MCRO, INC. v. BANDAI NAMCO GAMES AMERICA INC. 1299 · Cite as 837 F.3d 1299 (Fed. Cir. 2016)...

1299MCRO, INC. v. BANDAI NAMCO GAMES AMERICA INC.Cite as 837 F.3d 1299 (Fed. Cir. 2016)

Nonetheless, we distinguish Massie ondifferent grounds. In Massie, the agree-ment expressly stated that the ‘‘deferredlump-sum payments TTT are guaranteed’’and the annuity payments ‘‘are guaranteedfor fifteen (15) years.’’ 166 F.3d at 1186–87.With these express guarantee provisions,we reversed the trial court’s holding thatthe Government did not agree to guaran-tee the annuity payments. But the Agree-ment here does not have similar guaranteelanguage. Moreover, unlike the Massiesettlement agreement, the Agreementhere contemplates that in the event of adefault by the insurance company, theplaintiffs ‘‘shall have standing to sue thesaid insurance company for breach of con-tract’’ and ‘‘the United States shall assistTTT in the prosecution of said suit.’’ J.A.27. The Agreement says nothing about theGovernment’s obligations to pay the annui-ty in the event of a default. As such, wedecline to extend Massie to the facts ofthis case, where the Agreement’s languagedoes not unambiguously show that theGovernment agreed to guarantee the fu-ture payments by the annuity.

CONCLUSION

For the reasons above, we affirm thejudgment of the Court of Federal Claims.

AFFIRMED

COSTS

No Costs

,

MCRO, INC., DBA Planet Blue,Plaintiff–Appellant

v.

BANDAI NAMCO GAMES AMERICAINC., Naughty Dog, Inc., Konami Di-gital Entertainment, Inc., Sega ofAmerica, Inc., Electronic Arts Inc.,Obsidian Entertainment, Inc., DisneyInteractive Studios, Inc., Square Enix,Inc., Neversoft Entertainment, Inc.,Treyarch Corporation, Capcom USA,Inc., Sony Computer EntertainmentAmerica LLC, Atlus U.S.A., Inc., Suck-er Punch Productions, LLC, InfinityWard, Inc., Lucasarts, A Division ofLucasFilm Entertainment CompanyLtd. LLC, Warner Bros. InteractiveEntertainment, A Division of WarnerBros. Home Entertainment Inc., Ac-tivision Publishing, Inc., Blizzard En-tertainment, Inc., Valve Corporation,Codemasters USA Group, Inc., Code-masters Software Inc., Codemasters,Inc., The Codemasters Software Com-pany Limited, Defendants–Appellees

2015–1080, –1081, –1082, –1083, –1084, –1085, –1086, –1087, –1088, –1089, –1090, –1092, –1093, –1094, –1095, –1096, –1097, –1098, –1099, –1100, –1101

United States Court of Appeals,Federal Circuit.

Decided: September 13, 2016

Background: Owners of patents for auto-matically animating the lip synchronizationand facial expressions of three-dimensionalanimated characters brought infringementactions, and cases were consolidated. TheUnited States District Court for the Cen-tral District of California, George H. Wu,J., 55 F.Supp.3d 1214, granted defendants’motion for judgment on the pleadings onunpatentability. Patent owners appealed.

1300 837 FEDERAL REPORTER, 3d SERIES

Holdings: The Court of Appeals, Reyna,Circuit Judge, held that:

(1) ‘‘first set of rules’’ in patents werelimited to rules evaluating sub-se-quences consisting of multiple sequen-tial phonemes;

(2) patent claims were limited to ruleswith specific, common characteristics,i.e., genus, rather than covering allrules; and

(3) patent claim was not directed to ab-stract idea, and did not merely invokegeneric processes and machinery, thusfavoring patentability.

Reversed and remanded.

1. Courts O96(7)Federal Circuit reviews procedural as-

pects of the grant of judgment on thepleadings under the law of the regionalcircuit. Fed. R. Civ. P. 12(c).

2. Federal Courts O3587(2)In the Ninth Circuit, courts review de

novo the grant or denial of judgment onthe pleadings. Fed. R. Civ. P. 12(c).

3. Patents O1970(4)Federal Circuit reviews de novo

whether a claim is invalid under the judi-cially created exceptions to the patentabili-ty statute. 35 U.S.C.A. § 101.

4. Patents O1393‘‘First set of rules’’ in patents for au-

tomatically animating lip synchronizationand facial expressions of three-dimensionalanimated characters were limited to rulesevaluating sub-sequences consisting ofmultiple sequential phonemes, rather thenrules evaluating individual phonemes,where, in particular, intermediate morphweight sets and transition parameterswere generated ‘‘by evaluating said plurali-ty of sub-sequences against said first set ofrules,’’ and this limitation could not be

satisfied by rules that only evaluated indi-vidual phonemes.

5. Patents O452

Laws of nature, natural phenomena,and abstract ideas are not patentable. 35U.S.C.A. § 101.

6. Patents O452

To determine patent eligibility, courtsfirst determine whether the claim at issueis directed to a judicial exception, such asan abstract idea. 35 U.S.C.A. § 101.

7. Patents O454

Mathematical formula is a type of ab-stract idea that is not patentable. 35U.S.C.A. § 101.

8. Patents O452

Abstract idea exception to patentabili-ty prevents patenting a result where itmatters not by what process or machinerythe result is accomplished. 35 U.S.C.A.§ 101.

9. Patents O452, 470

Courts will not assume that patentclaims are directed to patent ineligiblesubject matter, since all inventions at somelevel embody, use, reflect, rest upon, orapply laws of nature, natural phenomena,or abstract ideas, and instead claims areconsidered in their entirety to ascertainwhether their character as a whole is di-rected to excluded subject matter. 35U.S.C.A. § 101.

10. Patents O455

If patent claims are directed to anabstract idea, the court will considerwhether the claims contain an inventiveconcept sufficient to transform the natureof the claim into a patent-eligible applica-tion, looking to both the claim as a wholeand the individual claim elements to deter-mine whether the claims contain an ele-ment or combination of elements that is


sufficient to ensure that the patent in prac-tice amounts to significantly more than apatent upon the ineligible concept itself.35 U.S.C.A. § 101.

11. Patents O455

Prohibition against patenting abstractideas cannot be circumvented by attempt-ing to limit the use of the idea to a particu-lar technological environment. 35U.S.C.A. § 101.

12. Patents O460

Claims in patent for automatically ani-mating lip synchronization and facial ex-pressions of three-dimensional animatedcharacters were limited to rules with spe-cific, common characteristics, i.e., genus,rather than covering all rules, thus favor-ing patentability, where claims definedmorph weight set stream as function ofphoneme sequence and times associatedwith said sequence and required applica-tion of first set of rules to each sub-se-quence of timed phonemes, and claimedimprovement was allowing computers toproduce accurate and realistic lip synchro-nization and facial expressions that previ-ously could only be produced by humananimators. 35 U.S.C.A. § 101.

