In 2014, the U.S. Supreme Court provided the definitive word on the types of inventions that are eligible to be patented. Its decision in Alice Corp. v. CLS Bank International (134 S.Ct. 2347) spelled out a two-part test for patent eligible subject matter that superseded previous guidelines. The Alice test first examines whether a patent claim contains an exception from patentability and, if the answer is affirmative, asks whether there are additional elements in the claim that amount to “significantly more.” One well known exception is where the claims are directed to an “abstract idea,” although the Court famously declined to provide a definition. Other courts have been attempting to fill in these blanks in subsequent decisions and, last week, the Court of Appeals for the Federal Circuit (CAFC) provided some useful guidance for prospective patentees.
At issue in McRO Inc. v. Bandai Namco Games America were patents directed to 3-D animation techniques for lip synchronization. One representative claim was for:
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.
This type of technology clearly relates to a method for the improvement in operation of a machine, which had long been considered patent eligible.
However, in an earlier proceeding, rather than considering that the claims were directed to the improvement in operation of a technological process, the District Court found McRO’s claims were directed toward patent-ineligible subject-matter on the basis that they were directed to an abstract idea. In particular, the District Court considered that the term “rules” found in the claims was not limited to specific rules, but rather “purport[ed] to cover all such rules.” In essence, the District Court considered that the invention was “claimed too broadly.”
The CAFC found fault with this analysis, 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.” Instead, it held that courts must look at the claims as a whole and without ignoring individual elements.
In the Court of Appeals’ analysis, McRO’s claims were “limited to rules with certain common characteristics.” Specifically, the claims were directed at a rules-based approach to automating a task that previously required subjective determinations from human animators. The claims did not pre-empt all methods of animating a character using generic rules, but only a “genus” of rules-based approaches that can be employed using a particular technology.
Although it still fails to provide a black-and-white definition, this emphasis on a lack of pre-emption is nevertheless encouraging in some respects. As judges have correctly observed in numerous decisions, all inventions can be distilled down to an abstract idea. The trick is in knowing when to stop distilling, and the concept of pre-emption ought to serve as a useful boundary marker in this regard.
The concept of pre-emption was mentioned as a motivating factor in the Supreme Court’s Alice decision, but other courts generally have been reluctant to conclude their analysis in this manner, at the first step of the Alice test. The decision in McRO may make courts less willing to conclude that a particular concept is an abstract idea without strong evidence of the same. This also dovetails with recent U.S. Patent and Trademark Office guidance, which instructs patent Examiners to refrain from labeling ideas as abstract unless the ideas can be shown to correspond with a concept found abstract by the courts.
It remains to be seen whether more decisions that emphasize consideration and analysis of pre-emption are forthcoming. But, in the meantime, prospective patentees may be able to distance themselves from subject-matter issues by carefully describing the ways in which their inventions differ from judicially known “abstract ideas” and by having arguments against pre-emption at the ready.
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