Presented by Kyle Coleman
A brief of McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) — the 'Planet Blue' case. In an opinion by Judge Reyna, the Federal Circuit held that claims to automated lip-synchronization and facial animation were not directed to an abstract idea under 35 U.S.C. Section 101. The claims used specific, limited rules — defining morph weight sets and phoneme sequences — to automate a process animators had previously performed by subjective judgment; it was the incorporation of the claimed rules, not the use of a computer, that improved the existing technological process, and the limited rules did not preempt all ways of achieving automated lip-sync. Reversed and remanded.
McRO v. Bandai Namco Games America, decided September 13th, 2016. A panel of the Federal Circuit, in an opinion by Judge Reyna, reversed a district court and held that patent claims to a method of automating lip-synchronization in three-dimensional computer animation are not directed to an abstract idea, and are therefore eligible for patenting under Section 101. Here's the brief.
McRO, doing business as Planet Blue, owns two patents on a method for automatically animating the lip movements and facial expressions of three-dimensional characters. Before the invention, animators set these movements by hand, using their own judgment to decide how a character's face should look while speaking each sound. McRO's method instead uses rules that tie together phonemes — the units of speech sound — their timing, and morph weight sets, which describe the shape of a character's face. The rules apply automatically to generate the animation.
McRO sued more than a dozen video-game developers and publishers for infringement across a set of consolidated cases. The defendants moved for judgment on the pleadings, arguing the claims were invalid. The United States District Court for the Central District of California agreed. It held that the claims were directed to the abstract idea of using rules to automate lip-synchronization, reasoning that the patents claimed the use of rules broadly rather than any particular set of rules, and were therefore ineligible under Section 101. McRO appealed to the Federal Circuit.
The question was whether the claims are patent-eligible under Section 101, or whether they fall within the judicial exception for abstract ideas.
Section 101 defines what may be patented. Under the Supreme Court's two-step framework from Alice, a court first asks whether a claim is directed to a patent-ineligible concept, such as an abstract idea. If it is, the court then looks for an inventive concept sufficient to transform the claim into a patent-eligible application. The Federal Circuit resolved McRO at step one, and the concern animating the analysis was preemption — whether a claim would tie up too much of a basic tool of innovation.
The court held the claims are not directed to an abstract idea. It cautioned that courts must be careful not to oversimplify the claims by ignoring their specific requirements.
The claimed rules, the court explained, are limited: they define morph weight sets as a function of the timing of phoneme sub-sequences. The court acknowledged that the claims reach a genus of rules rather than one specific set, but it observed that claims to a genus have long been patentable, and that the relevant question was preemption, not breadth alone. That specificity mattered. The court distinguished the invention from the prior manual process, which the defendants conceded was driven by an animator's subjective judgment rather than specific, limited mathematical rules.
Because the claims used particular rules to improve an existing technological process, rather than simply using a computer as a tool to automate what people already did, they were directed to a technological improvement — not to the abstract idea itself. This, the court said, was unlike earlier cases such as Flook, Bilski, and Alice, where the computer-automated process and the prior method were carried out in the same way.
The court then addressed preemption directly.
Because the specific structure of the rules left other rules-based approaches open, and there was no showing that every rules-based method must use rules with the claimed characteristics, the claims did not preempt the field. Having found the claims eligible at step one, the court did not reach step two.
McRO stands for the proposition that a software claim can survive Alice at step one when it recites specific rules that improve an existing technological process, rather than claiming a result at a level of generality that would preempt other ways of reaching it. The court framed the inquiry around preemption and the specificity of the claimed rules, concluding that the claim was directed to a patentable, technological improvement over existing manual animation techniques. It became a leading Federal Circuit authority on the eligibility of computer-implemented inventions.
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, decided September 13th, 2016. I'm Kyle Coleman. Thanks for watching.
These videos are educational case briefs, not legal advice, and watching them does not create an attorney-client relationship with the presenter or the firm. Case law and its interpretation evolves, always check a decision's subsequent history. Do not rely on these case briefs, but read the case yourself or have your attorney read them. Videos are presented via an AI avatar and voice clone of Kyle Coleman, created with his participation and consent.