13. Patents O441

Claims to the genus of an invention,rather than a particular species, are pat-entable. 35 U.S.C.A. § 101.

14. Patents O452

Preemption concern arises when thepatent claims are not directed to a specificinvention and instead improperly monopo-lize the basic tools of scientific and techno-logical work. 35 U.S.C.A. § 101.

15. Patents O445

Effect or the result of a certain pro-cess is not patent eligible, because suchpatents would prohibit all other persons

from making the same thing by any meanswhatsoever. 35 U.S.C.A. § 101.

16. Patents O444, 445Patent may issue for the means or

method of producing a certain result, oreffect, but not for the result or effectproduced. 35 U.S.C.A. § 101.

17. Patents O460Claim in patent for automatically ani-

mating lip synchronization and facial ex-pressions of three-dimensional animatedcharacters was not directed to abstractidea, and did not merely invoke genericprocesses and machinery, thus favoringpatentability, where claim was focused onspecific asserted improvement in computeranimation, i.e., automatic use of rules ofparticular type, as structure of limitedrules reflected specific implementationthat animator engaged in search for auto-mation process likely would not have uti-lized, and claim was limited to specificprocess for automatically animating char-acters using particular information andtechniques and it did not preempt ap-proaches that used rules of different struc-ture or different techniques. 35 U.S.C.A.§ 101.

Patents O20916,307,576, 6,611,278. Cited.

Appeals from the United States DistrictCourt for the Central District of Californiain Nos. 2:12–cv–10322–GW–FFM, 2:12–cv–10323–GW–FFM, 2:12–cv–10327–GW–FFM, 2:12–cv–10329–GW–FFM, 2:12–cv–10331–GW–FFM, 2:12–cv–10333–GW–FFM, 2:12–cv–10335–GW–FFM, 2:12–cv–10337–GW–FFM, 2:12–cv–10338–GW–FFM, 2:12–cv–10341–GW–FFM, 2:12–cv–10342–GW–FFM, 8:13–cv–01870–GW–FFM, 2:14–cv–00332–GW–FFM, 2:14–cv–00336–GW–FFM, 2:14–cv–00358–GW–FFM, 2:14–cv–00383–GW–FFM, 2:14–cv–


00352–GW–FFM, 2:14–cv–00417–GW–FFM, 8:13–cv–01874–GW–FFM, 2:14–cv–00389–GW–FFM, 2:14–cv–00439–GW–FFM, Judge George H. Wu.

JEFFREY A. LAMKEN, MoloLamken LLP,Washington, DC, argued for plaintiff-ap-pellant. Also represented by MICHAEL

GREGORY PATTILLO, JR.; JOHN FRANCIS PE-

TRSORIC, MARK STEWART RASKIN, ROBERT

ALAN WHITMAN, Mishcon de Reya NewYork LLP, New York, NY; JOHN M.WHEALAN, Chevy Chase, MD.

SONAL NARESH MEHTA, Durie TangriLLP, San Francisco, CA, representing de-fendants-appellees Electronic Arts Inc.,Capcom USA, Inc., Activision Publishing,Inc., Blizzard Entertainment, Inc., arguedfor all defendants-appellees.

EDWARD R. REINES, Weil, Gotshal &Manges LLP, Redwood Shores, CA, fordefendants-appellees Bandai NamcoGames America Inc., Sega of America,Inc., Disney Interactive Studios, Inc., Nev-ersoft Entertainment, Inc., Treyarch Cor-poration, Atlus U.S.A., Inc., Infinity Ward,Inc., LucasArts, a Division of LucasFilmEntertainment Company Ltd. LLC, War-ner Bros. Interactive Entertainment, a Di-vision of Warner Bros. Home Entertain-ment Inc.

BASIL TRENT WEBB, Shook, Hardy & Ba-con, LLP, Kansas City, MO, for defen-dants-appellees Naughty Dog, Inc., SonyComputer Entertainment America LLC,Sucker Punch Productions, LLC. Also rep-resented by JOHN D. GARRETSON, BETH A.LARIGAN.

WENDY J. RAY, Morrison & FoersterLLP, Los Angeles, CA, for defendants-appellees Konami Digital Entertainment,Inc., Square Enix, Inc. Also representedby BENJAMIN J. FOX.

ANDREW DAVID TSU, Spach Capaldi &Waggaman LLP, Newport Beach, CA, fordefendant-appellee Obsidian Entertain-

ment, Inc. Also represented by THOMAS

WALLING.

JAN PATRICK WEIR, Michelman & Robin-son, LLP, Irvine, CA, for defendant-appel-lee Valve Corporation. Also represented byJOSEPH JAMES MELLEMA; THEODORE J. AN-

GELIS, DAVID T. MCDONALD, K & L GatesLLP, Seattle, WA.

KEVIN W. KIRSCH, Baker & HostetlerLLP, Cincinnati, OH, for defendants-ap-pellees Codemasters, Inc., CodemastersUSA Group, Inc., Codemasters SoftwareInc., The Codemasters Software CompanyLimited. Also represented by JARED A.BRANDYBERRY; BARRY EASTBURN BRETSCH-

NEIDER, Washington, DC.

CHARLES DUAN, Public Knowledge,Washington, DC, for amici curiae PublicKnowledge, Electronic Frontier Founda-tion. Also represented by VERA RANIERI,Electronic Frontier Foundation, San Fran-cisco, CA.

ANDREW JOHN PINCUS, Mayer BrownLLP, Washington, DC, for amicus curiaeBSA I The Software Alliance. Also repre-sented by PAUL WHITFIELD HUGHES.

Before REYNA, TARANTO, andSTOLL, Circuit Judges.

REYNA, Circuit Judge.

This appeal is from a grant of judgmenton the pleadings under Fed. R. Civ. P.12(c) that the asserted claims of U.S. Pat-ent Nos. 6,307,576 (‘‘the ’576 patent’’) and6,611,278 (‘‘the ’278 patent’’) are invalid.The United States District Court for theCentral District of California found thatthe asserted claims are directed to patent-ineligible subject matter and are thereforeinvalid under 35 U.S.C. § 101 (‘‘§ 101’’).McRO, Inc. v. Sony Computer Entm’tAm., LLC, 55 F.Supp.3d 1214 (C.D. Cal.2014) (‘‘Patentability Op.’’). We hold thatthe ordered combination of claimed steps,


using unconventional rules that relate sub-sequences of phonemes, timings, andmorph weight sets, is not directed to anabstract idea and is therefore patent-eligi-ble subject matter under § 101. According-ly, we reverse.

I. BACKGROUND

A. Factual Background

The ’576 patent and the ’278 patent wereboth issued to Maury Rosenfeld and areboth titled ‘‘Method for Automatically Ani-mating Lip Synchronization and Facial Ex-pression of Animated Characters.’’The ’278 patent is a continuation ofthe ’576 patent and shares the same writ-ten description.

