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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