McRO, Inc. v. Bandai Namco Games America Inc.
837 F.3d 1299
| Fed. Cir. | 2016Background
- Patents at issue (U.S. Pat. Nos. 6,307,576 and 6,611,278) claim a computerized method for automatically generating morph weight sets to animate lip synchronization and facial expressions for 3-D characters by applying a "first set of rules" to timed phoneme subsequences.
- Prior art: animators used morph targets, delta sets, and morph weight sets, typically setting keyframes manually (subjective judgments) with computer interpolation between keyframes.
- The patented invention automates keyframe placement and morph-weight generation using rules that consider phoneme subsequences, timing, and transition parameters to produce intermediate and final morph weight streams.
- District court granted judgment on the pleadings under Fed. R. Civ. P. 12(c), holding the asserted claims were directed to an abstract idea under 35 U.S.C. § 101 because the claims purportedly covered rules generally and thus risked preemption.
- On appeal, the Federal Circuit construed the claims to require rules that evaluate phoneme subsequences (not single phonemes) and held the ordered combination of claimed steps using those rule characteristics is a patent-eligible technological improvement, reversing the district court.
Issues
| Issue | Plaintiff's Argument (McRO) | Defendant's Argument | Held |
|---|---|---|---|
| Whether the asserted claims are directed to an abstract idea under § 101 | Claims produce a tangible technological result (video of synchronized 3‑D character) and effect a technological improvement (automating animator tasks using specific rules that consider phoneme context) | Claims are mere algorithms/abstract ideas that can be done mentally or with pencil and paper; they merely automate a conventional process on a general-purpose computer | Held not directed to an abstract idea: claims are limited to rules that evaluate phoneme subsequences and render a specific technological improvement, so § 101 not implicated further |
| Proper claim construction of "first set of rules" (do rules evaluate subsequences or single phonemes?) | Rules must evaluate phoneme subsequences and timing; this limitation is in claim language | Defendants contended McRO waived or misread this; urged broader reading | Court adopted McRO’s interpretation: claims require evaluating subsequences of phonemes (claim limitation controls) |
| Whether the claim breadth causes impermissible preemption of abstract ideas | The claimed genus is limited (rules as a function of phoneme sequence and timing); alternatives (e.g., motion capture) exist, so no total preemption | The claims would preempt rules-based lip-sync approaches because they do not require specific rules and merely claim using rules generally | Held the claimed structure (subsequences, timing, morph-weight mapping, transition parameters) avoids broad preemption; no showing that all rules-based methods must use the claimed rule form |
| Applicability of Diehr/Flook/Alice two-step test | Diehr supports eligibility where a claim improves a technological process as a whole; McRO says claim does this | Defendants invoke Flook/Alice to argue a mathematical/algorithmic core makes the claim abstract despite implementation | Court applied Alice framework and concluded the claims, viewed as an ordered combination, are directed to a patentable technological improvement (Diehr approach); thus no need to reach step two |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (two-step framework for § 101 and guidance on abstract ideas vs. technological improvements)
- Diamond v. Diehr, 450 U.S. 175 (1981) (claims using a mathematical formula can be patent eligible when applied as part of a process that improves a technological process)
- Parker v. Flook, 437 U.S. 584 (1978) (holding claims that merely recite a formula and conventional post‑solution activity are unpatentable)
- Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012) (§ 101 inquiry and limits to patenting laws of nature and abstract ideas; discussion of inventive concept)
- Gottschalk v. Benson, 409 U.S. 63 (1972) (mathematical algorithms as abstract ideas)
- Bilski v. Kappos, 561 U.S. 593 (2010) (limits on patenting abstract ideas and business methods)
- Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.) (claims directed to specific improvements in computer technology can be patent eligible)
- TLI Commc’ns LLC v. AV Automotive, 823 F.3d 607 (Fed. Cir.) (caution against oversimplifying claim character when analyzing § 101)
- Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.) (distinguishing claims that merely reorganize existing information)
- Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir.) (absence of complete preemption does not by itself establish eligibility)