Federal Circuit Vacates Summary Judgment of Non-Enablement Where the Only Alleged Non-Enabled Systems Did Not Practice the Claims

Akin Gump Strauss Hauer & Feld LLP

In a recent decision, the Federal Circuit vacated the district court’s summary judgment of non-enablement because the systems identified by patent challengers as non-enabled under § 112 were not covered by the claims. Because a patent specification need only enable the full scope of the claimed invention, and not what is unclaimed, this case emphasizes that the enablement inquiry depends on first properly interpreting the claims.

In 2012, McRO, Inc., d/b/a Planet Blue (McRO) asserted U.S. Patent No. 6,611,278 (the “’278 Patent”) against defendant Bandai Namco Games Am. Inc. and over a dozen other video game developers (the “Developers”) in the District Court for the Central District of California. The ’278 Patent is directed to animating lip synchronization and facial expressions of animated characters three-dimensionally via a computer. The Developers produce and sell videogames with software that models facial animations in video game characters.

Previously, animators used “morph weight sets”—a set of values that, when applied, alter the animated subject’s default appearance so that they appear to speak a specific sound (e.g. “oo”)—and manually set the weight of each frame of a video game character’s mouth to properly depict them speaking. McRO patented a method to automate this process and generate character animations. Relevant to this appeal, McRO claimed a method of “obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence,” where a “phoneme” is a distinct unit of sound.

In a prior case, the district court determined that the asserted method claims of the ’278 Patent were invalid under 35 U.S.C. § 101 because they were directed to patent ineligible abstract subject matter. The Federal Circuit reversed that decision and remanded the case to the district court. On remand, the district court again found the claims invalid, this time granting the Developers’ motion for summary judgment of non-enablement. The district court also granted summary judgment of non-infringement. Specific to invalidity, the Developers relied on two animation techniques—bones animation and the BALDI system—as examples of systems not enabled by the specification of the ’278 Patent. The district court agreed that a person of skill in the art would be unable to practice the full scope of claim 1 because those techniques were not enabled. McRO appealed.

Enablement is a statutory requirement contained in 35 U.S.C. § 112. In short, a patentee must describe how to make and use the full scope of the invention without undue experimentation. Courts assess whether undue experimentation exists by utilizing the factors described in In re Wands. 858 F.2d 731 (Fed. Cir. 1988). Critically, however, § 112 requires enablement of only what is claimed, and is analyzed after the precise scope of the claimed invention is defined. A Wands analysis involves a concrete identification of embodiment(s) that are not enabled—particular products or processes that fall within the claim—so that breadth is shown concretely and not as an abstract possibility.

On appeal, the Developers argued that the bones animation and the BALDI system were not enabled. The Federal Circuit, however, determined that those animation techniques did not practice the claims. And because the bones animation and the BALDI system were the only examples identified by the Developers as not enabled, the court’s non-infringement determination left the Developers without a single specific example of a system that was both not enabled and practiced the claim. Without the support of a specifically covered technique, the Federal Circuit held that the district court’s non-enablement determination could no longer stand—it was too abstract and conclusory to support summary judgment of non-enablement.

Practice tip: When attempting to show that a patent does not enable the full scope of the claims, patent challengers should identify specific examples of non-enabled products or processes that practice the claims, and try to avoid relying solely on accused products or processes for which infringement may also be contested.

McRO, Inc. v. Bandai Namco Games Am., No. 19-1557 (Fed. Cir. May 20, 2020) (J. Taranto, Reyna, Mayer)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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