McRo, Inc. v. Bandai Namco Games America ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
MCRO, INC., DBA PLANET BLUE,
Plaintiff-Appellant
v.
BANDAI NAMCO GAMES AMERICA INC.,
NAUGHTY DOG, INC., KONAMI DIGITAL
ENTERTAINMENT, INC., SEGA OF AMERICA,
INC., ELECTRONIC ARTS INC., OBSIDIAN
ENTERTAINMENT, INC., DISNEY INTERACTIVE
STUDIOS, INC., SQUARE ENIX, INC., NEVERSOFT
ENTERTAINMENT, INC., TREYARCH
CORPORATION, CAPCOM USA, INC., SONY
COMPUTER ENTERTAINMENT AMERICA LLC,
ATLUS U.S.A., INC., SUCKER PUNCH
PRODUCTIONS, LLC, INFINITY WARD, INC.,
LUCASARTS, A DIVISION OF LUCASFILM
ENTERTAINMENT COMPANY LTD. LLC, WARNER
BROS. INTERACTIVE ENTERTAINMENT, A
DIVISION OF WARNER BROS. HOME
ENTERTAINMENT INC., ACTIVISION
PUBLISHING, INC., BLIZZARD ENTERTAINMENT,
INC., VALVE CORPORATION, CODEMASTERS
USA GROUP, INC., CODEMASTERS SOFTWARE
INC., CODEMASTERS, INC., THE CODEMASTERS
SOFTWARE COMPANY 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
2 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
______________________
Appeals from the United States District Court for the
Central District of California in 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.
______________________
Decided: September 13, 2016
______________________
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, argued for plaintiff-appellant. Also represented by
MICHAEL GREGORY PATTILLO, JR.; JOHN FRANCIS
PETRSORIC, MARK STEWART RASKIN, ROBERT ALAN
WHITMAN, Mishcon de Reya New York LLP, New York,
NY; JOHN M. WHEALAN, Chevy Chase, MD.
SONAL NARESH MEHTA, Durie Tangri LLP, San Fran-
cisco, CA, representing defendants-appellees Electronic
Arts Inc., Capcom USA, Inc., Activision Publishing, Inc.,
Blizzard Entertainment, Inc., argued for all defendants-
appellees.
EDWARD R. REINES, Weil, Gotshal & Manges LLP,
Redwood Shores, CA, for defendants-appellees Bandai
Namco Games America Inc., Sega of America, Inc., Disney
Interactive Studios, Inc., Neversoft Entertainment, Inc.,
Treyarch Corporation, Atlus U.S.A., Inc., Infinity Ward,
Inc., LucasArts, a Division of LucasFilm Entertainment
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 3
Company Ltd. LLC, Warner Bros. Interactive Entertain-
ment, a Division of Warner Bros. Home Entertainment
Inc.
BASIL TRENT WEBB, Shook, Hardy & Bacon, LLP,
Kansas City, MO, for defendants-appellees Naughty Dog,
Inc., Sony Computer Entertainment America LLC, Sucker
Punch Productions, LLC. Also represented by JOHN D.
GARRETSON, BETH A. LARIGAN.
WENDY J. RAY, Morrison & Foerster LLP, Los Ange-
les, CA, for defendants-appellees Konami Digital Enter-
tainment, Inc., Square Enix, Inc. Also represented by
BENJAMIN J. FOX.
ANDREW DAVID TSU, Spach Capaldi & Waggaman
LLP, Newport Beach, CA, for defendant-appellee Obsidi-
an Entertainment, Inc. Also represented by THOMAS
WALLING.
JAN PATRICK WEIR, Michelman & Robinson, LLP, Ir-
vine, CA, for defendant-appellee Valve Corporation. Also
represented by JOSEPH JAMES MELLEMA; THEODORE J.
ANGELIS, DAVID T. MCDONALD, K&L Gates LLP, Seattle,
WA.
KEVIN W. KIRSCH, Baker & Hostetler LLP, Cincinnati,
OH, for defendants-appellees Codemasters, Inc., Code-
masters USA Group, Inc., Codemasters Software Inc., The
Codemasters Software Company Limited. Also represent-
ed by JARED A. BRANDYBERRY; BARRY EASTBURN
BRETSCHNEIDER, Washington, DC.
CHARLES DUAN, Public Knowledge, Washington, DC,
for amici curiae Public Knowledge, Electronic Frontier
Foundation. Also represented by VERA RANIERI, Electronic
Frontier Foundation, San Francisco, CA.
