The Court of Appeals for the Federal Circuit has issued its long-awaited decision in the McRO Inc., DBA Planet Blue v Bandai Namco Games America et al case. This involved two patents relating to lip synchronisation which had been ruled invalid on Section 101 grounds by the Central California district court months after the Supreme Court handed down its controversial Alice decison in June 2014. Owners of software patents in the US were hopuing that the CAFC would use this case to provide more clarity on the thorny subject of eligibility, and it looks like that has happened. Fenwick & West partner Robert Sachs, who also runs the widely-read Bilski blog, has sent this immediate reaction to today's decison:
For the first time, the court has provided a detailed preemption analysis, rather than merely lip service (sorry):
The limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters. McRO has demonstrated that motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions. Even so, we have recognized that “the ab-sence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules. 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.13 There has been no showing that any rules-based lip- synchronization process must use rules with the specifi-cally claimed characteristics.
Defendants’ attorney’s argument that any rules-based lip-synchronization process must use the claimed type of rules has appeal, but no record evidence supports this conclusion. Defendants again rely only on the patents’ description of one type of rules, but the description of one set of rules does not mean that there exists only one set of rules, and does not support the view that other possible types of rules with different characteristics do not exist. The only information cited to this court about the relationship between speech and face shape points to the conclusion that there are many other possible approaches to automating lip synchronization using rules. For example, Amicus cites Kiyoshi Honda, Physiological Processes of Speech Processing, in Springer Handbook of Speech Production 7 (Jacob Benesty et al. eds., 2008) (“Honda”), as support for the proposition that the claimed rules reflect natural laws. Amicus Public Knowledge Br. 12. Honda shows, however, that the interaction between vocalization and facial expression is very complex, and there are relationships present other than those required by the claimed rules. Honda at 24 (“Physiological processes during speech are multidimensional in nature as described in this chapter.”). This complex interaction permits development of alternative rules-based methods of animating lip synchronization and facial expressions of three-dimensional characters, such as simulating the muscle action underlying characters’ facial expressions. Under these circumstances, therefore, we need not assume that future alternative discoveries are foreclosed.
Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” Myriad, 133 S. Ct. at 2119–20 (quotation marks omitted). By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques.
This is very significant in my view. The USPTO should instruct examiners to find eligible subject matter where there are “an alternative process” and “other possible approaches” to performing the claimed method.
And notice, the that preemption analysis occurs in step 1, “directed to” rather than in step 2, “inventive step.” This is important. By moving preemption there, it helps show that not all claims are abstract, and that preemption is only relevant to whether there’s something “significantly more.”
The one thing missing is a discussion of Smartgene, the case that brought to the fore the notion that using rules compare data and decide on options was abstract. This case, as you know, is frequently used by examiners. The court must have felt that it could not distinguish Smartgene, and so just ignored it.