1. Admitted Prior Art

The patents relate to automating part ofa preexisting 3–D animation method. Asexplained in the background of the pat-ents, the admitted prior art method usesmultiple 3–D models of a character’s faceto depict various facial expressions madeduring speech. See generally ’576 patentcol. 1 l. 14 to col. 2 l. 37. To animate the

character as it speaks, the method morphsthe character’s expression between themodels. The ‘‘neutral model’’ is the 3–Drepresentation of the resting, neutral facialexpression of an animated character. Theother models of the character’s face areknown as ‘‘morph targets,’’ and each onerepresents that face as it pronounces aphoneme, i.e., makes a certain sound. Thisvisual representation of the character’sface making a sound is also called a ‘‘vi-seme.’’ McRO Br. 7. An example morphtarget for the ‘‘ahh’’ phoneme is shownbelow. Each of these morph targets andthe neutral model has identified points,called ‘‘vertices,’’ in certain places on theface. The set of differences in the locationof these vertices (and the correspondingpoint on the face) between the neutralmodel and the morph target form a ‘‘deltaset’’ of vectors representing the change inlocation of the vertices between the twomodels. For each morph target, there is acorresponding delta set consisting of thevectors by which the vertices on thatmorph target differ from the neutral mod-el.


Defs.’ Br. 8.1

Facial expressions are described as afunction of the amount each morph target,and its corresponding delta set, is appliedto modify the character model. ‘‘In produc-ing animation products, a value usuallyfrom 0 to 1 is assigned to each delta set bythe animator and the value is called the‘morph weight.’ ’’ ’576 patent col. 1 ll. 63–65. The set of morph weights for all thedelta sets is called a ‘‘morph weight set.’’The neutral model is represented by amorph weight set with all morph weightsof 0. A desired morph target is represent-ed by the morph weight of 1 for thatmorph target’s delta set and a morphweight of 0 for all other delta sets.

The power of this prior art animationmethod is in generating intermediate faces

by using morph weights between 0 and 1to blend together multiple morph targets.For example, the face halfway between theneutral model and the ‘‘oh’’ face can beexpressed simply by setting the ‘‘oh’’morph weight to 0.5, i.e., 50%, as shownbelow at the left. The model halfway to thenext syllable, in turn, could be expressedby setting both the ‘‘oh’’ morph weight andthat for the next syllable each to 0.5, creat-ing a blend of those two delta sets. McROBr. 11; see also Defs.’ Br. 8–11. For eachmorph weight set, the resulting facial ex-pression is calculated by determining thedisplacement of each vertex from the neu-tral model as the product of the morphweights in the morph weight set and thecorresponding delta sets for the morphtargets. ’576 patent col. 2 ll. 2–15.2

1. The images in this opinion are drawn fromMcRO’s claim construction tutorial presentedto the district court, J.A. 3573, excerpts ofwhich are used by both parties to explain theprior art method. Defendants dispute McRO’s

depiction of the claimed method in that tuto-rial and we do not rely on any of thosedepictions. See Defs.’ Br. 46.

2.


McRO Br. 11.

Animation of the character and lip syn-chronization preexisting the invention wasgenerally accomplished by an animatorwith the assistance of a computer. Anima-tors used ‘‘a ‘keyframe’ approach, wherethe artist set[ ] the appropriate [morph]weights at certain important times (‘key-

frames’)’’ instead of at every frame. ’576patent col. 2 ll. 31–33. Animators knewwhat phoneme a character pronounced at agiven time from a ‘‘time aligned phonetictranscription’’ (‘‘timed transcript’’). Thislisted the ‘‘occurrence in time’’ of eachphoneme the character pronounced, asshown in the example below. Id. at col. 1 ll.32–34.


McRO Br. 7.

Animators, using a computer, manuallydetermined the appropriate morph weightsets for each keyframe based on the pho-neme timings in the timed transcript. ‘‘Foreach keyframe, the artist would look at thescreen and, relying on her judgment, ma-nipulate the character model until it lookedright—a visual and subjective process.’’McRO Reply Br. 4 (emphasis removed);Defs.’ Br. 10 (‘‘Using the [timed tran-script], the animator would decide whatthe animated face should look like at keypoints in time between the start and endtimes, and then ‘draw’ the face at thosetimes.’’). Because the pronounced phonemeand drawn keyframe corresponded in time,this prior art process synchronized the lipsand facial expression of the 3–D character.

A computer program would then interpo-late between the keyframes set by theanimator, creating the intermediate framesby determining the appropriate morphweight sets at intermediate points in timesimply based on continuously transitioningbetween the keyframes. ’576 patent col. 2ll. 32–36.

2. Claimed Invention

The patents criticize the preexistingkeyframe approach as ‘‘very tedious andtime consuming, as well as inaccurate dueto the large number of keyframes neces-sary to depict speech.’’ ’576 patent col. 2 ll.35–37. They suggest the

present invention overcomes many ofthe deficiencies of the prior art and ob-


tains its objectives by providing an inte-grated method embodied in computersoftware for use with a computer for therapid, efficient lip synchronization andmanipulation of character facial expres-sions, thereby allowing for rapid, crea-tive, and expressive animation productsto be produced in a very cost effectivemanner.

Id. at col. 2 ll. 38–44. ‘‘Accordingly, it is theprimary object of this invention to providea method for automatically TTT producingaccurate and realistic lip synchronizationand facial expressions in animated charac-ters.’’ Id. at col. 2 ll. 45–50.

Essentially, the patents aim to automatea 3–D animator’s tasks, specifically, deter-mining when to set keyframes and settingthose keyframes. This automation is ac-complished through rules that are appliedto the timed transcript to determine themorph weight outputs. The patents de-scribe many exemplary rule sets that gobeyond simply matching single phonemesfrom the timed transcript with the appro-priate morph target. Instead, these rulesets aim to produce more realistic speechby ‘‘tak[ing] into consideration the differ-ences in mouth positions for similar pho-nemes based on context.’’ Id. at col. 10 ll.6–7.

One exemplary set of rules provided andapplied in the specification of the ’576 pat-ent is for a character transitioning fromsilence through saying ‘‘hello.’’ See ’576patent col. 7 l. 36 to col. 9 l. 22. Thisexemplary set of rules provides for insert-ing a transition starting shortly before thefirst syllable after a silence. Id. at col. 8 ll.24–28. The transition marks when the

character begins to transition from silence,shown by the closed-mouthed neutral mod-el, to the morph target for the first sylla-ble, with its open-mouthed shape. Id. atcol. 8 ll. 61–63. That is, the rule automatesa character’s facial expressions so thecharacter will wait until shortly before itstarts speaking to begin opening its mouth.In terms of the prior art method, the effectof this rule is to automatically create akeyframe at a point that no phoneme isbeing pronounced. Id. at col. 9 ll. 10–11. Ifinstead no transition were placed at thatposition, the resulting animation wouldhave an unrealistic quality. The characterwould open its mouth gradually from thebeginning of the sequence through its firstutterance as a result of the computer in-terpolating a continuous transition be-tween those two points. In the prior artsystem, an animator would have to subjec-tively identify the problematic sequenceand manually fix it by adding an appropri-ate keyframe. The invention, however,uses rules to automatically set a keyframeat the correct point to depict more realisticspeech, achieving results similar to thosepreviously achieved manually by anima-tors.

