More software patent eligible, Federal Circuit says lip synchronization not abstract

By Gene Quinn
September 14, 2016

Federal CircuitThe Federal Circuit has issued a decision in the much anticipated case McRo, Inc. v. Bandai Namco Games America, which found that the software patent claims at issue were not directed to an abstract idea and, therefore, are patent eligible subject matter under 35 U.S.C. 101.

This case reached the Federal Circuit from the United States District Court for the Central District of California (having been transferred from Delaware and consolidated). After holding a Markman hearing, the district court granted the defendants’ motion on the pleadings that all asserted claims were unpatentable. The district court said that the claims, on their face, do not seem to be directed to an abstract idea, but ultimately determined that the claims were too broad and not limited to a specific set of rules, which in the mind of the district court meant that they were abstract ideas. Ultimately, the district court found that while the claims do not preempt the field of lip synchronization for computer generated 3D animation; the claims did preempt lip synchronization using a rules-based morph target approach.

The Federal Circuit panel of Judges Reyna, Taranto, and Stoll, reversed. Judge Reyna delivered the opinion for the panel.

In a blog post by Erich Andersen, Vice President & Deputy General Counsel of Microsoft’s IP Group, the Federal Circuit decision is praised for providing more certainty for three specific reasons. Andersen explains that the Court’s ruling (1) emphasizes the need to consider the claims as a whole (i.e., not oversimplify the claims); (2) explains software claims may be patent eligible if they represent a technological improvement; and (3) makes clear that data processing claims may be patent “eligible even if they produce information rather than a physical product or result.” See Federal Circuit rules on software patent eligibility.[1]

 

The Invention

The patents in question relate to automating a part of a 3D animation method. Essentially, the patents cover lip synchronization of animated characters so that the lips of the animated character move in a normal fashion to the point where the animated character’s lips can be read.

In the prior art, to animate the character as it speaks, the method morphs the character’s expression between models. For example, with the “neutral model” being that of the resting, neutral facial expression of an animated character. The other models of the character’s face are known as “morph targets,” and each one represents that face as it makes a certain sound (i.e., pronounces a phoneme). The patents at issue criticize the preexisting approaches as tedious and time consuming, as well as inaccurate.

The invention covers in the patents in question aims to automate a 3-D animator’s tasks. Automation is accomplished through rules applied to the timed transcript to determine the morph weight outputs. The patents describe many exemplary rule sets that go beyond simply matching single phonemes from the timed transcript with the appropriate morph target. As a result, the rule sets aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.


 

The Representative Claim

Claim 1 of U.S. Patent No. 6,307,576 was deemed representative and dispositive of the asserted claims for the purposes of the appeal:

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.

 

CAFC Decision

At the outset of the Federal Circuit discussion, Judge Reyna noted that in this case the claim construction carried out by the district court was “helpful to resolve the question of patent eligibility under § 101.” This statement almost sounds out of place until you realize that most times district courts do not engage in a claim construction analysis prior to determining whether the claims are patent eligible. It is astonishing that any court could ever even attempt to determine whether a claim is patent eligible because it merely covers an abstract idea without first engaging in a thorough analysis of what the claim actually covers. Merely looking at a claim on its face and pretending to be able to divine what is covered is the type of analysis one would expect from the utterly uninformed, not something that ostensibly passes for justice.

After going through a two-plus page recitation of the law, Judge Reyna summarized the district court holding, that the claims were drawn to an abstract idea of automating rules-based use of morph targets and delta sets for lip synchronization in 3D animation. Reyna explained that the Federal Circuit disagreed with that determination, reminding the district court that they have cautioned courts to carefully “avoid oversimplifying the claims.” Reyna would go on to say that these claims are specifically “limited to rules with specific characteristics.”

When addressing the specific limitations of the rules (see bottom of page 21) the Federal Circuit in McRo did not cite to Enfish v. Microsoft, but did observe: “The specific, claimed features of these rules allow for the improvement realized by the invention.” Recall that the patents at issue in Enfish explained that the claimed invention in that case was an improvement, which the Federal Circuit would make a great deal about in their patent eligibility analysis. The Federal Circuit explained in Enfish that the claims at issue plainly focused on improvements to computer functionality. This led the Enfish panel to unanimously conclude, “the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” See Federal Circuit says software patent claims not abstract, are patent eligible.

It would seem that once again the fact that the claims covered an improvement were to some extent pivotal in the Federal Circuit analysis. For example, at the top of page 22, Judge Reyna writes: “As the specification confirms, the claimed improvement here 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.”