4 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
ANDREW JOHN PINCUS, Mayer Brown LLP, Washing-
ton, DC, for amicus curiae BSA I The Software Alliance.
Also represented by PAUL WHITFIELD HUGHES.
______________________
Before REYNA, TARANTO, and STOLL, Circuit Judges.
REYNA, Circuit Judge.
This appeal is from a grant of judgment on the plead-
ings under Fed. R. Civ. P. 12(c) that the asserted claims of
U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and
6,611,278 (‘‘the ’278 patent’’) are invalid. The United
States District Court for the Central District of California
found that the asserted claims are directed to patent-
ineligible subject matter and are therefore invalid under
35 U.S.C. § 101 (“§ 101”). McRO, Inc. v. Sony Computer
Entm’t Am., LLC, 55 F. Supp. 3d 1214 (C.D. Cal. 2014)
(“Patentability Op.”). We hold that the ordered combina-
tion of claimed steps, using unconventional rules that
relate sub-sequences of phonemes, timings, and morph
weight sets, is not directed to an abstract idea and is
therefore patent-eligible subject matter under § 101.
Accordingly, we reverse.
I. BACKGROUND
A. Factual Background
The ’576 patent and the ’278 patent were both issued
to Maury Rosenfeld and are both titled “Method for Au-
tomatically Animating Lip Synchronization and Facial
Expression of Animated Characters.” The ’278 patent is a
continuation of the ’576 patent and shares the same
written description.
1. Admitted Prior Art
The patents relate to automating part of a preexisting
3-D animation method. As explained in the background
of the patents, the admitted prior art method uses multi-
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 5
ple 3-D models of a character’s face to depict various facial
expressions made during speech. See generally ’576
patent col. 1 l. 14 to col. 2 l. 37. To animate the character
as it speaks, the method morphs the character’s expres-
sion between the models. The “neutral model” is the 3-D
representation of the resting, neutral facial expression of
an animated character. The other models of the charac-
ter’s face are known as “morph targets,” and each one
represents that face as it pronounces a phoneme, i.e.,
makes a certain sound. This visual representation of the
character’s face making a sound is also called a “viseme.”
McRO Br. 7. An example morph target for the “ahh”
phoneme is shown below. Each of these morph targets
and the neutral model has identified points, called “verti-
ces,” in certain places on the face. The set of differences
in the location of these vertices (and the corresponding
point on the face) between the neutral model and the
morph target form a “delta set” of vectors representing
the change in location of the vertices between the two
models. For each morph target, there is a corresponding
delta set consisting of the vectors by which the vertices on
that morph target differ from the neutral model.
6 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
Defs.’ Br. 8. 1
Facial expressions are described as a function of the
amount each morph target, and its corresponding delta
set, is applied to modify the character model. “In produc-
ing animation products, a value usually from 0 to 1 is
assigned to each delta set by the animator and the value
is called the ‘morph weight.’” ’576 patent col. 1 ll. 63–65.
The set of morph weights for all the delta sets is called a
“morph weight set.” The neutral model is represented by
a morph weight set with all morph weights of 0. A de-
sired morph target is represented by the morph weight of
1 for that morph target’s delta set and a morph weight of
0 for all other delta sets.
The power of this prior art animation method is in
generating intermediate faces by using morph weights
between 0 and 1 to blend together multiple morph targets.
For example, the face halfway between the neutral model
and the “oh” face can be expressed simply by setting the
“oh” morph weight to 0.5, i.e., 50%, as shown below at the
left. The model halfway to the next syllable, in turn,
could be expressed by setting both the “oh” morph weight
and that for the next syllable each to 0.5, creating a blend
of those two delta sets. McRO Br. 11; see also Defs.’ Br.
8–11. For each morph weight set, the resulting facial
expression is calculated by determining the displacement
of each vertex from the neutral model as the product of
the morph weights in the morph weight set and the
1 The images in this opinion are drawn from
McRO’s claim construction tutorial presented to the
district court, J.A. 3573, excerpts of which are used by
both parties to explain the prior art method. Defendants
dispute McRO’s depiction of the claimed method in that
tutorial and we do not rely on any of those depictions. See
Defs.’ Br. 46.
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 7
corresponding delta sets for the morph targets. ’576
patent col. 2 ll. 2–15. 2
McRO Br. 11.
Animation of the character and lip synchronization
preexisting the invention was generally accomplished by
an animator with the assistance of a computer. Anima-
tors used “a ‘keyframe’ approach, where the artist set[]
the appropriate [morph] weights at certain important
times (‘keyframes’)” instead of at every frame. ’576 patent
col. 2 ll. 31–33. Animators knew what phoneme a charac-
ter pronounced at a given time from a “time aligned
phonetic transcription” (“timed transcript”). This listed
the “occurrence in time” of each phoneme the character
pronounced, as shown in the example below. Id. at col. 1
ll. 32–34.
