In a closely-watched case involving the patent-eligibility of a computer-implemented method for automating the process of synchronizing lip movement and facial expressions of a 3-D animated figure to speech, the U.S. Court of Appeals for the Federal Circuit ruled that the claimed methods are eligible under 35 U.S.C. § 101. The court ruled that although the claimed processes created an intangible product, they were not directed to an abstract idea, and therefore did not implicate any judicially-recognized exceptions to patent eligibility. McRO, Inc. v. Bandai Namco Games America, Inc., No. 2015-1080 (Fed. Cir. Sept. 13, 2016).
McRO, Inc. (dba Planet Blue) owns two patents covering a computer automated process for morphing the facial expressions of an animated character to synchronize its facial expressions to sounds attributed to the character while it is speaking. The process of making animated characters appear to speak is known in the art, but requires an animator to make numerous time-consuming adjustments to the animation to make the synchronization appear natural. The McRO patents claim automated computer processes that use a set of rules to translate the speech sounds to facial expressions and morph the expressions to create a realistic synchronization. When McRO sued numerous video game companies for infringement, the U.S. District Court for the Central District of California invalidated the McRO patents as directed to an ineligible abstract idea. McRO appealed to the Federal Circuit.
In its September 13, 2016 ruling, the Federal Circuit reversed the district court and ruled that the inventions in the McRO patents were eligible. The court invoked the two-part test for eligibility established in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012): First, the court considered whether the character of the claimed inventions as a whole are directed to judicially-excluded subject matter, in this case an ineligible abstract idea. If so, the court then would determine whether the patent claims contain an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the abstract idea itself.
In the first step of the Alice/Mayo framework, the court ruled that the McRO patents were not directed to an abstract idea. It noted that the claims did not generally claim automated lip synchronization, but required the use of rules with specific characteristics, and that “[t]he specific, claimed features of these rules allow for the improvement realized by the invention.” Slip op. at 21. This group of rules represented a “genus” of rules governing the claimed process. Although claims to a genus sometimes raise preemption concerns, the court ruled that the claims in the McRO patents did not claim a particular result, but only particular computational tools used in the process.
The court also ruled that, rather than merely using a computer to automate a well-known process, the McRO patents improved the animation process by incorporating rules that had not previously been applied. Furthermore, the claimed inventions did not merely reorganize information or carry out fundamental economic practices – activities recognized in other cases to be abstract ideas. The court noted that:
The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters. While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patentable.
Slip op. at 25. Finally, the court analyzed the claims and concluded that the defendants failed to prove that the patents preempted other uses of computers to automate speech animation, since the claims were limited to specific governing rules and the physiology of speech lends itself to future alternative discoveries.
Thus, the court concluded that the processes in the McRO patents were not abstract ideas, and were eligible without considering the second step of the Alice/Mayo framework.