Later, at the bottom of page 23, the Federal Circuit did cite to Enfish, as well as Rapid Litigation Management v. CellzDirect. In this paragraph Judge Reyna addresses the preemption concerns, explaining:

We therefore look to 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.

Finally, in the penultimate paragraph before the Conclusion, Judge Reyna writes:

When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S. Ct. at 2358 (citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.

 

Conclusion

 

There is no denying the fact that the rules at issue in the ‘576 patent claims being viewed as specific and limiting played an important role to the outcome of this case, but it is hard to ignore the fact that the Federal Circuit again continued to point out that the innovation at issued was an improvement. This should give patent practitioners important clues into how to characterize software related innovations so as to maximize the likelihood of prevailing in Alice inspired challenges and rejections.

Hopefully the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable. The tide seems to be turning relating to patent eligibility and it is time for the Patent Office to both instruct patent examiners and demand that examiners follow the law. Enfish, BASCOM, Rapid Litigation Management and now McRo represent a trend. Examiners claiming these cases are an aberration and that they won’t be followed is unacceptable, period.

_______________

[1] It seems particularly noteworthy that Microsoft sees the McRo decision as one that “will provide additional certainty to industries that generate more than $5 trillion in U.S. economic activity and 40 million American jobs.” Over the past decade Microsoft has at times been in alignment with Google and others on the issue of patent reform, and even challenged the presumption of validity afforded patents taking a case all the way to the Supreme Court. See i4i v. Microsoft. In recent years, however, Microsoft has seemed to take a decidedly pro-patent turn.

 

UPDATED: Wednesday, September 14, 2016 at 2:23pm ET, adding mention of Microsoft’s praise for the decision.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 29 Comments comments.

  1. Appearance of ... September 14, 2016 2:36 pm

    Personally, I liked the fact that the decision is trying to refocus the issue of patent eligibility from “abstract” to “preemption”. They said this explicitly: “The concern underlying the exceptions to § 101 is not tangibility, but preemption.” It looked to me as if the decision was drawing a lot of inspiration from the 1853 Morse case.

  2. EG September 14, 2016 2:57 pm

    Hey Gene,

    This case is a “breath of fresh air” in rendering some order on patent-eligibility out of the chaos created by the nonsensical Mayo/Alice framework.

  3. Edward Heller September 14, 2016 3:15 pm

    Gene, I thing the Federal Circuit said that it was the specific functional limitations on the rules and the specific timing of their application that was important, not the rules themselves. Had the claims only said, Apply rules to digitized lip movement to synchronize sound,” where the only novelty, if any, were in the unclaimed rules, this case would have come out differently.

  4. Elmer September 14, 2016 3:21 pm

    @1, I agree. I wonder if the Federal Circuit is finally realizing that the trend it started with Ultramercial – namely that large quantities of claim elements that are anything but “fundamental” can be collectively labeled abstract and ignored – has gotten out of hand.

    First BASCOM and now McRo went out of their way to say “you have to look at all of the elements collectively, don’t go ignoring any of them now.”

    Now, how you jive that with, say, In re Smith or Ultramercial is beyond me. We’re seeing an intra-circuit split, though not even among judges. Federal Circuit 101 jurisprudence has become unworkable.

  5. Anon September 14, 2016 3:50 pm

    Mr. Heller,

    Are you peddling your “Point of Novelty” in a 101 sense here now?

    Did you not pay attention to the claim as a whole theme?

  6. Edward Heller September 14, 2016 4:23 pm

    anon, as you know I do not agree that claiming “principles in the abstract” should be a 101 issue. But whether I agree or not, the Supreme Court since Bilski has made it clear that claiming invention at the level of an idea is a 101 problem.

    Now, consider Rubber-Tip Pencil. https://scholar.google.com/scholar_case?case=6436373015812414012&q=Rubber+Tip+pencil&hl=en&as_sdt=2006. where the claim was to “a new and useful rubber head for lead-pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character.”

    The claim was held invalid under 101 for claiming an idea because it was known that rubber could be fit on the ends of sticks and the like; and the claim was not to the combination, to any structure in such a combination, or to any adaptation of a piece of rubber to fit pencils, let alone lead pencils.

    Thus, if I were to claim lip sync rules on a computer without more, the claim would not pass 101 under Rubber-Tip Pencil or Bilski or Alice because using rules on a computer was known, doing lip syncing with rules was known, and the combination was known, even if new rules were disclosed. I know this sounds a lot in obviousness, and it does. But, if the invention is in the rules disclosed in the specification, those rules were not claimed. But in the claims in the present case, there were detailed functional limitations on the rules and specific timing methods for applying them.

