More Lessons From McRo

by Fenwick & West LLP
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My previous blog on McRo focused on the direct aspects of the decision, but there are other excellent points that the court makes and that can be derived from the opinion, and that should play an important role in how the courts and the USPTO handle the Mayo test.

First, the mathematical nature of the invention was not fatal; it was vital. One of the favorite buzz-saw arguments for finding ineligibility is that claims for computer-implemented inventions recite—either directly or indirectly—mathematical operations. This is about as insightful as stating that patent claims in U.S. patents are written in the English language. The invocation of the dreaded mathematical algorithm Jabberwocky and talismans of Benson and Flook often convince jurists that the claims are abstract.  The McRo court did not run scared here. Quite the contrary, the McRo court relied on the underlying mathematical nature of the rules to demonstrate non-preemption: “Defendants concede an animator’s process was driven by subjective determinations rather than specific, limited mathematical rules. . . . It is the incorporation of the claimed [mathematical] rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks.” This holding should be heeded by the courts and the USPTO to not treat all mathematically implemented inventions as necessarily abstract.

Second, the improvement need not be in the functioning of the computer itself. McRo’s invention did not make the computer operate any faster, use less memory, or improve any other objective parameter of the device. Rather, the improvement was in subjective dimensions. First, the invention made it easier for human animators to animate 3D characters, thus improving the experience of the computer by the user, the animator. Humans have been drawing cartoons and animating images for well over 200 years, using various mechanical devices. Early film animation was done by drawing images, using pens and pencils and paint brushes as tools for this purely artistic purpose. Computer animation is simply the latest tool for this purpose, and McRo’s invention made this tool easier to use by workers in the field. Thus, McRo supports the proposition that improvements in computer tools that make them easier to use (e.g., user interface inventions) or that save users effort or time or otherwise improve their performance, all are sufficient “improvements” under Mayo.

Next, the invention specifically improved the result as experienced by the viewer by making the animated characters appear to speak more naturally, an entirely aesthetic and subjective improvement. This is consistent with the overall nature of human inventions, which is to create desirable solutions to human wants and needs, including aesthetic and artistic ones. McRo’s invention is only a means to an end, the creation of artistic works. It would have no value to animators if what animators did was of no interest to anyone. It’s because animated films are desired that animators create them, and McRo’s invention makes those end products more desirable still. In this way, McRo extends DDR. The value of the invention in DDR was entirely commercial, to improve the sales and customer retention of online merchants, as its technological contribution was trivial. The invention in DDR did not improve “how” the Internet or ecommerce sites operated in any technical way. Like McRoDDR’s invention operated at two levels. First, it improved the design framework for creating such sites, thus an improvement in the tools used to create such sites. Second, it improved the end user experience of those sites, making users stay on the sites longer and resulting in improved customer satisfaction.

Third, the court rejected, though it did not mention, the defendant’s mental steps argument, that applying the rules to the transcript was “a simple mathematical operation that can be performed in a person’s head or using a pencil and paper.” That mathematical operations could be done mentally is —like my point above about claims being in the English language—a distraction, not a meaningful argument. By definition, every algorithm that is performed by a computer was first invented by a human who thought up the algorithm and worked it out. I discussed this issue in great detail in my articles on The Mind as Computer Metaphor. The court also rejected, without even pausing to address, the defendant’s primary (and frankly silly) argument that “there can be little question that the idea that the human mouth looks a certain way while speaking particular sounds is a pre-existing fundamental truth” that “exists in principle apart from any human action.” If you think that’s a plausible argument, see my blog on laws of nature.

Fourth, eligibility does not require tangibility. The McRo defendants argued that a “stream of output morph weight sets” is not a tangible product. The court nixed this argument: “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 patentable.” 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.” Examiners continue to reject claims on the grounds that the claims only produce intangible data. This basis of rejection is clearly incorrect.

