September 9, 2016
By: Nathan T. Harris
The Federal Circuit earlier this week reversed a dismissal, by the U.S. District Court for the Central District of California, of a case involving a patented 3-D animation process. In McRO Inc. v. Bandai Namco Games America (Appeal No. 2015-1080), the Federal Circuit held that the claims were directed to a “patentable, technological improvement over the existing, manual 3-D animation techniques,” and therefore not directed to an abstract idea. The decision is the latest in a recent string of cases (including Bascom and Enfish) overturning lower court findings of ineligibility of software claims.
The two McRO patents at issue claim an improvement over existing methods for animating three-dimensional models of a character’s face to depict facial expressions made during speech. Prior art methods overlay a grid over a “neutral model” of an animated character’s face at rest. Facial expressions associated with particular verbal phonemes (e.g., “aah”) are stored as “morph targets,” which define how the grid vertices vary for that expression from the neutral model. The character’s face is animated as it transitions between morph targets synchronized with the character’s speech. For intermediate frames between phonemes, a relative “morph weight” is applied to each morph target to blend the expressions.
A drawback of the prior art method was that human animators were required to tweak the morph weights at certain “keyframes” of the animation, using subjective judgment and trial-and-error, to attain realistic expressions. McRO’s methods sought to automate the process by applying rulesets to determine when keyframes should be set, and what morph weights should be used to do so. As the patent application explained, improved results over the prior art were possible because the rules evaluate sequences of phonemes, and take into account different mouth positions for similar phonemes based on context.
The district court recognized that the claims added the use of rules, “rather than artists,” to determine these keyframes, but found they were not limited to specific rules; rather, they “purport to cover all such rules” for automatic lip synchronization. Because the claims were “too broadly preemptive” to satisfy Section 101, the district court granted judgment on the pleadings that the claims were directed to an abstract idea.
The Federal Circuit disagreed, and reversed the dismissal of the case. As an initial matter, it cautioned the district court against oversimplifying claims in finding them broadly preemptive, noting that the claimed rules here are limited to defining a set of morph weights for timed sequences of phonemes.
Turning to the Alice two-step analysis for determining patent eligibility, the court first considered—under step one—whether the claims are “directed to” an abstract idea. It disagreed with the defendants’ contention that the claims merely automated the well-known process manually done by human animators. Whereas the animators relied on subjective determinations, the claimed methods employ “specific, limited mathematical rules” that evaluate sequences and generate transition parameters, neither of which was done by the animators. The claims are therefore directed to a “combined order of specific rules” that generates information applied to create a desired result, namely, an animation sequence for a character. While this result may not be “tangible,” the court noted that Section 101 is concerned with preemption, not tangibility.
While cautioning that the absence of complete preemption does not necessarily signal patent eligibility, the court framed the question here more narrowly: does the set of rules claimed here preempt all rule-based techniques for automating 3-D animation? The court concluded not; evidence of other rule-based approaches to automating lip synchronization showed that “the interaction between vocalization and facial expression is very complex, and there are relationships present other than those required by the claimed rules.” One could assume, therefore, that “future alternative discoveries” would not be foreclosed.
Finding the claims to be limited to a specific process that does not preempt alternative rule-based approaches using different structures or techniques, the court therefore held that the claims are not directed to ineligible subject matter, declining to reach the second step of Alice.
This decision is notable for the resurgence (hinted at in Bascom) of the preemption inquiry as a way to address eligibility—used here for the purpose of determining, in step one of Alice, what the claims are “directed to.” The court’s repeated reminder against over-abstraction of the claims in a Section 101 analysis is also relevant to patent prosecution; one “must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” Finally, the court offers a helpful reminder that “processes that automate tasks that humans are capable of performing are patent eligible if properly claimed.”
The full text of the decision is here.
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