Claim 1 of the ’576 patent is representa-tive and dispositive of the asserted claims 3

for the purposes of appeal:

A method for automatically animatinglip synchronization and facial expressionof three-dimensional characters compris-ing:

obtaining a first set of rules that defineoutput morph weight set stream as a

3. McRO has asserted claims 1, 7–9, and 13 ofthe ’576 patent and claims 1–4, 6, 9, 13, and15–17 of the ’278 patent. The district courtfocused its analysis on claim 1 of the ’576patent as representative. It held that neitherthe different text of the other independentclaims nor the added limitations of the depen-

dent claims in either patent affected the resultregarding patentability. Patentability Op., 55F.Supp.3d at 1228–29. The parties do notdispute this conclusion or separately argueany other claims. See McRO Br. 19; Defs.’ Br.40 n.12. We agree and focus our discussionon this claim.


function of phoneme sequence and timeof said phoneme sequence;obtaining a timed data file of phonemeshaving a plurality of sub-sequences;generating an intermediate stream ofoutput morph weight sets and a pluralityof transition parameters between twoadjacent morph weight sets by evaluat-ing said plurality of sub-sequencesagainst said first set of rules;generating a final stream of outputmorph weight sets at a desired framerate from said intermediate stream ofoutput morph weight sets and said plu-rality of transition parameters; andapplying said final stream of outputmorph weight sets to a sequence of ani-mated characters to produce lip syn-chronization and facial expression con-trol of said animated characters.

’576 patent, cl. 1, col. 11 ll. 27–47.

B. Procedural History

In 2012 and 2013, Plaintiff–AppellantMcRO, Inc., d/b/a Planet Blue (‘‘McRO’’)filed lawsuits in the U.S. District Courtsfor the Central District of California and

for the District of Delaware. The defen-dants are generally video game developersand publishers. On January 15, 2014, eightof the lawsuits originally filed in Delawarewere transferred to the Central District ofCalifornia. The five cases remaining in De-laware are not part of this appeal, but arestayed pending the resolution of this ap-peal.4

The Central District of California (‘‘dis-trict court’’) consolidated the proceedingsthere for pre-trial purposes on two tracks.5

It held a claim construction hearing in theTrack 1 cases on April 29, 2014, and issuedits Rulings on Claim Construction on May1, 2014. J.A. 4009, 4155–73.6

C. District Court’s § 101 Ruling

On July 10, 2014, all Central District ofCalifornia defendants from both tracks(‘‘Defendants’’) jointly filed a motion forjudgment on the pleadings that the assert-ed claims were directed to patent ineligiblesubject matter under § 101. PatentabilityOp., 55 F.Supp.3d at 1216. After a hearing,the district court granted the motion on

4. McRO, Inc. v. Bethesda Softworks LLC, No.12–cv–1509 (D. Del.); McRO, Inc. v. Harmo-nix Music Sys. Inc., No. 12–cv–1510 (D. Del.);McRO, Inc. v. Rockstar Games, Inc., No. 12–cv–1513 (D. Del.); McRO, Inc. v. Take–TwoInteractive Software, Inc., No. 12–cv–1517 (D.Del.); McRO, Inc. v. 2K Games, Inc., No. 12–cv–1519 (D. Del.).

5. The Track 1 cases at the time the districtcourt issued its Judgment on Pleadings were:McRO, Inc. v. Namco Bandai Games Am.,Inc., CV–12–10322; McRO, Inc. v. KonamiDigital Entm’t, Inc., CV–12–10323; McRO,Inc. v. Sega of Am., Inc., CV–12–10327;McRO, Inc. v. Elec. Arts, Inc., CV–12–10329;McRO, Inc. v. Obsidian Entm’t, Inc., CV–12–10331; McRO, Inc. v. Disney Interactive Stu-dios, Inc., CV–12–10333; McRO, Inc. v.Naughty Dog, Inc., CV–12–10335; McRO, Inc.v. Capcom USA, Inc., CV–12–10337; McRO,Inc. v. Square Enix, Inc., CV–12–10338;McRO, Inc. v. Neversoft Entm’t, Inc., CV–12–

10341; McRO, Inc. v. Treyarch Corp., CV–12–10342; McRO, Inc. v. Atlus U.S.A., et al., CV–13–1870; McRO, Inc. v. Sucker Punch Prod.s,LLC, CV–14–0332; McRO, Inc. v. ActivisionBlizzard, Inc., CV–14–0336; McRO, Inc. v. In-finity Ward, Inc., CV–14–0352; McRO, Inc. v.LucasArts Entm’t Co., CV–14–358; McRO, Inc.v. Sony Comput. Entm’t Am., LLC, CV–14–0383; McRO, Inc. v. Warner Bros. InteractiveEntm’t Inc., CV–14–0417.

The Track 2 cases were: McRO, Inc. v.Valve Corp., CV–13–1874; McRO, Inc. v. Code-masters USA Grp., Inc., CV–14–0389; McRO,Inc. v. Codemasters, Inc., CV–14–0439. Patent-ability Op., 55 F.Supp.3d at 1216 n.1.

6. The parties do not argue that any of thedistrict court’s constructions affect patent eli-gibility or contest the constructions arrived atby the district court. The parties raise twounrelated claim interpretation issues on ap-peal, discussed below.


September 22, 2014, finding the assertedclaims unpatentable. Id. at 1230.

The district court’s analysis looselytracks the two-step framework laid out bythe Supreme Court in Alice Corp. v. CLSBank Int’l, ––– U.S. ––––, 134 S.Ct. 2347,2355, 189 L.Ed.2d 296 (2014) (‘‘Alice’’).First, the district court discussed theclaims generally: ‘‘Facially, these claims donot seem directed to an abstract idea.They are tangible, each covering an ap-proach to automated three-dimensionalcomputer animation, which is a specifictechnological process.’’ Patentability Op.,55 F.Supp.3d at 1224. ‘‘At first blush, it istherefore difficult to see how the claimsmight implicate the basic underlying con-cern that these patents tie up too muchfuture use of any abstract idea they ap-ply.’’ Id. (quotation marks omitted).