Fifth, the court did not engage in a reductionist claim analysis.  In step 2 of the Mayo test, many courts and patent examiners simply look to the verbs recited in the claims—receiving, storing, generating, determining, displaying, transmitting, etc. –and state that these functions are entirely conventional and well understood, and therefore cannot be “inventive.”  This approach wipes out all software claims, since there is no way to claim the operations of a computer except by reciting steps that a computer can perform. As noted by the court in Oplus Techs. Ltd. v. Sears Holding Corp., “All software only ‘receives data,’ ‘applies algorithms,’ and ‘ends with decisions.’ That is the only thing software does. Software does nothing more.” That’s why you’ll never see a patent claim for a software process that recites slicing, dicing, shaking, and baking.  The late judge Mariana Pfaelzer recognized this in California Institute of Technology v. Hughes Communications, stating that this “simplistic” approach “would eviscerate all software patents, a result that contradicts Congress’s actions and the Supreme Court’s guidance that software may be patentable if it improves the functioning of a computer.” The reductionist approach further misses the point because it fails to consider the claim limitations as a whole and as a combination.  Had the McRo court done this, it would have been compelled to hold that there was no inventive concept since all of the claim verbs were similarly “conventional”: obtaining, generating, evaluating, and applying.  That the court did not use this approach, but instead focused on the limitations as a whole and how they worked together is instructive.  Again, the court made this plain:

Whether at step one or step two of the Alice test, in determining the patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.

The requirements of the individual steps means not just the verbs (the steps) but the specific details that limit the scope of each step to particular data and how it is structured (e.g. the details of McRo’s rules) and how it is applied (e.g. how the rules were used to evaluate the phoneme sequence).   The USPTO should instruct examiners to follow this example.

All that said, there are a couple of issues that McRo should have addressed but did not.  First, the court could have further clarified that the preemption analysis should be from the perspective of a person of ordinary skill in the art (POSITA), and not a lay court. Using POSITA makes the analysis objective, technology neutral, and adaptive to changes in technology over time. POSITA is the only objective framework in the patent law and is already employed for claim construction, enablement, written description, obviousness, and the doctrine of equivalents. My partner Dan Brownstone and I set forth this theory, what we called Objective Preemption, in our amicus brief in Alice.

Finally, McRo should have distinguished the Federal Circuit’s decision in SmartGene v. Advanced Biological Labs. There the court held that a rule-based expert system for selecting therapeutic treatments for patients with particular diseases was ineligible. The claims recited the use of “a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition.” The court held “the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.” The court attempted to limit the reach of this holding by stating “Our ruling is limited to the circumstances presented here, in which every step is a familiar part of the conscious process that doctors can and do perform in their heads,” and designating the opinion as non-precedential. Nonetheless, district courts and more significantly the patent examiners, have read SmartGene as broadly holding that comparing old and new information and using rules to identify options—in any context at all—is an ineligible abstract idea, regardless of whether it was already done by humans in the relevant field. As I have shownSmartGene has been cited by patent examiners more than any other Federal Circuit or Supreme Court opinions except for Mayo and Alice. (As of today, SmartGene has been cited over 13,000 times; so much for a case being limited to its facts).*

The McRo panel should have distinguished SmartGene and put to an end its overzealous application. Specifically, the panel could have simply clarified two points. First, the claims in SmartGene only stated that there were “expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition,” but did not state anything about the details of the rules other than their purpose “for evaluating. . . .”   By contrast, the rules in McRo were claimed as encoding a broad, but still specific relationship, to “define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence.” Second, as discussed above, McRo’s rules were not the rules used conventionally by animators, whereas the court believed that the rules in SmartGene were the very rules normally used by doctors in their practice.  The court has frequently characterized its holdings in Ultramercial, TLI, Content Extraction, and other "ineligible" cases and it should do so with SmartGene.

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*In full disclosure, I was counsel of record for the patentee Advanced Biological Laboratories.  Feel free to blame some of this mess on me.

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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