Judge Jimmie Reyna’s decision in McRO v Bandai is without question one of the best decisions to emerge from the Federal Circuit as it competently addressed key elements of Alice Corp. v. CLS Bank. Judge Kara Stoll and Judge Richard Taranto, who signed onto this landmark opinion, should also be praised with Judge Reyna. The McRO decision, among other things, stands for the idea that software is a process under 35 U. S. C. § 101, and that a claim that does naught more than receive data, process data and “apply” the processed data is patent eligible under § 101. The representative claim of McRO is reproduced below for convenience.
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.
Now contrast the above-recited claim to a representative claim in SAP America v. InvestPic opinion re-issued on August 2, 2018 – said opinion authored by Judge Taranto.
A method for calculating, analyzing and displaying investment data comprising the steps of:
(a) selecting a sample space, wherein the sample space includes at least one investment data sample;
(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
(c) generating a plot of the distribution function.
There is no assertion by the Federal Circuit that the InvestPic claim above is anticipated or obvious, and indeed Judge Taranto acknowledges that the InvestPic claims may represent an improvement in the field of market analysis. “Here, the focus of the claims is . . . the improved mathematical analysis.” Investpic, slip op. at p. 14. However, Judge Taranto nonetheless declared that, despite any possible innovation, the Investpic claims “fit into the familiar class of claims that do not ‘focus . . . on  an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.’” Id. That is, Judge Taranto dismisses the idea that a claimed improvement may be directed to a technology process not related to computer science. Compare Alice Corp., which correctly observed, inter alia, that the mathematical computer claims “in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” Alice Corp., slip op. at p. 13.
To justify the InvestPic decision, Judge Taranto attempts to distinguish the claims in McRO by stating the following:
“Contrary to InvestPic’s contention, the claims here are critically different from those we determined to be patent eligible in McRO . . . . The claims in McRO were directed to the creation of something physical – namely, the display of “lip synchronization and Facial expressions” of animated characters on screens for viewing by human eyes. The claimed improvement was to how the physical display operated (to produce better quality images)” (internal citations omitted).
Contrary to Judge Taranto’s position, not only does the McRO claim not produce a physical improvement to a display (contrast In re Allapat), but as can be seen above a display is not even recited in the McRO claim. Judge Taranto’s position is as best an assertion that a physical display somehow works better because of the content displayed is subjectively more appealing. However, a colorized version of The Maltese Falcon does not improve the intrinsic qualities of a generic display. Similarly, the intrinsic qualities of a Kindle reader are not improved based on the quality of an author’s style of writing.
Not only is Taranto’s assertion absurd on its face to any novice student of electrical engineering, but the McRO Appellant/Patentee never asserted any improvement to a display as is evidenced by the Appellant’s briefs and statements during oral argument.
Indeed, it was the Appellant’s position in McRO that the patents at issue “address an improvement to a specific technological process.” Doc 69, p. 37. “They recite a technological method that enables a computer to do something it could not do before.” Id. “Clip 3, illustrates precisely how the method ‘improve[s] an existing technological process.’” Doc 69, p. 53.
Further, the Appellant’s positions are well-represented within the four-corners of the McRO decision, which makes no mention of an improved display. “It is the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” (emphasis added). McRO, slip op. at. p. 24. “The claim uses the limited rules in a process specifically designed to achieve an improved technological result” (emphasis added). Id. at. p. 27.
A software process was improved in McRO, and Judge Taranto’s attempt to assert that the operation of a physical display is improved is facially absurd.
Also completely missing from Judge Taranto’s opinion is any discussion of how the InvestPic claims differ from the software claims in Aatrix v. Green Shades, and Berkheimer v. HP – other landmark opinions that Judge Taranto signed onto.
Judge Taranto might have filed a dissent in Berkheimer. Judge Taranto might have filed a dissent in Aatrix as did Judge Reyna to completely change the outcome. However, for reasons not explained to the gentry, Judge Taranto declined such efforts.
Perhaps there is a coherent argument under the Alice/Mayo framework to credibly distinguish InvestPic from McRO, Berkheimer and Aatrix. However, the patent community will likely be waiting a long time to hear it.