MRCO v. Bandai Shows the Way to Broader Method Claims that Satisfy Alice and Mayo
It is said that one should cast a “wide net to catch the big fish.” In patent parlance, the wide net is the claims and the big fish are the competitors and customers. The computer/software industry and diagnostic industry, among others, generally rely on method claims to protect IP. However, method claims in these areas typically face increased scrutiny under the patent eligibility standard set forth in 35 USC §101 due to the nature of the claims (covering subject matter that may be considered abstract ideas, laws of nature, or natural phenomena).
To pass muster under §101, the claims must satisfy the Alice/Mayo framework set forth by the U.S. Supreme Court. The Alice/Mayo framework asks two questions: (1) are the claims directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon; and if so, (2) do the steps when considered individually and as an ordered combination transform the nature of the claim into a patent-eligible application. The Federal Circuit (CAFC) has also stressed the possibility of preemption as “the concern underlying the exceptions to §101.”
Previous CAFC cases have given important pointers on how to satisfy the Alice/Mayo framework. For example, in Enfish the CAFC found claims directed to an improved relational databased eligible under §101 as directed to an improvement in the operation of a computer. In Enfish, the courts specifically noted that the claims set forth a specific method by which the relational database operated and cited this factor as one that favored patentability of the claims. Enfish represented the first instance where the CAFC held a software claim was not directed to an abstract idea. In making this determination, the court noted specifically how the claims were limited to the specific methods in which the database structures were improved. In being so limited, the claims were clearly not focused on claiming an abstract idea or general concept but rather an improvement. While providing for eligibility of the claims, the opinion seemed to indicate such claims should be narrowly focused and contain clear limitations on how the concept claim is implemented.
As a result, even when method claims are found to be allowable the scope of the method claims may be limited to specific implementations of the method that were reduced to practice.
The CAFC, in MRCO v. Bandai, sets guidelines under which broad method claims, in this case software claims, are properly analyzed under the Alice/Mayo framework of §101 and opens the door to broad method claims.
The Prior Art and the Invention
In MRCO, the patents-at-issue, US 6,307,576 (‘576 patent) and US 6,611,278 (‘278 patent), relate to automating particular steps of a preexisting 3-D animation method. The preexisting 3-D animation method used multiple 3-D models of a character’s face to represent the different facial expressions the character makes when making certain sounds, termed “morph targets.” The resting facial expression was termed the “neutral model.” The morph target and the neutral model were characterized by certain points (vertices) on the face. The transition from the neutral model to a morph target was characterized by a “delta set” of vectors which represented the change in location of vertices between the neutral model and the morph target. To create the animation sequence, an animator manually assigned the “morph weight set” value between 0 and 1 at certain critical times (keyframes) following a time-aligned phonetic transcript. As such, the prior art methods relied heavily on the animator’s subjective judgment.
The invention was directed to automation of this task, specifically by determining when to set
keyframes and setting those keyframes without the input of the animator. The automation is accomplished through rules that are applied to the timed transcript to determine the morph weight outputs. While the specification provided many exemplary rule sets, they presented those rules in a broad form.
Claim 1 of the ‘576 patent is representative of the claims exampled and reads:
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.
As is obvious from the claims, the manner in which the various rules are implemented is not recited in the claims.
District Court Invalidates the Claims
The district court held that the claims were not patent eligible under §101. While recognizing the claims at issue were not clearly drawn to an abstract idea (finding the directed to a specific technological process), the district court was concerned that the entire field of automated lip synchronization would be preempted because the claims are not limited to specific rules by which the methods described by the claims are carried out (as was the case in Enfish).
Classification as an Abstract Idea Dependent on the Actual Language of the Claims
The CAFC took issue with the district court’s oversimplified characterization of the claims. This is in agreement with the Alice Court which cautioned that “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to §101 swallow the rule.” Defendants argued that MRCO’s method claims “simply use a computer as a tool to automate conventional activity,” similar to the programmed alarm system of Flook. The Federal Circuit disagreed, stating that the claimed method was unlike the methods in Flook, Bilski, and Alice because the prior art method carried out manually by the animators was not the same as the claimed computer-implemented method. The CAFC found the patented methods “improved the existing technological process” by automating the animator’s task (the determination of the morph weigh sets), but did so in a way not taught or suggested in the prior art. The claimed methods defined the morph weight sets as a function of the timing of phoneme sub-sequences, something not taught or suggested in the prior art. In short, the CAFC found that “the claims are limited to rules with specific characteristics” despite the fact the rules were broadly and categorically claimed. The court noted that while such a broad claim approach increases the risk of preemption, this does not mean that such claims are unpatentable.
Regarding potential preemption concerns, the defendants argued that the claims would prohibit any automated method of using the rules-based lip-synchronization process. The CAFC noted that the art was aware of alternative methods for automating lip-synchronization and that the claims at issue only cover methods that defined the morph weight sets as a function of the timing of phoneme sub-sequences. Therefore, other methods were available for an automated rules-based lip-synchronization process.
The CAFC’s decision in MRCO provides guidance on how to navigate the difficult path between obtaining claims of broad scope while maintaining eligibility under §101. First, as was stressed in prior cases, discuss in the specification how the claims are directed to a specific improvement in a technological process and clearly articulate the advantages of the claimed methods. Second, clarify that the claimed methods do not preempt other solutions to the same technical problem.
The approach taken by the CAFC here should also be applicable to other technological areas as well. Consider claims to diagnostic methods using a particular biomarker or natural relationship. Showing that the claimed use of the biomarker does not preempt all uses of the biomarker should provide a foundation on which to argue the claims are patent eligible under the existing §101 jurisprudence.