In the fourth of a recent series of appellate decisions establishing patent-eligibility of patent claims post-Alice, in McRO, Inc. v. Bandai Namco Games America, the Court of Appeals for the Federal Circuit reversed a district court ruling of ineligibility.
We have written previously about several recent Federal Circuit decisions in this area, in which the court has taken a careful, measured look at the Supreme Court analysis in Alice, and has found claims to be patent-eligible based on analysis of improvements in computer technology at step one of the Alice analysis, or on ordered combinations of claim elements, or on application of natural phenomena to achieve technological improvement.
In McRO, the Federal Circuit looked at the degree to which the patent claims at issue preempted a particular area of technology. The court determined that the degree of preemption was not sufficiently substantial to warrant a finding of patent-ineligibility. As in the previous three decisions just mentioned, the Federal Circuit reversed the district court.
In arriving at its decision, the Federal Circuit disagreed with the district court’s characterization of the “abstract idea” to which the patent claims at issue allegedly were directed. Essentially, the Federal Circuit found the district court’s identified “abstract idea” to be an oversimplification, leading to ignoring the specific claim requirements and avoiding appropriate focus on what the claims truly cover, and what technological area(s) they preempt.
The McRO Patented Technology
The patents at issue in McRO “aim to automate a 3-D animator’s tasks” to depict various facial expressions to effect animation of lip synchronization during speech. Prior depictions involved detailed animator interaction with timing of speech sequences. The animator would select certain times (keyframes) during speech and would input facial characteristics during those keyframes, using formulas for different facial positions. Software would interpolate between keyframes to fill in the rest and provide smooth facial movement. A lot of keyframes were necessary, meaning a lot of work on the animator’s part to provide appropriate subjective views of what would look like realistic facial movement during speech.
Essentially, when a 3-D animator would set keyframes in the prior art, the animator would be working with individual face models, called “morph targets,” which represent facial positions as a person pronounces a particular sound, or phoneme. The patents applied rules to set transitions between phonemes. In finding that the patent claims were invalid under § 101, the district court found that the claims were broad enough to cover all such rules, and thus preempted the field of lip synchronization using a rules-based approach.
The methodology described in the patents carries out the automation of the 3-D animator’s tasks by determining when to set keyframes and setting those keyframes. Rules would be applied to timed transcripts of speech in order to determine what the appropriate facial characteristic should be at any given point in a speech sequence.
The Federal Circuit’s Analysis
According to the Federal Circuit opinion, “[t]he patents describe many exemplary rule sets” which “aim to produce more realistic speech by ‘tak[ing] into consideration the differences in mouth positions for similar phonemes based on context.’”
In applying this finding, the Federal Circuit held that the district court had oversimplified the claims by looking at them generally, and failing to account for specific claim requirements. The Federal Circuit noted that the district court had acknowledged that the claims specified rules that worked with phoneme sequences. Looking at the claim requirements as an ordered combination, the Federal Circuit found that these rules, working with phoneme sequences rather than with individual phonemes, did not preempt all rules-based approaches.
The Federal Circuit stated:
Claim 1 requires that the rules be rendered in a specific way: as a relationship between sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). The specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization, unless the limits of the rules themselves are broad enough to cover all possible approaches.
Finding nothing in the record to indicate that any rules-based lip-synchronization process must use the same rules with the characteristics that the patent claims recite, the Federal Circuit held that claims are “directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.”
What the Federal Circuit’s McRO decision adds, as a nuanced application of the Alice decision, is the need for greater care in identifying the “abstract idea” to which a claimed invention allegedly is directed. Essentially, viewed at a high enough level, virtually any invention – even an invention which accomplishes something physical, such as the control of a robot – can be seen as abstract. Looking more closely at what claims actually require – viewing the claims as an ordered combination of elements – is necessary before concluding that the claims are directed to an abstract idea.
 2016 U.S. App. LEXIS 16703 (Fed. Cir., September 13, 2016).
 2016 U.S. App. LEXIS 16703 at *9.
 Id. at *24-25.
 Id. at *31.
 Id. at *33.