By Bryan K. Wheelock, Principal
In MCRO, Inc. v. Bandai Namco Games America, Inc., [2015-1080] (September 13, 2016), the Federal Circuit reversed judgment on the pleadings that U.S. Patent Nos. 6,307,576 and 6,611,278 on the automated synchronization of animations with sound was invalid as directed to an abstract idea.
The Federal Circuit began by noting that one cannot assume that claims are directed to patent ineligile subject matter because all inventions, at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Instead, the claims must be considered as a whole to ascertain whether their character as a whole is directed to excluded subject matter. If the claims are not directed to an an abstract idea, then the inquiry ends, otherwise the analysis proceeds to Step II of the Alice framework to determine whether the claims contain an inventive concept sufficient to transform the claim into a patent-eligible application. One way of deciding Step II in computer implemented inventions is to consider whether there is an improvement to the underlying technological process, and not simply implementing the method on a computer.
The Federal Circuit disagreed that the claims were drawn to an abstract idea, saying that it has previously cautioned that court must be careful to avoid oversimplifying claims by looking at them generally and failing to account for their specific requirements.
The Federal Circuit noted that the claims at issue were limited to rules with specific characteristics. The claims were directed to animation methods that previously could only be performed by humans. The defendants did not dispute that such inventions were patent eligible if properly claimed, but argued that the claims were improper because they did not claim the specific rules. The Federal Circuit found that the claims were limited to rules with certain characteristics, former a proper genus. The key issue was whether the claims focus on a “specific means or method” that improves the relevant technology, or whether they are directed to the result or effect.
In the end, the Federal Circuit found that it was the incorporation of the claimed rules, and not the mere use of a computer, that improved the existing technological process. Interestingly, the Federal Circuit found that it made no difference that the result was not tangible, as there is no requirement that the invention be tied to a machine or transform an article to be patentable.
The Federal Circuit noted that the claims did not preempt all processes for achieving automated lip-syncing of 3-D characters, although the absence of preemption does not always indicate patent eligibility. The Federal Circuit noted that the claims were limited to a specific set of rules, thereby preventing broad preemption of all automated methods of lip-syncing. The defendants argued that all methods of animation must use the same specific kind of rules, but there was no such evidence in the record.
The Federal Circuit concluded that the claims were not directed to an abstract idea, and ended the Alice inquire at Step I.