959 F.3d 1091
Fed. Cir.2020Background
- McRO owns U.S. Patent No. 6,611,278 claiming a computer-implemented method to automatically generate 3‑D facial animations by producing streams of "morph weight sets" derived from time-aligned phonetic transcriptions (TAPT) and rule sets. Claim 1 recites obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times, generating that stream, and applying it to animated characters.
- The accused products used third‑party tools (FaceFX and Annosoft) that implement a "bones animation" approach (bone transforms blending weighted matrices) rather than per-vertex 3‑D displacement vectors or the patent’s morph-target delta-sets.
- Procedural history: district court initially found claims §101-ineligible (later reversed by this court in McRO I). On remand the district court granted summary judgment of noninfringement and (via counterclaims) summary judgment of invalidity for lack of enablement; McRO appealed.
- The Federal Circuit construed "morph weight set" to require delta sets composed of three-dimensional geometric vectors (per-vertex 3‑D displacements), rejecting McRO’s broader "ordered list of numbers" reading based on the intrinsic record.
- Because bones animation and the BALDI system do not use per-vertex 3‑D delta vectors, the court affirmed summary judgment of noninfringement.
- The court vacated the district court’s summary judgment of invalidity for lack of enablement, finding the developers failed to identify with particularity specific claimed embodiments that are not enabled; remanded for further proceedings (noting defendants offered to withdraw their counterclaims).
Issues
| Issue | McRO's Argument | Developers' Argument | Held |
|---|---|---|---|
| Claim construction: meaning of "vector"/"morph weight set" and whether accused systems practice the limitation | "Vector" can mean a general ordered list of numbers; morph weight sets should be read broadly to cover the accused systems | "Vector" as used in the patent is a 3‑D geometric displacement between corresponding vertices (delta sets); bones animation does not use such vectors | Court adopted 3‑D geometric vector construction; affirmed summary judgment of noninfringement |
| Enablement of the "first set of rules" (35 U.S.C. § 112) — does the specification teach how to make and use the full scope of claimed rule sets? | Specification and skilled artisan knowledge suffice to enable the claimed rule-based morph-weight outputs; enablement is satisfied | Specification does not enable the full breadth of the claim; developers identified bones and BALDI as examples outside the spec’s teaching | Court vacated district court’s enablement judgment: developers failed to identify with particularity any claimed embodiments that are not enabled; remanded for further proceedings |
| Relevance of accused noninfringing embodiments (bones, BALDI) to enablement | (McRO) these systems are within the claim scope and thus must be enabled | (Developers) these systems exemplify claimed breadth that the spec fails to enable | Because of claim construction, bones and BALDI fall outside the claim scope and cannot support nonenablement on summary judgment |
| Remedy and next step | Remand to litigate remaining issues; preserve ability to pursue validity defenses | Developers offered to withdraw invalidity counterclaims without prejudice | Court remanded for further proceedings, noting developers’ offer and denying reassignment request |
Key Cases Cited
- McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016) (prior panel decision reversing district court §101 invalidity and clarifying claim scope)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction must focus on intrinsic record)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (claim construction may involve subsidiary factual findings reviewed under mixed standards)
- In re Wands, 858 F.2d 731 (Fed. Cir. 1988) (factors for determining undue experimentation in enablement analysis)
- AK Steel Corp. v. Sollac, 344 F.3d 1234 (Fed. Cir. 2003) (enablement requires teaching how to practice the full scope of the claimed invention)
- ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935 (Fed. Cir. 2010) (enablement standard: no undue experimentation)
- Automotive Techs. Int’l, Inc. v. BMW of N. Am., 501 F.3d 1274 (Fed. Cir. 2007) (enablement inquiry depends on claim construction and requires identifying species within claim scope)
- Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361 (Fed. Cir. 1997) (enablement failure where specification omits critical details for producing claimed results)