Federal Circuit Provides Additional Insight on §101 Protections for Software Patents

federal-circuit-cafc-1aMcRO, Inc. v. Bandai Namco Games America, (Before Reyna, Taranto, and Stoll, J.) (Opinion for the court, Reyna, J.) Click Here for a copy of the opinion.

In a September 13, 2016 decision relating to subject matter eligibility of software patents under 35 U.S.C. § 101, the Federal Circuit vacated the district court’s order granting Defendants’ motion for judgment on the pleadings under Fed. R. Civ. P. 12(c), and held that McRO’s patents were eligible for protection under 35 U.S.C. § 101.  The disputed patent claims recited a method for “automatically . . . producing accurate and realistic lip synchronization and facial expressions in animated characters.”  The McRO patents identified that a problem in the prior art was that animators, even using the assistance of computers, had to manually manipulate the character model for lip movement.  The McRO patents solved this problem by using rules to automatically depict more realistic synchronization of lip movements and speech.

The Federal Circuit disagreed with the district court’s ultimate finding that McRO’s patents were ineligible under Section 101, and held that at both steps of the Alice analysis, caution should be taken so as not to oversimplify the claims.

The district court determined that claim 1 of the ’567 patent is “drawn to the [abstract] idea of automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation.”  Patentability Op., 55 F. Supp. 3d at 1226.  The Federal Circuit cautioned that courts “must be careful to avoid oversimplifying the claims” by looking at them generally and failing to account for their specific requirements. TLI Commc’ns, 823 F.3d at 611; see also Diehr, 450 U.S. at 189 n.12. Here, the claims were limited to rules with specific characteristics (Op. at 21), “Whether 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 Federal Circuit held that the claims were not directed to an abstract idea, because they focused on a specific improvement in computer animation, i.e., the automatic use of rules of a particular type. “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. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (“Enfish”); see also Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., No. 2015-1570, 2016 WL 3606624, at *4 (Fed. Cir. July 5, 2016). Op. at 23.

The Court also rejected the district court’s preemption analysis, which held that the McRO claims were “too broadly preemptive to satisfy § 101.”  The district court found 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.”  On appeal, the Federal Circuit reiterated that preemption concerns arise only when claims are not directed to a specific invention and instead improperly monopolize “the basic tools of scientific and technological work.”  Alice, 134 S. Ct. at 2354 (quoting Myriad, 133 S. Ct. at 2116).  The Court concluded that, by  incorporating the specific features of the rules as claim limitations, the claim at issue was limited to a specific process for automatically animating characters using particular information and techniques and did not preempt approaches that use rules of a different structure or different techniques.  Because the Federal Circuit found that the claim was not directed to ineligible subject matter, it did not need to analyze Alice step two.

McRO is instructive on the boundaries of software patent eligibility, in line with its recent decisions in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC. and Enfish, LLC v. Microsoft Corp.  The decision highlights that claim scope and the specificity of an improvement can be critical factors in determining whether an invention is abstract or preemption under the first step of the Alice test.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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