2 |result| = |neutral| + ∑𝑛𝑛𝑥𝑥=1 |delta setx| ∗ morph weightx
8 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
McRO Br. 7.
Animators, using a computer, manually determined
the appropriate morph weight sets for each keyframe
based on the phoneme timings in the timed transcript.
“For each keyframe, the artist would look at the screen
and, relying on her judgment, manipulate the character
model until it looked right—a visual and subjective pro-
cess.” McRO Reply Br. 4 (emphasis removed); Defs.’
Br. 10 (“Using the [timed transcript], the animator would
decide what the animated face should look like at key
points in time between the start and end times, and then
‘draw’ the face at those times.”). Because the pronounced
phoneme and drawn keyframe corresponded in time, this
prior art process synchronized the lips and facial expres-
sion of the 3-D character. A computer program would
then interpolate between the keyframes set by the anima-
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 9
tor, creating the intermediate frames by determining the
appropriate morph weight sets at intermediate points in
time simply based on continuously transitioning between
the keyframes. ’576 patent col. 2 ll. 32–36.
2. Claimed Invention
The patents criticize the preexisting keyframe ap-
proach as “very tedious and time consuming, as well as
inaccurate due to the large number of keyframes neces-
sary to depict speech.” ’576 patent col. 2 ll. 35–37. They
suggest the
present invention overcomes many of the deficien-
cies of the prior art and obtains its objectives by
providing an integrated method embodied in com-
puter software for use with a computer for the
rapid, efficient lip synchronization and manipula-
tion of character facial expressions, thereby allow-
ing for rapid, creative, and expressive animation
products to be produced in a very cost effective
manner.
Id. at col. 2 ll. 38–44. “Accordingly, it is the primary
object of this invention to provide a method for automati-
cally . . . producing accurate and realistic lip synchroniza-
tion and facial expressions in animated characters.” Id.
at col. 2 ll. 45–50.
Essentially, the patents aim to automate a 3-D ani-
mator’s tasks, specifically, determining when to set
keyframes and setting those keyframes. This automation
is accomplished through rules that are applied to the
timed transcript to determine the morph weight outputs.
The patents describe many exemplary rule sets that go
beyond simply matching single phonemes from the timed
transcript with the appropriate morph target. Instead,
these rule sets aim to produce more realistic speech by
“tak[ing] into consideration the differences in mouth
10 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
positions for similar phonemes based on context.” Id. at
col. 10 ll. 6–7.
One exemplary set of rules provided and applied in
the specification of the ’576 patent is for a character
transitioning from silence through saying “hello.” See
’576 patent col. 7 l. 36 to col. 9 l. 22. This exemplary set of
rules provides for inserting a transition starting shortly
before the first 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 model, to the morph target for the first syllable,
with its open-mouthed shape. Id. at col. 8 ll. 61–63. That
is, the rule automates a character’s facial expressions so
the character will wait until shortly before it starts speak-
ing to begin opening its mouth. In terms of the prior art
method, the effect of this rule is to automatically create a
keyframe at a point that no phoneme is being pronounced.
Id. at col. 9 ll. 10–11. If instead no transition were placed
at that position, the resulting animation would have an
unrealistic quality. The character would open its mouth
gradually from the beginning of the sequence through its
first utterance as a result of the computer interpolating a
continuous transition between those two points. In the
prior art system, an animator would have to subjectively
identify the problematic sequence and manually fix it by
adding an appropriate keyframe. The invention, however,
uses rules to automatically set a keyframe at the correct
point to depict more realistic speech, achieving results
similar to those previously achieved manually by anima-
tors.
Claim 1 of the ’576 patent is representative and dis-
positive of the asserted claims 3 for the purposes of appeal:
3 McRO has asserted claims 1, 7–9, and 13 of the
’576 patent and claims 1–4, 6, 9, 13, and 15–17 of the ’278
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 11
A method for automatically animating lip syn-
chronization 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 intermedi-
ate 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 pro-
duce lip synchronization and facial expression
control of said animated characters.
’576 patent, cl. 1, col. 11 ll. 27–47.
patent. The district court focused its analysis on claim 1
of the ’576 patent as representative. It held that neither
the different text of the other independent claims nor the
added limitations of the dependent claims in either patent
affected the result regarding patentability. Patentability
Op., 55 F. Supp. 3d at 1228–29. The parties do not dis-
pute this conclusion or separately argue any other claims.
