On September 13, 2016, the US Court of Appeals for the Federal Circuit held as patent-eligible patent claims directed to automated lip-synching for animated characters. This holding builds upon the few decisions thus far where the Federal Circuit has found software/computer invention claims to be patent-eligible subsequent to the Alice and Mayo decisions. It is also the second decision to give teeth to the so-called "Step 1" of the Alice/Mayo test for subject matter eligibility, and should give pause to reliance on the "gist" abstraction of claimed subject matter while bolstering the defensibility of Step 1-patentability arguments.
In McRo v. Bandai, the claims concerned the automation of prior art manual methods for synching animated talking figures with speech parts, called phenomes. Judges Jimmie V. Reyna, Richard G. Taranto and Kara Stoll unanimously held that McRo's claims represent a genus of rules having a common characteristic (i.e., that they are directed to the ordered combination of claimed steps for automating part of a preexisting 3-D animation method, using unconventional rules that relate sub-sequences of phonemes, timings and morph weight sets). They reversed a decision on the pleadings of the US District Court for the Central District of California and ruled that the claims are not directed to an abstract idea and therefore are patent-eligible subject matter under 35 U.S.C. §101.
Under Alice/Mayo Step 1, a determination is made as to whether the claim at issue is “directed to” a judicial exception, such as an abstract idea. See, e.g., Alice, 134 S. Ct. at 2355. If the claim fails Step 1, in Step 2, a determination is made as to whether the claim contains an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” Id. In doing so, both the claim as a whole and its individual elements are considered in determining whether it contains “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 132 S. Ct. at 1294) (alteration in original). In McRo, the Court determined that the claims passed the Step 1 inquiry and thus did not need to undertake the Step 2 analysis. In formulating its decision, the Court carefully examined the issue of preemption and distinguished this case by explaining that here there was no preemption of an entire field, but only coverage of one specific method for incorporating lip synching into animated characters.
There are five notable considerations in the Court's discussion that should bolster software patent claims.
- Interplay with claim construction: The Court specifically noted that claim construction was helpful to resolve the question of patentability under §101. The parties disputed the breadth of the claims. However, the Court said the dispute was resolved on the face of the claims, and that the claims were limited to rules that required the evaluation of a sequence of phenomes, rather than, for example, an individual phenome. With this construction, the rules required by the claims were considered to be much more limited, and not preemptive to other rules that might be used in such an automated process.
- Degree of abstraction of the claimed subject matter: The Court took issue with the lower court's oversimplified abstraction or characterization of the claims. The lower court held that the claims were "drawn to the [abstract] idea of automated rules based use of morph targets and delta sets for lipsynchronized three-dimensional animation.” In disagreeing, the Federal Circuit found the claims to be limited to rules with specific characteristics, i.e., that " they ‘define a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’” Slip op. at 21, citing, J.A. 4171 (Dist. Ct. Claim Construction Op. 16) (itself quoting the ’567 patent, cl. 1). The Court also noted that the claims further require “applying said first set of rules to each sub-sequence . . . of timed phonemes.” Id. Then the Court stated 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 combination, without ignoring the requirements of the individual steps. The specific, claimed features of these rules allow for the improvement realized by the invention." Id. As a result, the claims could not be abstracted to a simple gist.
- Improved operation of a computer: The Court noted the claimed invention provided an improvement in the operation of a computer. The improvement is allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” that previously could only be produced by human animators. Slip op. at 22, citing ’576 patent col. 2, ll. 49–50. "As the district court correctly recognized, this computer automation is realized by improving the prior art method through 'the use of rules, rather than artists, to set the morph weights and transitions between phonemes.'” Id. Notably, this "improvement in the operation of a computer" was not an improvement in electronic or mechanical operation.
- Preemption based on breadth of genus claims: The Court analyzed the issue of preemption and navigated the issue of broad genus claims in relation to preempting all uses of software to generate lip-synched animated characters. The Court found the claimed rules for generating lip-synching to be limited to rules with certain common characteristics, i.e., a genus. The Court noted that while "genus claims" create a greater preemption risk, they are not necessarily unpatentable. The Court determined that despite being "genus" claims, the claims were directed to one specific method for generating lip synching and, therefore, did not preempt the entire field of software based lip synching for animated characters.
In doing so, the Court noted:
Patent law has evolved to place additional requirements on patentees seeking to claim a genus; however, these limits have not been in relation to the abstract idea exception to § 101. Rather they have principally been in terms of whether the patentee has satisfied the tradeoff of broad disclosure for broad claim scope implicit in 35 U.S.C. § 112. E.g., Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). It is self-evident that genus claims create a greater risk of preemption, thus implicating the primary concern driving § 101 jurisprudence, but this does not mean they are unpatentable.
Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity.
Slip op. at 23-27(emphasis added).
- Interplay with tangibility of results: The Court noted that although the results produced by the claimed process were not "tangible," patentability is not dependent on a method being tied to a machine or transformation of an article. From the opinion:
Further, the automation goes beyond merely “organizing [existing] information into a new form” or carrying out a fundamental economic practice. Digitech, 758 F.3d at 1351; see also Alice, 134 S. Ct. at 2356. The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters. While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patentable. Bilski, 561 U.S. at 603 (discussing 35 U.S.C. § 100(b)). The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S. Ct. at 1301.
Slip op. at 27 (emphasis added).
There are several takeaways from this decision:
- Software- or computer-based inventions can be the subject of patents if claimed properly.
- The scope of a software claim can greatly affect its subject matter eligibility under §101. Claims with more specific limitations are more likely to pass muster because they cannot be unduly abstracted and are less likely to invoke preemption concerns.
- A method need not obtain a Diehr-like tangible result; the concern is preemption, not intangibility.
- The improvement in a computer need not relate to the electronic or mechanical operation of the computer itself (e.g., the efficiency of the processor), but can relate to the improvement in accuracy and effect provided by the computer.