Second, the district court attempted to‘‘factor out conventional activity’’ by com-paring the claims to the admitted prior artprocess that the patent sought to improve.Id. at 1224. The court accepted as undis-puted that ‘‘a central part of the patents is‘using morph weight set representations ofthe facial shape coupled with rules TTT togenerate keyframes.’ ’’ Id. at 1226. Thecourt then looked to ‘‘whether the inclusionof that concept in the claims satisfies § 101given (1) the prior art, and (2) the fact thatthe claims do not require any particularrules.’’ Id.

After looking at each claim element inturn, the district court concluded, ‘‘theclaim adds to the prior art TTT the use ofrules, rather than artists, to set the morphweights and transitions between pho-nemes.’’ Id. at 1227. Nonetheless, the dis-trict court found the claims too broadlypreemptive to satisfy § 101. In the districtcourt’s view, because the claims were notlimited to specific rules,7 but rather ‘‘pur-

port to cover all such rules,’’ the claimsmerely call for application of the abstractidea of using rules. Id. at 1227 (citingAlice, 134 S.Ct. at 2358). The district courtfound that, ‘‘while the patents do notpreempt the field of automatic lip synchro-nization for computer-generated 3D anima-tion, they do preempt the field of such lipsynchronization using a rules-based morphtarget approach.’’ Id. at 1227. The courtconcluded that the claims were unpatent-able because ‘‘the novel portions of [the]invention are claimed too broadly.’’ Id. at1230.

The district court entered judgmentagainst McRO on October 31, 2014. J.A.24–26. McRO appeals. We have jurisdictionunder 28 U.S.C. § 1295(a)(1).

II. PARTIES’ ARGUMENTS

The parties’ principal dispute is over themeaning and application of two SupremeCourt cases in light of Alice: Parker v.Flook, 437 U.S. 584, 98 S.Ct. 2522, 57L.Ed.2d 451 (1978) (‘‘Flook’’) and Dia-mond v. Diehr, 450 U.S. 175, 101 S.Ct.1048, 67 L.Ed.2d 155 (1981) (‘‘Diehr’’).Both cases addressed the patentability ofprocess claims that include steps requiringcalculation.

A. McRO’s Position

McRO argues that Diehr controls theoutcome here and dictates that the claimsare not directed to an abstract idea. Spe-cifically, McRO argues that the claims arenot directed to an abstract idea becausethey generate a tangible product, namely‘‘a video of a 3–D character speaking therecorded audio.’’ McRO Br. 38. Accordingto McRO, the claimed process is technolog-ical because it provides ‘‘a method for get-ting a computer to automatically generate

7. The claim term is ‘‘first set of rules,’’ but wewill follow the shorthand adopted by the dis-

trict court and parties of referring to the‘‘rules’’ or ‘‘claimed rules.’’


video of a 3–D animated character speak-ing in sync with pre-recorded dialogue—without requiring an artist’s constant in-termediation.’’ McRO Br. 42.

McRO argues that even if we find theclaims are directed to an abstract idea,they are nonetheless patent eligible be-cause they ‘‘effect an improvement in [a]technology or technical field,’’ specifically3–D computer generated lip-synchroniza-tion. McRO Br. 43 (quoting Alice, 134S.Ct. at 2359 (citing Diehr, 450 U.S. at177–78, 101 S.Ct. 1048)). This improve-ment, McRO argues, results from its meth-od that ‘‘employs specific types of rules’’and uses those rules in ‘‘a specific techno-logical way.’’ McRO Br. 45 (emphasis inoriginal). The claimed type of rules areonly those ‘‘rules that define output morphweight set stream as a function of pho-neme sequence and time of said phonemesequence.’’ Id. at 46 (quoting ’576 patent,cl. 1, col. 11 ll. 30–32). When applied, inMcRO’s interpretation, these rules must‘‘adjust for the fact that a phoneme maylook different when spoken depending onthe phonemes preceding and/or followingit.’’ McRO Br. 46.

These limitations are specific enough inMcRO’s view because the rules will neces-sarily vary by character as, for example, ‘‘aswamp monster will use different rulesthan a tight-lipped cat.’’ Id. at 46. McROargues that its claims cannot preempt thefield because other techniques exist thatautomate facial synchronization by captur-ing actors’ facial motions and applyingthose motions to 3–D animated characters.McRO Br. 50 (citing Barbara Robertson,Big Moves, Computer Graphics World(Nov. 2006), available at http://www.cgw.com/Publications/CGW/2006/Volume-29-Issue-11-Nov-2006-/Big-Moves.aspx).8

B. Defendants’ Position

Defendants argue that Flook controlsbecause the claims are unpatentable algor-ithms that ‘‘can be performed solely withpencil and paper.’’ Defs.’ Br. 28. Theclaims, in Defendants’ view, ‘‘merely pur-port to take a preexisting process andmake it faster by automating it on a gener-al-purpose computer.’’ Defs.’ Br. 19. Defen-dants argue that these claims fail evenunder Diehr because they do not result inany tangible product, instead only produc-ing a ‘‘stream of output morph weightsets’’ that are applied ‘‘to produce lip syn-chronization’’ without requiring the pro-duction of anything tangible like a vid-eo. ’576 patent, claim 1, col. 11 ll. 44–47;Defs.’ Br. 30. Even if specific processingsteps are required, Defendants argue theclaims remain directed to an abstract ideabecause they only require using ‘‘mathe-matical algorithms to manipulate existinginformation to generate additional infor-mation.’’ Defs.’ Br. 34 (quoting DigitechImage Techs., LLC v. Elecs. for Imaging,Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)).

Echoing the district court, Defendantsfault the claims for not specifically claim-ing particular rules, and instead requiringthat the user provide the rules. Defs.’ Br.40–42; see also Patentability Op., 55F.Supp.3d at 1227, 1230. Defendants dis-pute that the claimed rules depend on thepreceding or succeeding phonemes, i.e.,sub-sequences of phonemes, and faultMcRO for failing to raise this interpreta-tion as a claim construction issue beforethe district court. Defs.’ Br. 43–44. Defen-dants claim broad preemption occurs be-cause the rules only reflect relationships‘‘that any intelligible lip-synchronization

8. Defendants do not dispute this is an alterna-tive method for automatic lip synchronizationof 3–D animated characters; instead, they ar-

gue that ‘‘this technology is not remotely simi-lar to the patented technology.’’ Defs.’ Br. 53.


process must consider.’’ Id. at 50 (empha-sis original). The relationships expressedby these rules, Defendants argue, inevita-bly capture ‘‘a preexisting fundamentaltruth’’ about how a human mouth lookswhile speaking certain sounds over time,preempting all possible rules-based meth-ods. Alice, 134 S.Ct. at 2356; see Defs.’ Br.16, 49–51.9

III. STANDARD OF REVIEW

[1–3] We review procedural aspects ofthe grant of judgment on the pleadingsunder the law of the regional circuit, inthis case the Ninth Circuit. Allergan, Inc.v. Athena Cosmetics, Inc., 640 F.3d 1377,1380 (Fed. Cir. 2011). The Ninth Circuitreviews the grant or denial of judgment onthe pleadings under Rule 12(c) de novo.Kotrous v. Goss–Jewett Co., 523 F.3d 924,929 (9th Cir. 2008). We also review de novowhether a claim is invalid under the judi-cially created exceptions to § 101. AriosaDiagnostics, Inc. v. Sequenom, Inc., 788F.3d 1371, 1375 (Fed. Cir. 2015).