See McRO Br. 19; Defs.’ Br. 40 n.12. We agree and focus
our discussion on this claim.
12 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
B. Procedural History
In 2012 and 2013, Plaintiff-Appellant McRO, Inc.,
d/b/a Planet Blue (“McRO”) filed lawsuits in the U.S.
District Courts for the Central District of California and
for the District of Delaware. The defendants are general-
ly video game developers and publishers. On January 15,
2014, eight of the lawsuits originally filed in Delaware
were transferred to the Central District of California. The
five cases remaining in Delaware are not part of this
appeal, but are stayed pending the resolution of this
appeal. 4
The Central District of California (“district court”) con-
solidated the proceedings there for pre-trial purposes on
two tracks. 5 It held a claim construction hearing in the
4 McRO, Inc. v. Bethesda Softworks LLC, No. 12-cv-
1509 (D. Del.); McRO, Inc. v. Harmonix 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-Two
Interactive 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 district court is-
sued its Judgment on Pleadings were: McRO, Inc. v.
Namco Bandai Games Am., Inc., CV-12-10322; McRO,
Inc. v. Konami Digital 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. Activision Bliz-
zard, Inc., CV-14-0336; McRO, Inc. v. Infinity Ward, Inc.,
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 13
Track 1 cases on April 29, 2014, and issued its Rulings on
Claim Construction on May 1, 2014. J.A. 4009, 4155–73. 6
C. District Court’s § 101 Ruling
On July 10, 2014, all Central District of California de-
fendants from both tracks (“Defendants”) jointly filed a
motion for judgment on the pleadings that the asserted
claims were directed to patent ineligible subject matter
under § 101. Patentability Op., 55 F. Supp. 3d at 1216.
After a hearing, the district court granted the motion on
September 22, 2014, finding the asserted claims un-
patentable. Id. at 1230.
The district court’s analysis loosely tracks the two-
step framework laid out by the Supreme Court in Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)
(“Alice”). First, the district court discussed the claims
generally: “Facially, these claims do not seem directed to
an abstract idea. They are tangible, each covering an
approach to automated three-dimensional computer
animation, which is a specific technological process.”
Patentability Op., 55 F. Supp. 3d at 1224. “At first blush,
it is therefore difficult to see how the claims might impli-
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. Interactive Entm’t
Inc., CV-14-0417.
The Track 2 cases were: McRO, Inc. v. Valve Corp.,
CV-13-1874; McRO, Inc. v. Codemasters USA Grp., Inc.,
CV-14-0389; McRO, Inc. v. Codemasters, Inc., CV-14-
0439. Patentability Op., 55 F. Supp. 3d at 1216 n.1.
6 The parties do not argue that any of the district
court’s constructions affect patent eligibility or contest the
constructions arrived at by the district court. The parties
raise two unrelated claim interpretation issues on appeal,
discussed below.
14 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
cate the basic underlying concern that these patents tie
up too much future use of any abstract idea they apply.”
Id. (quotation marks omitted).
Second, the district court attempted to “factor out
conventional activity” by comparing the claims to the
admitted prior art process that the patent sought to
improve. Id. at 1224. The court accepted as undisputed
that “a central part of the patents is ‘using morph weight
set representations of the facial shape coupled with
rules . . . to generate keyframes.’” Id. at 1226. The court
then looked to “whether the inclusion of that concept in
the claims satisfies § 101 given (1) the prior art, and
(2) the fact that the claims do not require any particular
rules.” Id.
After looking at each claim element in turn, the dis-
trict court concluded, “the claim adds to the prior art . . .
the use of rules, rather than artists, to set the morph
weights and transitions between phonemes.” Id. at 1227.
Nonetheless, the district court found the claims too broad-
ly preemptive to satisfy § 101. In the district court’s view,
because the claims were not limited to specific rules, 7 but
rather “purport to cover all such rules,” the claims merely
call for application of the abstract idea of using rules. Id.
at 1227 (citing Alice, 134 S. Ct. at 2358). The district
court found that, “while the patents do not preempt the
field of automatic lip synchronization for computer-
generated 3D animation, they do preempt the field of such
lip synchronization using a rules-based morph target
approach.” Id. at 1227. The court concluded that the
claims were unpatentable because “the novel portions of
[the] invention are claimed too broadly.” Id. at 1230.
7 The claim term is “first set of rules,” but we will
follow the shorthand adopted by the district court and
parties of referring to the “rules” or “claimed rules.”
