McRO Patent Upheld Again at Federal Circuit, But Not Infringed

The U.S. Court of Appeals for the Federal Circuit, in a precedential decision authored by Judge Taranto, today affirmed-in-part, vacated-in-part and remanded a decision of the U.S. District Court for the Central District of California in McRO, Inc. v. Bandai Namco Games America Inc. et. al.

The case derives from the 2016 Federal Circuit decision determining that McRO’s challenged patent claims were directed to the display of lip synchronization and facial expressions of animated characters, which the court said were not directed to an abstract idea and were therefore patent eligible subject matter under 35 U.S.C. 101.

In today’s ruling, the Court considered whether the district court’s decision on remand, which held that the Developer defendants and defendant-appellees “were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims,” was correct.

At issue was U.S. Patent No. 6,611,278, “which describes and claims a method for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions.”

Claim 1 was deemed representative for purposes of the issues on appeal:

1. 1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;

obtaining a plurality of subsequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;

generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and

applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

After the Federal Circuit’s 2016 ruling in McRO, the Developers moved for summary judgment of noninfringement and invalidity, this time arguing that the claims were not enabled under 35 U.S.C. §112. The district court found the Developers had proven that “at the time of the invention, a person of skill in the art would not have the tools to practice the full scope of the ‘first set of rules’ limitation.”

The Federal Circuit affirmed the finding of noninfringement, as the court agreed with the district court’s and the Developers’ construction of the claim term “morph weight set,” under which the parties agreed there was no infringement.

But on the topic of enablement, the Court said:

We agree with McRO that the Developers failed to identify with particularity any method of animation that falls within the scope of claim 1 and is not enabled. Without any specific examples, the district court’s reasoning is too abstract, too conclusory, to support summary judgment. We do not go so far as to hold that there is a triable issue of fact on enablement—instead, we vacate the judgment and remand for the district court to consider how to proceed.

The Court further explained that none of the case law relied upon by the district court or the developers was relevant, as those cases involved “specific identification of products or processes that were or may be within the scope of the claims and were allegedly not enabled,” while the Developers’ and district court’s analysis relied on “an abstract assertion of breadth, without concrete identification of matter that is not enabled but is or may be within the claim scope,” concluding:

We see no reason in this case to depart from our usual requirement that the challenger identify specifics that are or may be within the claim but are not enabled. Specifics have always mattered. Here, a “fuller set of fact-findings [about what is] within the scope of the claims” is necessary “to decide the enablement issue.”

(citations omitted)

Ultimately, the Court affirmed the judgment of noninfringement of the ’278 patent, vacated the district court’s judgment that the Developers were entitled to summary judgment that the ’278 patent is invalid for lack of enablement, and remanded the case “for such further proceedings as are appropriate, considering the Developers’ offer to withdraw their invalidity counterclaims.”