    Like I have said elsewhere, I think 101 should look primarily to whether the novel subject matter is statutory, not whether statutory subject matter is being claimed at the level of an idea. That is why I thought the majority in Bilski was wrong.

  7. Night Writer September 14, 2016 4:34 pm

    Rubber-Tip Pencil was decided wrongly. Figures you would reference this opinion Edward as well as say things like “without more”, etc.

  8. Anon September 14, 2016 6:46 pm

    Mr. Heller,

    You managed to avoid completely the gist of my post.

    Why are you attempting to use the “Point of Novelty” in the 101 sense here?

    Your dodge – and your attempt to use that canard – simply are not inte11ectually honest.

    Please do better on this forum.

  9. Anon September 14, 2016 6:50 pm

    It is the claim as a whole that is concerned with “novel subject matter” at the 101 stage. You are attempting to parse the claim and apply 101 to elements of the claim (and you are attempting to do so in a non-101 manner of “point of novelty.”

    This is clearly not an honest effort on your part, as you have been apprised of this legal error in no uncertain terms.

    This forum does not brook – not should it or any forum – purposeful misrepresentations of law.

    Rather than have you “tread carefully” – I would rather have you tread honestly.

  10. Edward Heller September 14, 2016 7:08 pm

    Anon, I think you misunderstand to some degree what the gisting is about – it is attempting to identify what in the claim is new in to describe it in simple terms. That which is new can be one limitation in one element, or can be a number of elements that together define the invention.

    Now, I think the courts are confused about Morse and its progeny. Those cases were not really about on patentable subject matter, but more about claiming inventions at the level of ideas. Patentable subject matter rather is about whether the novel subject matter is directed to one of the four categories.

    Now returning to the point of novelty issue, if there is a point of novelty in the claim, for example, if it is in one element of a combination, and that element is claimed as a result as opposed to being claimed in terms of structure or method, then there can be a problem – but that problem, I think, has been our should have been addressed by 35 USC §112(f), which allows functional claiming but at the price of the construction clause.

    In other words, the courts should be say that if a claim is functional at the point of novelty, that it should be construed under § 112(f), rather than being declared invalid. Only if the novel subject matter is not one of the four categories, should the claim be declared invalid under 101.

    Somebody has to point out that the Emperor has no clothes. Perhaps you and I could work together on that?

  11. Night Writer September 14, 2016 8:34 pm

    Edward: your mind is as sick as R. Stern’s. Just twisted nonsense and constant avoidance of the issues.

  12. You Know Who I Am September 14, 2016 8:45 pm

    “In other words, the courts should be say that if a claim is functional at the point of novelty, that it should be construed under § 112(f), rather than being declared invalid. Only if the novel subject matter is not one of the four categories, should the claim be declared invalid under 101”

    I agree with this entirely about the separation of eligibility and patentability, but a functional claim at the point novelty is not the only means by which an invention may be insufficiently claimed and yet not fail for 102/103.

  13. Anon September 14, 2016 8:45 pm

    Mr. Heller,

    The invention is defined by the claim as a whole.

    I am not the one confused about this.

  14. Anon September 14, 2016 8:52 pm

    Further Mr. Heller, you continue to confuse and conflate “functional claiming” and claims that utilize language sounding in function. Language sounding in function is fully permissible under the law as written by Congress (tracing back to 1952 directly) beyond merely what is now 112(f). This is black letter law.

    And yet, you continue to post views that merely reflect a further option made available to patentees as if that further option were the only place allowable to use descriptions sounding in function.

    This too, you have been made fully aware of, and – at least on this forum – I except you to comport yourself with inte11ectual honesty and not misrepresent the law.

  15. Jolly September 14, 2016 8:58 pm

    and still, what exactly is an abstract idea has not been explained…

  16. Anon September 14, 2016 8:58 pm

    I will also remind you that Congress has directly spoken as to exactly whom sets out the invention (“Gist” or otherwise), and that is not the courts. What the Supreme Court (speaking of not wearing any clothes) has done is that they have decided that they “know” what “really” is “the invention.”

    This is nothing more than their attempt to hold on to a power removed by Congress in the Act of 1952, when Congress removed the common law power of the court to set the meaning of the word “invention” and instead installed section 103.

    The Court’s continued addiction to this removed power is evident in the mess that the Court has made of 101.

    It is also a violation of th separation of powers (the Supreme Court too is bound by the Constitution and by the checks and balances of the separation of powers) and is thus ultra vires.