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 15
The district court entered judgment against McRO on
October 31, 2014. J.A. 24–26. McRO appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
II. PARTIES’ ARGUMENTS
The parties’ principal dispute is over the meaning and
application of two Supreme Court cases in light of Alice:
Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Dia-
mond v. Diehr, 450 U.S. 175 (1981) (“Diehr”). Both cases
addressed the patentability of process claims that include
steps requiring calculation.
A. McRO’s Position
McRO argues that Diehr controls the outcome here
and dictates that the claims are not directed to an ab-
stract idea. Specifically, McRO argues that the claims are
not directed to an abstract idea because they generate a
tangible product, namely “a video of a 3-D character
speaking the recorded audio.” McRO Br. 38. According to
McRO, the claimed process is technological because it
provides “a method for getting a computer to automatical-
ly generate video of a 3-D animated character speaking in
sync with pre-recorded dialogue—without requiring an
artist’s constant intermediation.” McRO Br. 42.
McRO argues that even if we find the claims are di-
rected to an abstract idea, they are nonetheless patent
eligible because they “effect an improvement in [a] tech-
nology or technical field,” specifically 3-D computer gen-
erated lip-synchronization. McRO Br. 43 (quoting Alice,
134 S. Ct. at 2359 (citing Diehr, 450 U.S. at 177–78)).
This improvement, McRO argues, results from its method
that “employs specific types of rules” and uses those rules
in “a specific technological way.” McRO Br. 45 (emphasis
in original). The claimed type of rules are only those
“rules that define output morph weight set stream as a
function of phoneme sequence and time of said phoneme
sequence.” Id. at 46 (quoting ’576 patent, cl. 1, col. 11 ll.
16 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
30–32). When applied, in McRO’s interpretation, these
rules must “adjust for the fact that a phoneme may look
different when spoken depending on the phonemes pre-
ceding and/or following it.” McRO Br. 46.
These limitations are specific enough in McRO’s view
because the rules will necessarily vary by character as, for
example, “a swamp monster will use different rules than
a tight-lipped cat.” Id. at 46. McRO argues that its
claims cannot preempt the field because other techniques
exist that automate facial synchronization by capturing
actors’ facial motions and applying those motions to 3-D
animated characters. McRO Br. 50 (citing Barbara Rob-
ertson, 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 controls because the
claims are unpatentable algorithms that “can be per-
formed solely with pencil and paper.” Defs.’ Br. 28. The
claims, in Defendants’ view, “merely purport to take a
preexisting process and make it faster by automating it
on a general-purpose computer.” Defs.’ Br. 19. Defend-
ants argue that these claims fail even under Diehr be-
cause they do not result in any tangible product, instead
only producing a “stream of output morph weight sets”
that are applied “to produce lip synchronization” without
requiring the production of anything tangible like a video.
’576 patent, claim 1, col. 11 ll. 44–47; Defs.’ Br. 30. Even
if specific processing steps are required, Defendants argue
8 Defendants do not dispute this is an alternative
method for automatic lip synchronization of 3-D animated
characters; instead, they argue that “this technology is
not remotely similar to the patented technology.” Defs.’
Br. 53.
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 17
the claims remain directed to an abstract idea because
they only require using “mathematical algorithms to
manipulate existing information to generate additional
information.” Defs.’ Br. 34 (quoting Digitech Image
Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014)).
Echoing the district court, Defendants fault the claims
for not specifically claiming particular rules, and instead
requiring that the user provide the rules. Defs.’ Br. 40–
42; see also Patentability Op., 55 F. Supp. 3d at 1227,
1230. Defendants dispute that the claimed rules depend
on the preceding or succeeding phonemes, i.e., sub-
sequences of phonemes, and fault McRO for failing to
raise this interpretation as a claim construction issue
before the district court. Defs.’ Br. 43–44. Defendants
claim broad preemption occurs because the rules only
reflect relationships “that any intelligible lip-
synchronization process must consider.” Id. at 50 (em-
phasis original). The relationships expressed by these
rules, Defendants argue, inevitably capture “a pre-
existing fundamental truth” about how a human mouth
looks while speaking certain sounds over time, preempt-
ing all possible rules-based methods. Alice, 134 S. Ct. at
2356; see Defs.’ Br. 16, 49–51. 9
III. STANDARD OF REVIEW
We review procedural aspects of the grant of judg-
ment on the pleadings under the law of the regional
circuit, in this case the Ninth Circuit. Allergan, Inc. v.
Athena Cosmetics, Inc., 640 F.3d 1377, 1380 (Fed. Cir.