IV. DISCUSSION

A. Claim Interpretation

[4] As an initial matter, we note that,in this case, claim construction is helpful toresolve the question of patentability under§ 101. Specifically, the parties’ disputeabout whether the ‘‘first set of rules’’ mustevaluate sequential phonemes or can evalu-ate individual phonemes is resolved by the

claim language. We agree with McRO thatthe claims are limited to rules that evalu-ate sub-sequences consisting of multiplesequential phonemes. This limitation is ap-parent on the face of the claims. See Phil-lips v. AWH Corp., 415 F.3d 1303, 1314(Fed. Cir. 2005) (en banc). In particular,the intermediate morph weight sets andtransition parameters are generated ‘‘byevaluating said plurality of sub-sequencesagainst said first set of rules.’’ ’576 patent,cl. 1, col. 11 ll. 36–39.10 This limitationcould not be satisfied by rules that onlyevaluate individual phonemes. Instead, theclaimed ‘‘first set of rules’’ must be formu-lated to evaluate sub-sequences of pho-nemes.11

B. Patentability Under § 101

[5] Section 101 defines patent eligiblesubject matter as ‘‘any new and usefulprocess, machine, manufacture, or compo-sition of matter, or any new and usefulimprovement thereof,’’ subject to the otherlimitations of the Patent Act. Apart fromthe Patent Act, the courts have createdexceptions to the literal scope of § 101.‘‘Laws of nature, natural phenomena, andabstract ideas are not patentable.’’ Alice,134 S.Ct. at 2354 (quoting Ass’n for Molec-ular Pathology v. Myriad Genetics, Inc.,––– U.S. ––––, 133 S.Ct. 2107, 2116, 186L.Ed.2d 124 (2013) (‘‘Myriad’’)). This ap-peal involves the abstract idea exception.

[6–9] In Alice, the Court applied atwo-step framework for analyzing whether

9. Amicus similarly argues that the claims aredirected to a natural phenomenon instead ofan abstract idea, specifically ‘‘the movementof the mouth to articulate sounds.’’ AmicusPublic Knowledge Br. 11; see also Defs.’ Br.26.

10. The limitation with the same effect in inde-pendent claim 1 of the ’278 patent is ‘‘apply-ing said first set of rules to each sub-se-quence’’ at column 11 lines 53–54.

11. The parties also dispute whether the rulesmust take into account the pacing of speechbased on the ‘‘and time of said phonemesequence’’ limitation. Resolution of this ques-tion is neither necessary to resolve of theissues on appeal nor indisputably resolved bythe claim language. We therefore decline toaddress this issue in the first instance andexpress no opinion on whether McRO haswaived these arguments or is bound by themfor purposes of infringement.


claims are patent eligible. First, we deter-mine whether the claim at issue is ‘‘direct-ed to’’ a judicial exception, such as anabstract idea. Alice, 134 S.Ct. at 2355.Mathematical formulas are a type of ab-stract idea. Gottschalk v. Benson, 409 U.S.63, 64, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)(‘‘Benson’’). The abstract idea exceptionprevents patenting a result where ‘‘it mat-ters not by what process or machinery theresult is accomplished.’’ O’Reilly v. Morse,56 U.S. (15 How.) 62, 113, 14 L.Ed. 601(1854). We do not assume that such claimsare directed to patent ineligible subjectmatter because ‘‘all inventions at some lev-el embody, use, reflect, rest upon, or applylaws of nature, natural phenomena, or ab-stract ideas.’’ Mayo Collaborative Servs. v.Prometheus Labs., Inc., ––– U.S. ––––, 132S.Ct. 1289, 1293, 182 L.Ed.2d 321 (2012)(‘‘Mayo’’); see also In re TLI Commc’nsLLC Patent Litig., 823 F.3d 607, 611 (Fed.Cir. 2016) (‘‘TLI Commc’ns’’). Instead,‘‘the claims are considered in their entiretyto ascertain whether their character as awhole is directed to excluded subject mat-ter.’’ Internet Patents Corp. v. Active Net-work, Inc., 790 F.3d 1343, 1346 (Fed. Cir.2015). If the claims are not directed to anabstract idea, the inquiry ends. If theclaims are ‘‘directed to’’ an abstract idea,then the inquiry proceeds to the secondstep of the Alice framework.

[10] In step two we consider whetherthe claims contain an ‘‘inventive concept’’sufficient to ‘‘transform the nature of theclaim into a patent-eligible application.’’Alice, 134 S.Ct. at 2355 (quotation omit-ted). To do so we look to both the claim asa whole and the individual claim elementsto determine whether the claims contain‘‘an element or combination of elementsthat is ‘sufficient to ensure that the patentin practice amounts to significantly morethan a patent upon the [ineligible concept]

itself.’ ’’ Id. (quoting Mayo, 132 S.Ct. at1294) (alteration in original).

[11] In Alice, the Court applied someof its § 101 jurisprudence that precededthe two-step framework, including Flookand Diehr. In Flook, claims requiring theuse of a specific equation were unpatent-able because they ‘‘simply provide[d] anew and presumably better method of cal-culating alarm limit values.’’ Flook, 437U.S. at 594–95, 98 S.Ct. 2522. The mathe-matical ‘‘formula itself was an abstractidea’’ and ‘‘the computer implementationwas purely conventional’’ because ‘‘the ‘useof computers for ‘‘automatic monitoring-alarming’ ’’ was ‘well known’.’’ Alice, 134S.Ct. at 2358 (quoting Flook, 437 U.S. at594, 98 S.Ct. 2522). ‘‘Flook stands for theproposition that the prohibition againstpatenting abstract ideas cannot be circum-vented by attempting to limit the use of[the idea] to a particular technological en-vironment.’’ Alice, 134 S.Ct. at 2358 (quot-ing Bilski v. Kappos, 561 U.S. 593, 610–611, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010)(‘‘Bilski’’)) (internal quotation marks omit-ted).