  17. Night Writer September 15, 2016 7:19 am

    The whole problem with Edward’s approach is that it is not patent law. It is using some abstraction in the head of the fact finder to reduce the invention. Stick to finding the elements of the claim and combining them. Anything else is arrogance.

    Rubber-Tip Pencil: is a ridiculous and shameful decision. There was plenty of structure in that a person of ordinary skill knows how to combine the two. The analysis should have centered on obviousness, but again a judge becoming the arrogant reductionist.

    Need to read this case. The panel suggests there is probably some bad stuff in here.

  18. step back September 15, 2016 2:47 pm

    Agree with EG @2

    This a first gasp of fresh air after drowning in a sea of insanities.

    Note that McRo v. Bandai only applies to “or an improvement thereof” part of 35 USC 101 as applied to processes. The manual animation process is prior art and the claimed process is an improvement thereof by way of very specific rules.

    http://patentu.blogspot.com/2016/09/sanity-pokes-its-tiny-head-up-above.html

  19. Edward Heller September 15, 2016 3:25 pm

    step, the rules themselves were not specific — it was the limitations in the claims that required a specific functional relationship and timing that moved the needle here.

  20. Night Writer September 15, 2016 4:45 pm

    >>it was the limitations in the claims that required a specific functional relationship and timing that moved the needle here.

    Try to stick to real patent law. Find the elements of a claim in the prior art and make arguments for combinations. Your comments almost always include your private evaluation of claims and your private gisting of the claims. Witch nonsense.

  21. Edward Heller September 15, 2016 4:49 pm

    Night@20, you are aware, are you not, that what I said was the actual holding of the court?

  22. Anon September 15, 2016 5:02 pm

    Mr. Heller,

    Sorry, but I give no credence to what you think “moves the needle” given your consistent and deeply flawed views on 101.

    Your myopia is so severe as to render your opinions rather inconsequential.

    I do wish it were different. I do wish that you would actually engage fully in conversations, and pursue those conversation to their logical ends, but you have actively avoided doing so for so long now, that I think that you are incapable of the task.

  23. step back September 15, 2016 7:57 pm

    Anon@22

    I think the “improvement thereof” over the prior art manual process was the big mover of the needle here and then the specifics about not preempting all rules was icing on the cake. (Of course some prefer upside down cake. Have it which ever way you please.)

  24. Keith Constantine September 16, 2016 10:43 pm

    Through-out the McRO decision, the Federal Circuit repeatedly refers to the computer-implemented method as a “process”.

    This brings up a fundamental issue regarding the recent software and medical diagnostic/treatment decisions. This issue has both intrigued and bothered me for some time. 35 U.S.C. Section 101 does not make any special distinction for processes. Like machines, manufactures and compositions of matter, processes are valid patent-eligible subject matter. Processes seem to have singled out for easy rejection under the guise of 101.

    Are subject-matter rejections under 101 really appropriate for computational and medical processes? If an invention involves patent-eligible subject matter and has utility, the examination properly should move off of 101 to 112, 102 and 103 considerations. For example, had the claims in McRO actually been overly broad, the rejection should have been under 112(b), not under 101.

    It seems to be fundamentally incorrect to refer to computer programs and medical diagnostic procedures per se as unpatentable subject matter. Both are human-invented processes. These process may be directed to, or rely in part on, the judicially-defined exceptions. Regarding computer-implemented processes, a 101 rejection might be a proper short-cut if the invention is directed only to laws of nature, abstract ideas or natural phenomena.

    In McRO. the Federal Circuit states “. . .Defs.’ Br. 10. The computer here is employed to perform a distinct process to automate a task previously performed by humans.” On pp. 24 – 25, the Court further clarifies “This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way. Flook, 437 U.S. at 585–86; Bilski, 561 U.S. at 611; Alice, 134 S. Ct. at 2356.”

    These considerations seem to point to obviousness rejections, not subject matter rejections.

    Similar concerns surround the medical diagnostic/medical treatment procedure cases. In Mayo Collaborative Servs. v. Prometheus Labs, the Supreme Court rejected under 101 because the procedure depended upon a law of nature. In the subsequent Federal Circuit decision Ariosa Diagnostics, v Sequenom, Inc. (Fed. Cir 2015), the 101 rejection was upheld because the procedure depended on a naturally occurring phenomenon. One may opine that there is nothing innovative regarding the processes involved in Ariosa and Mayo. In that case, both should have been rejected under 103, not 101. Ariaso relied on a discovered natural phenomenon; the process subsequently used is not a natural occurring phenomenon.