9 Amicus similarly argues that the claims are di-
rected to a natural phenomenon instead of an abstract
idea, specifically “the movement of the mouth to articu-
late sounds.” Amicus Public Knowledge Br. 11; see also
Defs.’ Br. 26.
18 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
2011). The Ninth Circuit reviews the grant or denial of
judgment on the pleadings under Rule 12(c) de novo.
Kotrous v. Goss-Jewett Co., 523 F.3d 924, 929 (9th Cir.
2008). We also review de novo whether a claim is invalid
under the judicially created exceptions to § 101. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375
(Fed. Cir. 2015).
IV. DISCUSSION
A. Claim Interpretation
As an initial matter, we note that, in this case, claim
construction is helpful to resolve the question of patenta-
bility under § 101. Specifically, the parties’ dispute about
whether the “first set of rules” must evaluate sequential
phonemes or can evaluate individual phonemes is re-
solved by the claim language. We agree with McRO that
the claims are limited to rules that evaluate sub-
sequences consisting of multiple sequential phonemes.
This limitation is apparent on the face of the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). In particular, the intermediate morph
weight sets and transition parameters are generated “by
evaluating said plurality of sub-sequences against said
first set of rules.” ’576 patent, cl. 1, col. 11 ll. 36–39. 10
This limitation could not be satisfied by rules that only
evaluate individual phonemes. Instead, the claimed “first
set of rules” must be formulated to evaluate sub-
sequences of phonemes. 11
10 The limitation with the same effect in independ-
ent claim 1 of the ’278 patent is “applying said first set of
rules to each sub-sequence” at column 11 lines 53–54.
11 The parties also dispute whether the rules must
take into account the pacing of speech based on the “and
time of said phoneme sequence” limitation. Resolution of
this question is neither necessary to resolve of the issues
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 19
B. Patentability Under § 101
Section 101 defines patent eligible subject matter as
“any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improve-
ment thereof,” subject to the other limitations of the
Patent Act. Apart from the Patent Act, the courts have
created exceptions to the literal scope of § 101. “Laws of
nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 134 S. Ct. at 2354 (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2116 (2013) (“Myriad”)). This appeal involves the
abstract idea exception.
In Alice, the Court applied a two-step framework for
analyzing whether claims are patent eligible. First, we
determine whether the claim at issue is “directed to” a
judicial exception, such as an abstract idea. Alice, 134 S.
Ct. at 2355. Mathematical formulas are a type of abstract
idea. Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (“Ben-
son”). The abstract idea exception prevents patenting a
result where “it matters not by what process or machinery
the result is accomplished.” O’Reilly v. Morse, 56 U.S. 62,
113 (1854). We do not assume that such claims are di-
rected to patent ineligible subject matter because “all
inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012) (“Mayo”); see also In re
TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016) (“TLI Commc’ns”). Instead, “the claims are
considered in their entirety to ascertain whether their
on appeal nor indisputably resolved by the claim lan-
guage. We therefore decline to address this issue in the
first instance and express no opinion on whether McRO
has waived these arguments or is bound by them for
purposes of infringement.
20 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
character as a whole is directed to excluded subject mat-
ter.” Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are not
directed to an abstract idea, the inquiry ends. If the
claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework.
In step two we consider whether the claims contain an
“inventive concept” sufficient to “transform the nature of
the claim into a patent-eligible application.” Alice, 134 S.
Ct. at 2355 (quotation omitted). To do so we look to both
the claim as a whole and the individual claim elements to
determine whether the claims contain “an element or
combination of elements that is ‘sufficient to ensure that
the patent in practice amounts to significantly more than
a patent upon the [ineligible concept] itself.’” Id. (quoting
Mayo, 132 S. Ct. at 1294) (alteration in original).
In Alice, the Court applied some of its § 101 jurispru-
dence that preceded the two-step framework, including
Flook and Diehr. In Flook, claims requiring the use of a
specific equation were unpatentable because they “simply
provide[d] a new and presumably better method of calcu-
lating alarm limit values.” Flook, 437 U.S. at 594–95.
The mathematical “formula itself was an abstract idea”
and “the computer implementation was purely conven-
tional” because “the ‘use of computers for “automatic
monitoring-alarming’” was ‘well known’.” Alice, 134 S. Ct.
at 2358 (quoting Flook, 437 U.S. at 594). “Flook stands
for the proposition that the prohibition against patenting
abstract ideas cannot be circumvented by attempting to
limit the use of [the idea] to a particular technological
environment.” Alice, 134 S. Ct. at 2358 (quoting Bilski v.
