Continuing a Recent Trend, the Federal Circuit Again Confirmed that Properly Drafted Software Claims Can be Patent Eligible Under 35 U.S.C. § 101
Continuing a recent trend, the Federal Circuit recently reversed a determination that claims of a patent are ineligible under 35 U.S.C. § 101. In McRO v. Bandai Namco Games America, the Federal Circuit again concluded that software patents remain patent eligible, and that proper claim construction is critical when determining whether claimed subject matter is patent eligible.
The asserted claims of U.S. Patent No. 6,307,576 (`576 patent) are directed to a method of automatically animating lip synchronization and facial expression of three-dimensional characters. The `576 patent describes prior art techniques of animating and synchronizing the speech of three-dimensional characters that rely on animators manually performing the synchronization based on a timed transcript of the speech. Computer software would then create the intermediate frames between the keyframes based on a continuous transition based on the keyframes. The `576 patent criticized this prior art technique as being very tedious and time consuming, as well as inaccurate due to the large number of keyframes needed to properly depict speech.
When considering the claims of the `576 patent, the district court (the initial trial court) found the asserted claims to be unpatentable under 35 U.S.C. § 101. The district court noted that although the claims "do not seem directed to an abstract idea," the claims add to the prior art the use of rules, rather than artists, to perform the synchronization of the three-dimensional character to the speech. Nevertheless, the district court concluded that the claims were not limited to specific rules, and would therefore preempt all techniques of animated lip synchronization that involve setting morph weights and transitions.
The concern regarding preemption arises when claims are not directed to a specific invention and may improperly monopolize the basic tools of scientific and technological work. For example, it is not possible to obtain a claim directed to the law of gravity or a fundamental mathematical formula such as Einstein’s E=mc2 because such a claim could stifle further usage of these fundamental principles in all areas. Instead, eligible claims must be directed to a specific means or method that improves the relevant technology while allowing other applications of the fundamental principles in other technological areas.
At the Federal Circuit, Appellant McRO (patent owner) argued that the claims of the `576 patent were sufficiently specific to be patent eligible, and that the claims were not directed to an abstract idea because the claims generated the tangible product of a video of the character speaking the recorded audio. Even if the claims were directed to an abstract idea, McRO argued the claims employed specific types of rules in a specific technological way. McRO offered an example where “a swamp monster will use different rules than a tight-lipped cat.” Regarding the allegation that the claims would preempt all techniques of animated lip synchronization that involve setting morph weights and transitions, McRO argued that other techniques of animating three-dimensional characters including capturing the facial motions of actors and applying these captured motions to 3-D animated characters would not be covered by the claims.
Appellees (accused infringers) argued the claims described an algorithm that could be performed with pencil and paper. Appellees also argued the claims simply take a preexisting process and "make it faster by automating it on a general purpose computer." Appellees, echoing the district court’s decision, further argued the claims did not specifically claim particular rules, but instead required the user to provide the rules. Based on this construction, Appellees alleged the claims of the `576 patent created preemption concerns because the claimed rules only reflected relationships that any lip-synchronization process would necessarily consider.
In this case, the Federal Circuit adopted Appellant McRO’s construction of the claims which limited the claims "to rules that evaluate subsequences consisting of multiple sequential phonemes." Specifically, the Federal Circuit found it was "apparent on the face of the claims" that the first set of rules must be formulated before evaluating the subsequence of phonemes.
Relying on this construction of the claims, the Federal Circuit then turned to the first step of the 35 U.S.C. § 101 analysis. The first step of the 35 U.S.C. § 101 analysis is to determine whether the claims are directed to a judicial exception, such as laws of nature, natural phenomena and abstract ideas. Mathematical formulas are one type of abstract idea. Although all inventions at some level embody, use, reflect, rest upon or apply laws of nature, natural phenomena or abstract ideas, the claims are to be considered in their entirety to determine whether the claim, as a whole, is directed to patent eligible subject matter. If the claims are not directed to a judicial exception, the analysis of the patent eligibility of the claims ends.
Like in the other recent decisions where claims were deemed patent eligible, when considering the first step of the analysis, the Federal Circuit cautioned against oversimplifying the claims and failing to account for the specific requirement of the claims. Here, the district court recognized during its own claim construction that the claims of the `576 patent "set out meaningful requirements for the first set of rules" and applied "said first set of rules to each sub-sequence … of timed phonemes." The Federal Circuit identified these specific claimed features and stated these features were necessary to realize the benefits described in the specification. Thus, the claims were limited to a genus of rules with certain common characteristics. The Federal Circuit acknowledged that claims directed to a genus would not necessarily result in preemption concerns, but that a heightened risk of preemption existed with such genus claims.
The Federal Circuit concluded the claims of the `576 patent were not directed to an abstract idea but rather a specific set of limited rules. Regarding Appellee’s argument that the claims simply use a computer to automate conventional lip synchronization activity, the Federal Circuit noted the prior art animator’s technique described by the patent would not be encompassed by the claims, even if automated by rules. Appellee’s argument that no tangible result was generated by the claimed method was also not persuasive because the 35 U.S.C. § 101 analysis does not require the result of a claimed method to be tangible. The Federal Circuit also concluded the claims of the `576 patent, when properly construed, were sufficient to avoid concerns regarding preemption. Specifically, the Federal Circuit stated there was no showing that any rules-based lip synchronization process must use the rules with the claimed characteristics. Rather, the evidence of record suggested there were many other techniques of automating lip synchronization using rules using a variety of different sets of rules and techniques that would not be encompassed by the claims as construed.
Based on these considerations, the Federal Circuit determined that the claims of the `576 patent are not directed to an abstract idea and are therefore patent eligible under 35 U.S.C. § 101.
Although the Federal Circuit did not offer specific guidance as to how claims directed to software may remain patent eligible in all circumstances, McRO joins other recent decisions including Enfish v. Microsoft and Bascom Global Internet Services v. AT&T Mobility in confirming that properly drafted software claims remains patent eligible in the United States. McRO also joins the other prior decisions in emphasizing the need for carefully considering each of the claimed features when analyzing the claims for patent eligibility under 35 U.S.C. § 101.