Last week, the Federal Circuit again addressed when claimed methods involving software are too abstract to be patentable. The Federal Circuit in McRO Inc. v. Bandai Namco Games America held that a combination of steps using unconventional rules for speech timing and pronunciation addresses patent eligible subject matter. McRO, No. 2015-1080, 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sept. 13, 2016).
What is Abstract?
Section 101 of the Patent Act describes what can be patented, which includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. But a patent cannot be obtained for material directed toward “laws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). Otherwise, a patent could preempt all ways of achieving the patent’s claimed results. Id. at 1354; see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (pre-emption would “tend to impede innovation more than it would tend to promote it”). In other words, a patent claiming a naked idea “risk[s] disproportionately tying up the use of the underlying idea.” Alice, 134 S. Ct. at 2354–55 (citing Mayo, 132 S. Ct. at 1294). Abstract ideas include a “fundamental economic practice long prevalent in our system of commerce,” a “longstanding commercial practice,” and “a method of organizing human activity.” Alice, 134 S. Ct. at 2355. More generally, an idea is impermissibly abstract when it is “devoid of a concrete or tangible application.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
McRO involved two patents that claim methods for automating the generation of 3-D computer animation. In the prior art, animators decided how animated faces should appear at points in time while pronouncing words and then draw those faces. Animators did this by setting “morph weights” for different sounds (or “phonemes”) that combine into a composite facial model or image. For example, an animator could choose a half-weight of 0.5 of a face pronouncing “oh” in one image, which would appear halfway been a person pronouncing “oh” and a neutral model (a blank face). For a subsequent image, the animator could select a 0.5 “oh” and a 0.5 “da,” resulting in an image that appears to have begun pronouncing the next sound. Animators had to keep a detailed list of when various sounds occurred (or “keyframes”), so they could modify weights accordingly. The patents describe employing a computer to determine both which keyframes are important and to set the morph weights at those keyframes automatically. The district court granted defendants’ judgment on the pleadings that both patents’ asserted claims were invalid under § 101.
Tying the Claims to the Invention and Distinguishing Prior Art
The Court characterized the invention as “us[ing] rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators.” McRO, at *10. The process was not merely aided by computer automation, but rather the invention was “a distinct process” to that “previously performed by humans” that “evaluat[ed] sub-sequences, generat[ed] transition parameters, and appl[ied] transition parameters to create a final morph set,” rather than merely using rules to set keyframes. Id. at *29. The Court found the invention to be a novel set of rules, not simply “the automation of further tasks.” Id. It noted that “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 phoneme sequence.’” Id. at *25. Therefore, the Court concluded that “[t]he specific, claimed features of these rules allow for the improvement realized by the invention.” Id. The Court found no evidence that the prior art process was “the same as the process required by the claims.” Id. at *29.
Throughout, the Court defused the concern of preemption. The Court emphasized the importance of analyzing whether other advances in animation would be covered by the claims, stating that the patents must “focus on a specific means or method that improves the relevant technology” rather than being “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” Id. at *28. The Court noted that “[t]he claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus.” Id. at *26. The Court found it “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.” Id. at *26-27. Even if animators automated a process of setting keyframes by rules, it would not necessarily infringe the patents. Id. at *29. And no evidence showed animators already employed “the type of rules” that the patents described. Id. Defendants also failed to show that any rules-based animation method would infringe the claims. Id. at *31-32.
The Court ultimately concluded that “[w]hen looked at as a whole, [the patented claim at issue] is directed 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.” Id. at *33.
An Extension of Enfish and DDR Holdings?
McRO may be seen as one of a trio with Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016) and DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014). Each involved patent eligible subject matter because the claims are limited and circumscribed to a novel solution; no patent merely claimed a computer implementation of a prior art solution. In Enfish, the claims described a new computer database model—one that employed self-referential tables. See Enfish, at1339. Similarly, the claims in DDR Holdings were patent eligible because they addressed an unsolved Internet problem where conventional websites would have to redirect customers for purchases of displayed products sold by third-parties. Claims related to hybrid web pages “specify how interactions with the Internet are manipulated to yield a desired result–a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257-58.
The Court reemphasized that § 101 preempts patents covering “basic tools of scientific and technological work.” Alice, 134 S. Ct. at 2354. But McRO again demonstrates that logical rules can be patented provided they are novel and sufficiently narrow. Claims that track the inventive improvement over prior art limit potential preemption and are more likely to satisfy § 101. Whereas, inventions that only improve human processes by doing those same processes better through a computer remain invalid.