The primary issue in MCRO, Inc. v. Bandai (Fed. Cir. September 13, 2016) patent eligible subject matter for a software invention. The Federal Circuit found a claim of a patented software invention was patent eligible subject matter. Given that for the past two years, relatively few software patents were affirmed as being eligible for patent protection (i.e., patent eligible subject matter), this is a significant case for at least the following reasons:
- Bandai is one of the rare opinions where software invention was found to be eligible for patent protection under 35 USC §101.
- Bandai is significant for its statements on how to analyze whether a software invention is patent eligible subject matter. More on that below.
- The bar for determining eligibility for patent protection appears to have been significantly lowered for software inventions. As a result, more software inventions may be patent eligible subject matter – signaling a reversal of the trend rejecting a high number of software inventions as being ineligible for patent protection.
In Bandai, the patent owner (MCRO) asserted claims of U.S. Pat. Nos. 6,307,576 and 6,611,278 against the defendant (Bandai). The patents related to a process of automating animation of a character as it speaks. The goal of the patents was to automate a 3-D animator’s tasks, specifically, determining when to set keyframes and the setting of those keyframes. The automation was accomplished through rules that were applied to a timed transcript to determine morph weight outputs. The patents described many rules that go beyond simply matching single phonemes from the timed transcript with an appropriate morph target output. These rule sets produced a more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.
In the prior art, the morph weight outputs were manually set by the animator keyframe by keyframe. However, in the patented invention, the morph weight outputs were set by rules that evaluated sub-sequences consisting of multiple sequential phonemes which produced a more realistic animation.
To determine eligibility for patent protection under 35 U.S.C §101, the court applied the two-step framework specified in Alice. First, a determination was made whether the claimed invention was directed to a judicial exception (i.e., ideas ineligible for patent protection), such as an abstract idea. The district court determined that the patent claims were drawn to an abstract idea of automated, rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation. The Federal Circuit criticized the district court’s characterization of the invention as an oversimplification of the invention by failing to account for the specific requirements recited in the claims. In particular, the asserted claims were limited to rules with specific characteristics which allowed for the improvement realized by the invention. The rules were limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences.
The Federal Circuit also criticized the district court’s characterization of the patent claims as directed to a genus of the invention rather than to a particular species. This, for the district court, raised the issue of whether the patent claims preempted an entire field. Here is where the Federal Circuit clarifies or even reverses course from prior opinions. They state:
The preemption concern arises when the claims are not directed to a specific invention and instead improperly monopolizes “the basic tools of scientific and technological work.” The abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where “it matters not by what process or machinery the result is accomplished.” “A patent is not good for an effect, or the result of a certain process” because such patents “would prohibit all other persons from making the same thing by any means whatsoever.” A patent may issue “for the means or method of producing a certain result, or effect, and not for the result or effect produced.” We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. (emphasis added).
The Federal Circuit, in this case, reduced the force of the defendant’s attack on a patent’s validity based on 35 USC 101 (i.e., patentable eligible subject matter). The Federal Circuit appears to be looking now to whether the claims of the patent are directed to the end result or if the claims specify a particular means or method of achieving the result or effect. The claims of the instant case show how much of the means and method can be recited in the claims in order to be patent eligible subject matter under 35 U.S.C. §101.
The representative patent claim recites:
A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters. (emphasis added).
Based on the representative claim, not much of the means and method need to be in the claims to be patent eligible subject matter. The representative claim does not recite a particular rule for comparing sub sequences. Rather, it merely recites that the rules require comparison of sub- sequences. For the Federal Circuit, this was enough of the method and means (i.e., rule) to transition the claim out from claiming a particular end result or effect (i.e., ineligible) to claiming the means and method of achieving the end result or effect so that the claim would be patent eligible subject matter.