    If one extrapolates the reasoning used to apply subject matter rejections to processes, one should also reject machines, manufactures or compositions of matter under 101 for similar reasons. For example, reject an obvious variation of an internal combustion engine because it utilizes naturally occurring oxygen, or reject an obvious variation of a solar cell because it uses naturally occurring sunlight.

    Perhaps the proper course of action would be for Congress to create statutory exclusions for certain computational and medical processes based on articulated policies, as was done regarding inventions related to taxes, human beings and nuclear weapons. Currently, the Courts are wrestling with semantic inconsistencies. McRO is a big step in the right direction, but it does not reach the heart of the matter.

  25. Anon September 17, 2016 1:38 pm

    The heart of the matter Keith, is that the Court is legislating from the Bench, and is doing a (excuse the French) piss poor job of it.

  26. Appearance of ... September 17, 2016 2:56 pm

    The USPTO has gone far out on the “Alice” limb, and it is probably now both painful and embarrassing to substantially retreat. Lots of rejections and abandoned applications to try to rationalize.

    Will this be another “Bascom” that the USPTO simply ignores, or will the USPTO actually acknowledge that McRo exists? Stay tuned…

  27. step back September 18, 2016 7:17 am

    Keith @24

    With no disrespect meant here, your comment appears to come from someone who just awakened from a prolonged Rip Van Winkle slumber.

    As Anon summarizes at @25, over the last few years, the US Supreme Court (a.k.a. SCOTUS, a judicial body that is supposed to be purely appellate and not a fact finding entity) has fabricated a whole bunch of its own “facts” about how the world woks, how the universe spins, how Mother Nature enforces her so-called “laws” and how science progresses with the aid of “fundamentalist” building blocks.

    Based on these unquestionable “facts,” they have conjured up a secret “directed to” detecting device which they alone can apply to claims on a know-it-when-I see-it basis to determine if the claims “direct” themselves to a pole they refer to as the “abstract ideas” end. (The opposed pole remains unnamed.)

    Once the claims are found guilty of being “directed” toward the evil first pole, the claims are dunked into holy water one more time to determine if their submerged masses have something “significantly more” where, inevitably, the witch hunting panel finds that the convicted first and thereafter accused claims do indeed lack this something “significantly more”, again on a know-it-when-I see-it basis. Then the claims are summarily executed for failing this SCOTUS legislated set of Salem trial rules.

    There is no law of Congress that permits SCOTUS to fabricate this incredibly great again set of Salem witch-find “facts” and to conjure up these fabulously fantastical set of know-it-when-I see-it tests.

    They have done so anyway. Any person who dares to question SCOTUS is clearly disloyal to the republic and lacks a set of rational marbles in upper of the harmonized spheres known as the “mind” (to them who cling to their divining rods and their philosopher stones). The SCOTeti parade proudly with their new found set of clothes. Make sure to bow as they pass by.

    For more, see:
    http://patentu.blogspot.com/2016/06/spirit-town.html

  28. Anon September 18, 2016 9:19 am

    There is no law of Congress that permits SCOTUS to fabricate this incredibly great again set of Salem witch-find “facts” and to conjure up these fabulously fantastical set of know-it-when-I see-it tests.

    Not exactly true.

    There is no current patent law that allows such legislating from the bench – that much is true.

    But prior to 1952, Congress had provided the Court with the power to define the word “invention” through the t001 of common law evolution.

    But as anyone who has studied history (and history of patent law in particular) can attest, Congress reacted against a visceral anti-patent Supreme Court by stripping that authority from the Court and in place of “invention” (or gist of the invention, or any number of like-used phrases) put in place the mechanism of 103.

    This was the Act of 1952.

    The mess that you see in 101 jurisprudence is a direct result of the Court attempting to reclaim a power taken away from it. At first, the Court tried to do this subtlety, with mere dicta and “implicitness,” but of late have noticed that no one was guarding the hen house and have become more brazen (with explicit changes).

  29. step back September 18, 2016 3:37 pm

    Anon @28

    Good insight.

    Of course we cannot say that SCOTUS has always been anti-inventor and anti-patent. Their moods seem to swing with the corporate-political tides.

    Think for example about Chakrabarty

    https://en.wikipedia.org/wiki/Diamond_v._Chakrabarty

    At the time it seemed that the US would dominate in biotech. So the SCOTeti were very generous. Anything made by man under the sun.

    Now the USA is sinking swiftly into Medieval times. Therefore all inventions are abstract and stifling the Lego building blocks of “science” according to the deep comprehensions of the SCOTeti about the construct of the universe.

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