The claims in Diehr, in contrast, werepatentable. The claims likewise ‘‘employeda ‘well-known’ mathematical equation.’’ Al-ice, 134 S.Ct. at 2358 (quoting Diehr, 450U.S. at 177, 101 S.Ct. 1048). A computerperformed the calculations as part of abroader process for curing rubber, but‘‘the process as a whole [did] not therebybecome unpatentable subject matter.’’Diehr, 450 U.S. at 187, 101 S.Ct. 1048.Instead, the Court looked to how theclaims ‘‘used that equation in a processdesigned to solve a technological problemin ‘conventional industry practice.’ ’’ Alice,134 S.Ct. at 2358 (quoting Diehr, 450 U.S.at 178, 101 S.Ct. 1048). When looked at asa whole, ‘‘the claims in Diehr were patenteligible because they improved an existingtechnological process, not because they


were implemented on a computer.’’ Alice,134 S.Ct. at 2358.

1. Specific Limitations

[12] The district court determined thatclaim 1 of the ’567 patent is ‘‘drawn to the[abstract] idea of automated rules-baseduse of morph targets and delta sets for lip-synchronized three-dimensional anima-tion.’’ Patentability Op., 55 F.Supp.3d at1226. We disagree. We have previouslycautioned that courts ‘‘must be careful toavoid oversimplifying the claims’’ by look-ing at them generally and failing to ac-count for the specific requirements of theclaims. TLI Commc’ns, 823 F.3d at 611;see also Diehr, 450 U.S. at 189 n.12, 101S.Ct. 1048. Here, the claims are limited torules with specific characteristics. As thedistrict court recognized during claim con-struction, ‘‘the claims themselves set outmeaningful requirements for the first setof rules: they ‘define[ ] a morph weight setstream as a function of phoneme sequenceand times associated with said phonemesequence.’ ’’ J.A. 4171 (Dist. Ct. ClaimConstruction Op. 16) (quoting ’567 patent,cl. 1). They further require ‘‘applying saidfirst set of rules to each sub-sequence TTT

of timed phonemes.’’ Id. Whether at stepone or step two of the Alice test, in deter-mining the patentability of a method, acourt must look to the claims as an or-dered combination, without ignoring therequirements of the individual steps. Thespecific, claimed features of these rulesallow for the improvement realized by theinvention.

As the specification confirms, theclaimed improvement here is allowing com-puters to produce ‘‘accurate and realisticlip synchronization and facial expressions

in animated characters’’ that previouslycould only be produced by human anima-tors. ’576 patent col. 2 ll. 49–50. As thedistrict court correctly recognized, thiscomputer automation is realized by im-proving the prior art through ‘‘the use ofrules, rather than artists, to set the morphweights and transitions between pho-nemes.’’ Patentability Op., 55 F.Supp.3d at1227. The rules are limiting in that theydefine morph weight sets as a function ofthe timing of phoneme sub-sequences. See,e.g., ’576 patent col. 3 ll. 19–33. Defendantsdo not dispute that processes that auto-mate tasks that humans are capable ofperforming are patent eligible if properlyclaimed; instead, they argue that theclaims here are abstract because they donot claim specific rules.12 This argumentechoes the district court’s finding that theclaims improperly purport to cover allrules. Patentability Op., at 1227. Theclaimed rules here, however, are limited torules with certain common characteristics,i.e., a genus.

[13] Claims to the genus of an inven-tion, rather than a particular species, havelong been acknowledged as patentable.E.g., Diamond v. Chakrabarty, 447 U.S.303, 305, 100 S.Ct. 2204, 65 L.Ed.2d 144(1980) (patentable claim to ‘‘a bacteriumfrom the genus Pseudomonas containingtherein at least two stable energy-generat-ing plasmids, each of said plasmids provid-ing a separate hydrocarbon degradativepathway.’’). Patent law has evolved toplace additional requirements on patenteesseeking to claim a genus; however, theselimits have not been in relation to theabstract idea exception to § 101. Ratherthey have principally been in terms ofwhether the patentee has satisfied the

12. See, e.g., Hearing Tr. at 14:00–15:09 (De-fendants’ counsel acknowledging that a pro-cess for autopilot or facial recognition usingrules could be patented, but arguing the

claims here are unpatentable because they donot claim specific rules), available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2015-1080.mp3.


tradeoff of broad disclosure for broadclaim scope implicit in 35 U.S.C. § 112.E.g., Carnegie Mellon Univ. v. Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed.Cir. 2008). It is self-evident that genusclaims create a greater risk of preemption,thus implicating the primary concern driv-ing § 101 jurisprudence, but this does notmean they are unpatentable.

[14–16] The preemption concern ariseswhen the claims are not directed to aspecific invention and instead improperlymonopolize ‘‘the basic tools of scientificand technological work.’’ Alice, 134 S.Ct. at2354 (quoting Myriad, 133 S.Ct. at 2116).The abstract idea exception has been ap-plied to prevent patenting of claims thatabstractly cover results where ‘‘it mattersnot by what process or machinery theresult is accomplished.’’ Morse, 56 U.S. at113; see also Mayo, 132 S.Ct. at 1301. ‘‘Apatent is not good for an effect, or theresult of a certain process’’ because suchpatents ‘‘would prohibit all other personsfrom making the same thing by any meanswhatsoever.’’ Le Roy v. Tatham, 55 U.S.(14 How.) 156, 175, 14 L.Ed. 367 (1853). Apatent may issue ‘‘for the means or meth-od of producing a certain result, or effect,and not for the result or effect produced.’’Diehr, 450 U.S. 175, 182 n.7, 101 S.Ct.1048. We therefore look to whether theclaims in these patents focus on a specificmeans or method that improves the rele-vant technology or are instead directed toa result or effect that itself is the abstractidea and merely invoke generic processesand machinery. Enfish, LLC v. MicrosoftCorp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)(‘‘Enfish’’); see also Rapid Litig. Mgmt.Ltd. v. CellzDirect, Inc., 827 F.3d 1042,1048 (Fed. Cir. 2016).

2. Claims Directed To

[17] Claim 1 of the ’576 patent is fo-cused on a specific asserted improvement

in computer animation, i.e., the automaticuse of rules of a particular type. We dis-agree with Defendants’ arguments that theclaims simply use a computer as a tool toautomate conventional activity. While therules are embodied in computer softwarethat is processed by general-purpose com-puters, Defendants provided no evidencethat the process previously used by anima-tors is the same as the process required bythe claims. See Defs.’ Br. 10–15, 39–40. Insupport, Defendants point to the back-ground section of the patents, but thatinformation makes no suggestion that ani-mators were previously employing thetype of rules required by claim 1. Defen-dants concede an animator’s process wasdriven by subjective determinations ratherthan specific, limited mathematical rules.The prior art ‘‘animator would decide whatthe animated face should look like at keypoints in time between the start and endtimes, and then ‘draw’ the face at thosetimes.’’ Defs.’ Br. 10. The computer here isemployed to perform a distinct process toautomate a task previously performed byhumans. McRO states that animatorswould initially set keyframes at the point aphoneme was pronounced to represent thecorresponding morph target as a startingpoint for further fine tuning. J.A. 3573 at8:53 (McRO’s Claim Construction Presen-tation). This activity, even if automated byrules, would not be within the scope of theclaims because it does not evaluate sub-sequences, generate transition parametersor apply transition parameters to create afinal morph weight set. It is the incorpo-ration of the claimed rules, not the use ofthe computer, that ‘‘improved [the] exist-ing technological process’’ by allowing theautomation of further tasks. Alice, 134S.Ct. at 2358. This is unlike Flook, Bilski,and Alice, where the claimed computer-automated process and the prior methodwere carried out in the same way. Flook,437 U.S. at 585–86, 98 S.Ct. 2522; Bilski,