Kappos, 561 U.S. 593, 610–611 (2010) (“Bilski”)) (internal
quotation marks omitted).
The claims in Diehr, in contrast, were patentable.
The claims likewise “employed a ‘well-known’ mathemati-
cal equation.” Alice, 134 S. Ct. at 2358 (quoting Diehr,
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 21
450 U.S. at 177). A computer performed the calculations
as part of a broader process for curing rubber, but “the
process as a whole [did] not thereby become unpatentable
subject matter.” Diehr, 450 U.S. at 187. Instead, the
Court looked to how the claims “used that equation in a
process designed to solve a technological problem in
‘conventional industry practice.’” Alice, 134 S. Ct. at 2358
(quoting Diehr, 450 U.S. at 178). When looked at as a
whole, “the claims in Diehr were patent eligible because
they improved an existing technological process, not
because they were implemented on a computer.” Alice,
134 S. Ct. at 2358.
1. Specific Limitations
The district court determined that claim 1 of the ’567
patent is “drawn to the [abstract] idea of automated rules-
based use of morph targets and delta sets for lip-
synchronized three-dimensional animation.” Patentabil-
ity Op., 55 F. Supp. 3d at 1226. We disagree. We have
previously cautioned that courts “must be careful to avoid
oversimplifying the claims” by looking at them generally
and failing to account for the specific requirements of the
claims. TLI Commc’ns, 823 F.3d at 611; see also Diehr,
450 U.S. at 189 n.12. Here, the claims are limited to rules
with specific characteristics. As the district court recog-
nized during claim construction, “the claims themselves
set out meaningful requirements for the first set of rules:
they ‘define[] a morph weight set stream as a function of
phoneme sequence and times associated with said pho-
neme sequence.’” J.A. 4171 (Dist. Ct. Claim Construction
Op. 16) (quoting ’567 patent, cl. 1). They further require
“applying said first set of rules to each sub-sequence . . . of
timed phonemes.” Id. Whether at step one or step two of
the Alice test, in determining the patentability of a meth-
od, a court must look to the claims as an ordered combina-
tion, without ignoring the requirements of the individual
steps. The specific, claimed features of these rules allow
for the improvement realized by the invention.
22 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
As the specification confirms, the claimed improve-
ment here is allowing computers to produce “accurate and
realistic lip synchronization and facial expressions in
animated characters” that previously could only be pro-
duced by human animators. ’576 patent col. 2 ll. 49–50.
As the district court correctly recognized, this computer
automation is realized by improving the prior art through
“the use of rules, rather than artists, to set the morph
weights and transitions between phonemes.” Patentabil-
ity Op., 55 F. Supp. 3d at 1227. The rules are limiting in
that they define morph weight sets as a function of the
timing of phoneme sub-sequences. See, e.g., ’576 patent
col. 3 ll. 19–33. Defendants do not dispute that processes
that automate tasks that humans are capable of perform-
ing are patent eligible if properly claimed; instead, they
argue that the claims here are abstract because they do
not claim specific rules. 12 This argument echoes the
district court’s finding that the claims improperly purport
to cover all rules. Patentability Op., at 1227. The claimed
rules here, however, are limited to rules with certain
common characteristics, i.e., a genus.
Claims to the genus of an invention, rather than a
particular species, have long been acknowledged as pa-
tentable. E.g., Diamond v. Chakrabarty, 447 U.S. 303,
305 (1980) (patentable claim to “a bacterium from the
genus Pseudomonas containing therein at least two stable
energy-generating plasmids, each of said plasmids provid-
ing a separate hydrocarbon degradative pathway.”).
12 See, e.g., Hearing Tr. at 14:00–15:09 (Defendants’
counsel acknowledging that a process for autopilot or
facial recognition using rules could be patented, but
arguing the claims here are unpatentable because they do
not claim specific rules), available at http://
oralarguments.cafc.uscourts.gov/default.aspx?fl=2015-
1080.mp3.
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 23
Patent law has evolved to place additional requirements
on patentees seeking to claim a genus; however, these
limits have not been in relation to the abstract idea
exception to § 101. Rather they have principally been in
terms of whether the patentee has satisfied the tradeoff of
broad disclosure for broad claim 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 genus claims create a greater risk of
preemption, thus implicating the primary concern driving
§ 101 jurisprudence, but this does not mean they are
unpatentable.
The preemption concern arises when the claims are
not directed to a specific invention and instead improperly
monopolize “the basic tools of scientific and technological
work.” Alice, 134 S. Ct. at 2354 (quoting Myriad, 133 S.
