specifically, “allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.”23
The court distinguished claim 1 of the ’576 Patent from Parker v. Flook, Bilski v. Kappos, and Alice stating that “[i]t 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.”24
The CAFC rejected the defendants’ argument that “the claims are abstract because they do not claim specific rules…”25 and stated that “[c]laims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable,”26 and that “[t]he claimed rules here, . . . are limited to rules with certain common characteristics, i.e., a genus.”27 The CAFC cautioned, however, that “[p]atent law has evolved to place additional requirements on patentees seeking to claim a genus,”28 and that “it is self-evident that genus claims create a greater risk of preemption . . . but this does not mean that they are unpatentable.”29
To illustrate this point, the CAFC juxtaposed a claim drafted to a particular outcome to a claim drafted to specific steps carried out to achieve that outcome, noting that “‘[a] patent is not good for an effect, or the result of a certain process’ because such patents ‘would prohibit all other persons from making the same thing by any means whatsoever.’”30 Rather, “[a] patent may issue ‘for the means or method of producing a certain result, or effect, and not for the result or effect produced.’”31 Therefore, the question for the CAFC to answer is “whether the claims in these patents focus on a 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.”32
In answering this question, the CAFC chided the defendants by stating that “[d]efendants provide no evidence that the process previously used by animators is the same as the process required by the claims.”33 Rather, “the automation goes beyond merely ‘organizing [existing]
information into a new form’ or carrying out a fundamental economic practice”34 and thus “[t]he limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters . . . [because] motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions.”35
The CAFC tempered its holding on preemption by noting that a lack of preemption does not itself indicate patent eligibility. Rather, “[t]he narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules.”36 To this point, the CAFC found that because
[c]laim 1 requires that the rules be rendered in a specific way: as a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing . . . [t]he specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization, unless the limits of the rules themselves are broad enough to cover all possible approaches.37
In an attempt to rebut this argument, the defendants asserted that “any rules-based lip-synchronization process must use the claimed type of rules.”38 According to the CAFC, however, “[t]here has been no showing that any rules-based lip-synchronization process must use rules with the specifically claimed characteristics.”39 Rather, the CAFC found that there is ample evidence on record that “points to the conclusion that there are many other possible approaches to automating lip synchronization using rules.”40 Specifically, the CAFC noted that “the interaction between vocalization and facial expression is very complex, and there are relationships present other than those required by the claimed rules.”41 The CAFC determined that because “[t]his complex interaction permits development of alternative rules-based expression of three-dimensional characters[,] . . . we need not assume that future alternative discoveries are foreclosed.”42
The CAFC ultimately found that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques.”43 Therefore, when viewed as a whole, as required under step one of the Alice framework, “claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques . . . [and] therefore, is not directed to an abstract idea.”44 As a result of finding that claim 1 is not directed to an abstract
idea, the CAFC did not even have to address step two of the Alice framework to find that claim 1 is patent eligible.
In light of the dearth of examples of software patent claims that have been held to be patent eligible, McRO provides meaningful guidance to practitioners who have been left with simply arguing that their claims are similar to those from DDR Holdings and Enfish. In one aspect, McRO further defines the role of preemption in determining whether a claim is directed to an abstract idea or is directed to patent eligible subject matter. The USPTO, in its § 101 guidance, greatly downplayed the significance of preemption and its effect on the patent eligibility of a claim. However, as evidenced in McRO, it appears to be possible to draft a claim that encompasses some, but not all, methods of accomplishing an end result. In this manner, preemption may play a larger role in establishing whether or not a patent software claim is directed to patent eligible subject matter.
Further, McRO reminds practitioners that the Alice analysis requires a reading of the claim as a whole while taking into account the specific details of the claim. The CAFC in McRO painstakingly details how specific elements of the claim, notably “requir[ing] that the rules be rendered in a specific way: as a relationship between subsequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing,”45 can provide meaningful limitations that “would prevent broad preemption of all rules-based means of automating lip synchronization.”46 Therefore, practitioners should seek to aggressively respond to Examiner’s who grossly generalize the steps of a method without taking into account the specific recitations of each element of the claim, particularly when reading the claim as a whole. As illustrated by the now overturned district court’s decision in McRO, it is legal error to fail to consider specific details of the claim when performing a § 101 analysis under Alice.
As has been the suggestion since the decision in Alice, when drafting software patent claims, practitioners should strive to include meaningful limitations on any claimed process. The most important lesson gleaned from McRO is that the specific details of the claims in McRO limited the scope of the claim so as to not preempt all possible methods of performing the process. The CAFC found that these meaningful limitations ultimately rendered the claim patent eligible. To this end one should consider including in the specification multiple genus level methods or operations to achieve the desired result, and then carefully draft claims to either specifically claim a genus, or specific species within that genus.
Finally, McRO clearly establishes that a software patent claim performed on a general purpose computer directed to automating a manual process is not per se ineligible. Thus, it is once again important to provide context for software claims and it may be prudent to specifically describe prior art methodologies and to point out distinctions between the claimed process and the prior art in order to establish that the claims are “directed to a patentable, technological improvement over” the prior art.47 Taking the lessons from DDR Holdings, Enfish, and now McRO, practitioners are slowly being given the tools to effectively draft software patent claims