561 U.S. at 611, 130 S.Ct. 3218; Alice, 134S.Ct. at 2356.

Further, the automation goes beyondmerely ‘‘organizing [existing] informationinto a new form’’ or carrying out a funda-mental economic practice. Digitech, 758F.3d at 1351; see also Alice, 134 S.Ct. at2356. The claimed process uses a combinedorder of specific rules that renders infor-mation into a specific format that is thenused and applied to create desired results:a sequence of synchronized, animatedcharacters. While the result may not betangible, there is nothing that requires amethod ‘‘be tied to a machine or transforman article’’ to be patentable. Bilski, 561U.S. at 603, 130 S.Ct. 3218 (discussing 35U.S.C. § 100(b)). The concern underlyingthe exceptions to § 101 is not tangibility,but preemption. Mayo, 132 S.Ct. at 1301.

The limitations in claim 1 prevent pre-emption of all processes for achieving auto-mated lip-synchronization of 3–D charac-ters. McRO has demonstrated that motioncapture animation provides an alternativeprocess for automatically animating lipsynchronization and facial expressions.Even so, we have recognized that ‘‘theabsence of complete preemption does notdemonstrate patent eligibility.’’ Ariosa Di-agnostics, Inc. v. Sequenom, Inc., 788 F.3d1371, 1379 (Fed. Cir. 2015). The narrowerconcern here is whether the claimed genusof rules preempts all techniques for auto-mating 3–D animation that rely on rules.Claim 1 requires that the rules be ren-dered in a specific way: as a relationshipbetween sub-sequences of phonemes, tim-ing, and the weight to which each phonemeis expressed visually at a particular timing(as represented by the morph weight set).The specific structure of the claimed ruleswould prevent broad preemption of all

rules-based means of automating lip syn-chronization, unless the limits of the rulesthemselves are broad enough to cover allpossible approaches.13 There has been noshowing that any rules-based lip-synchro-nization process must use rules with thespecifically claimed characteristics.

Defendants’ attorney’s argument thatany rules-based lip-synchronization pro-cess must use the claimed type of ruleshas appeal, but no record evidence sup-ports this conclusion. Defendants againrely only on the patents’ description of onetype of rules, but the description of one setof rules does not mean that there existsonly one set of rules, and does not supportthe view that other possible types of ruleswith different characteristics do not exist.The only information cited to this courtabout the relationship between speech andface shape points to the conclusion thatthere are many other possible approachesto automating lip synchronization usingrules. For example, Amicus cites KiyoshiHonda, Physiological Processes of SpeechProcessing, in Springer Handbook ofSpeech Production 7 (Jacob Benesty et al.eds., 2008) (‘‘Honda’’), as support for theproposition that the claimed rules reflectnatural laws. Amicus Public KnowledgeBr. 12. Honda shows, however, that theinteraction between vocalization and facialexpression is very complex, and there arerelationships present other than those re-quired by the claimed rules. Honda at 24(‘‘Physiological processes during speechare multidimensional in nature as de-scribed in this chapter.’’). This complexinteraction permits development of alter-native rules-based methods of animatinglip synchronization and facial expressionsof three-dimensional characters, such assimulating the muscle action underlying

13. This is not a case where the patentee’sprincipal contribution was in discovering re-lationships that existed in nature, e.g., Myriad,

133 S.Ct. at 2112; animators were previouslyable to naturally depict the relationship be-tween speech, timing, and facial expression.


characters’ facial expressions. Under thesecircumstances, therefore, we need not as-sume that future alternative discoveriesare foreclosed.

Here, the structure of the limited rulesreflects a specific implementation not dem-onstrated as that which ‘‘any [animator]engaged in the search for [an automationprocess] would likely have utilized.’’ Myri-ad, 133 S.Ct. at 2119–20 (quotation marksomitted). By incorporating the specific fea-tures of the rules as claim limitations,claim 1 is limited to a specific process forautomatically animating characters usingparticular information and techniques anddoes not preempt approaches that userules of a different structure or differenttechniques. See Morse, 56 U.S. at 113.When looked at as a whole, claim 1 isdirected to a patentable, technological im-provement over the existing, manual 3–Danimation techniques. The claim uses thelimited rules in a process specifically de-signed to achieve an improved technologi-cal result in conventional industry practice.Alice, 134 S.Ct. at 2358 (citing Diehr, 450U.S. at 177, 101 S.Ct. 1048). Claim 1 ofthe ’576 patent, therefore, is not directedto an abstract idea.

Because we find that claim 1 is notdirected to ineligible subject matter, we donot reach Alice step two. Enfish, 822 F.3dat 1339.

V. CONCLUSION

Claim 1 is not directed to an abstractidea and recites subject matter as a pat-entable process under § 101. Accordingly,we reverse and hold that claims 1, 7–9, and13 of the ’576 patent and claims 1–4, 6, 9,13, and 15–17 of the ’278 patent are patent-able under 35 U.S.C. § 101.

REVERSED AND REMANDED

COSTS

No costs.

,

LIFENET HEALTH, Plaintiff–Appellee

v.

LIFECELL CORPORATION,Defendant–Appellant

2015–1549

United States Court of Appeals,Federal Circuit.

Decided: September 16, 2016

Background: Patentee brought actionagainst a competitor, complaining that thecompetitor’s ‘‘ready to use’’ plasticizedsoft tissue grafts infringed on its patentgoverning the production and use of plas-ticized tissue grafts. Following a jury ver-dict on direct infringement and patent va-lidity, the United States District Court forthe Eastern District of Virginia, HenryCoke Morgan, Jr., Senior District Judge,93 F.Supp.3d 477, denied competitor’s mo-tion for judgment as a matter of law onclaim construction, non-infringement, andinvalidity, and for new trial. Competitorappealed.

Holdings: The Court of Appeals, Prost,Chief Judge, held that:

(1) competitor did not properly raise itsargument that district court erred byfailing to resolve legal dispute regard-ing scope of non-removal limitation;

(2) on issue of non-infringement, whetherplasticizer was removed from internalmatrix of accused tissue grafts beforetransplantation was for jury;

MCRO, INC. v. BANDAI NAMCO GAMES AMERICA INC. 1299 · Cite as 837 F.3d 1299 (Fed. Cir. 2016)...

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