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McRO, Inc. v. Namco Bandai, et al.
Central District of California
No. CV 12-10322
September 22, 2014

In a case described by the court as illustrating "the danger that exists when the novel portions of an invention are claimed too broadly," a patent on automated rules for animating lip synchronization has been found invalid under 35 U.S.C. 101. See Op. at 22.

McRO, Inc., d.b.a. Planet Blue ("McRO") brought 29 different lawsuits in the Central District of California against some of the biggest names in gaming alleging infringement of two patents related to automated methods for synchronizing an animated character's mouth with dialogue. The defendants included Electronic Arts, Disney Interactive, Namco Bandai, Konami, Sega, Square Enix, Capcom, Sony, and Activision Blizzard, among others. The court consolidated the lawsuits into two cases based on filing dates (CV 12-10322 and CV 13-1872).

All the defendants joined in filing a motion for judgment on the pleadings based on unpatentability of the claims under 35 U.S.C. 101. The defendants argued that the patents-in-suit were directed to a "fundamental, abstract animation practice," namely, "the abstract idea of rules-based synchronization of animated mouth movement.  See Op. at 12. While the court disagreed with defendants as to the abstract idea claimed, the court ultimately held that the point of novelty in the claims represented an abstract idea and thus was unpatentable under 101. See Op. at 19. Importantly, the court's analysis was primarily based on a thorough discussion in the patent of the manual processes employed in the prior art..

The two patents-in-suit were U.S. Pat. Nos. 6,307,576 and 6,611,278. Claim 1 of the '576 patent is representative and was analyzed by the court:
1. A method for automatically animating lip synchronization 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 intermediate 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 produce lip synchronization and facial expression control of said animated characters.
Initially, the court noted that these claims do not appear to be directed to an abstract idea on their face.  Op. at 13. Further, the court noted that the claims do not cover the prior art methods of computer-assisted, but non-automated, lip synchronization. Id. Additionally, the court cited defendant's non-infringement positions as evidence that the claims did not preempt all manners of automating lip synched animation. See Op. at 14. The court observed that, in section 101 motions, the parties positions are flipped: the patentee must argue that noninfringing alternatives exist and the defendant must argue that there are no noninfringing alternatives. Id.

In one of the clearer statements to date on 101 analysis, the court proceeded to argue that the claims must be evaluated in the context of the prior art:


Op. at 14. The court's analysis centered on identifying the point of novelty over the admitted prior art. As mentioned above, the patent contained a thorough discussion of prior art techniques whereby animators would manually set "morph weight values" to animate a character's mouth based on the dialogue. According to the court, the patentee, and the patent itself, the novelty of the claims (and the inventive step) was in the use of automated timing rules to automate the animation process:


Op. at 18 and 19. This left "an abstract idea at the point of novelty" and prevents "the development of any additional ways to use that abstract idea in the relevant field." See Op. at 19 (citing Alice Corp.Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2360 (2014)). Thus, the court found the claims invalid under 35 U.S.C. 101. See Op. at 18, 23.

The court observed: "One unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications." Op. at 19. Indeed, the patent's thorough discussion of prior art methods provided a strong argument that they had merely automated a previously manual process.

The court performed its 101 analysis by stripping out of all the prior art techniques from the claim, boiling the claim down to a point of novelty. This is also the approach used in obviousness analysis under 35 U.S.C. 103. During obviousness analysis, the difference between the claimed invention and the prior art is assessed against the skill and knowledge of one of ordinary skill in the art. The patentee in this case presented evidence of a defendant characterizing the claimed invention as "revolutionary." Such a characterization would typically carry considerable weight in obviousness analysis. However, the court stated that:


Op. at 20. Thus, it would appear that even if a non-obvious and "revolutionary" concept was presented by the point of novelty, but that concept was an "abstract idea" that prevents "the development of any additional ways to use that abstract idea in the relevant field," the claim would be patent ineligible and invalid under 35 U.S.C. 101.

The court summed up its ruling: "When examined in light of the prior art, the claims are directed to an abstract idea, and lack an 'inventive concept' 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.'" Op. at 23 (citing Alice, 134 S. Ct. at 2351).

We will continue to provide updates on relevant decisions on patentability under Alice.


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