Ct. at 2116). The abstract idea exception has been ap-
plied to prevent patenting of claims that abstractly cover
results where “it matters not by what process or machin-
ery the result is accomplished.” Morse, 56 U.S. at 113; see
also Mayo, 132 S. Ct. at 1301. “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.” Le Roy v. Tat-
ham, 55 U.S. 156, 175 (1853). A patent may issue “for the
means or method of producing a certain result, or effect,
and not for the result or effect produced.” Diehr, 450 U.S.
175, 182 n.7. 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. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016) (“Enfish”); see also Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., No. 2015-1570, 2016 WL 3606624, at *4
(Fed. Cir. July 5, 2016).
24 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
2. Claims Directed To
Claim 1 of the ’576 patent is focused on a specific as-
serted improvement in computer animation, i.e., the
automatic use of rules of a particular type. We disagree
with Defendants’ arguments that the claims simply use a
computer as a tool to automate conventional activity.
While the rules are embodied in computer software that is
processed by general-purpose computers, Defendants
provided no evidence that the process previously used by
animators is the same as the process required by the
claims. See Defs.’ Br. 10–15, 39–40. In support, Defend-
ants point to the background section of the patents, but
that information makes no suggestion that animators
were previously employing the type of rules required by
claim 1. Defendants concede an animator’s process was
driven by subjective determinations rather than specific,
limited mathematical rules. The prior art “animator
would decide what the animated face should look like at
key points in time between the start and end times, and
then ‘draw’ the face at those times.” Defs.’ Br. 10. The
computer here is employed to perform a distinct process to
automate a task previously performed by humans. McRO
states that animators would initially set keyframes at the
point a phoneme was pronounced to represent the corre-
sponding morph target as a starting point for further fine
tuning. J.A. 3573 at 8:53 (McRO’s Claim Construction
Presentation). This activity, even if automated by rules,
would not be within the scope of the claims because it
does not evaluate sub-sequences, generate transition
parameters or apply transition parameters to create a
final morph weight set. It is the incorporation of the
claimed rules, not the use of the computer, that “improved
[the] existing technological process” by allowing the
automation of further tasks. Alice, 134 S. Ct. at 2358.
This is unlike Flook, Bilski, and Alice, where the claimed
computer-automated process and the prior method were
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 25
carried out in the same way. Flook, 437 U.S. at 585–86;
Bilski, 561 U.S. at 611; Alice, 134 S. Ct. at 2356.
Further, the automation goes beyond merely “organiz-
ing [existing] information into a new form” or carrying out
a fundamental economic practice. Digitech, 758 F.3d at
1351; see also Alice, 134 S. Ct. at 2356. The claimed
process uses a combined order of specific rules that ren-
ders information into a specific format that is then used
and applied to create desired results: a sequence of syn-
chronized, animated characters. While the result may not
be tangible, there is nothing that requires a method “be
tied to a machine or transform an article” to be patenta-
ble. Bilski, 561 U.S. at 603 (discussing 35 U.S.C.
§ 100(b)). The concern underlying the exceptions to § 101
is not tangibility, but preemption. Mayo, 132 S. Ct. at
1301.
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
26 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA
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 rela-
tionship between speech and face shape points to the
conclusion that there are many other possible approaches
to automating lip synchronization using rules. For exam-
ple, 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 pro-
cesses 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
13 This is not a case where the patentee’s principal
contribution was in discovering relationships that existed
in nature, e.g., Myriad, 133 S. Ct. at 2112; animators were
previously able to naturally depict the relationship be-
tween speech, timing, and facial expression.
MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 27
muscle action underlying characters’ facial expressions.
Under these circumstances, therefore, we need not as-
sume that future alternative discoveries are foreclosed.
Here, the structure of the limited rules reflects a spe-
cific 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. See Morse, 56
U.S. at 113. When looked at as a whole, claim 1 is di-
rected 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. Alice, 134 S. Ct. at 2358
(citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent,
therefore, is not directed to an abstract idea.
Because we find that claim 1 is not directed to ineligi-
ble subject matter, we do not reach Alice step two. Enfish,
822 F.3d at 1339.
V. CONCLUSION
Claim 1 is not directed to an abstract idea and recites
subject matter as a patentable process under § 101.
Accordingly, we reverse and hold that claims 1, 7–9, and
13 of the ’576 patent and claims 1–4, 6, 9, 13, and 15–17
of the ’278 patent are patentable under 35 U.S.C. § 101.
REVERSED AND REMANDED
COSTS
No costs.