The Federal Circuit continued to refine the boundaries of patent-eligibility of software in 2016 with a new decision, McRO, Inc. v. Bandai Namco Games America, Inc. (Sept. 13, 2016), in which the court assessed whether claims directed to a method of automatically animating lip synchronization and facial expression of 3D characters are patent eligible.
The claims at issue were fairly discrete. A representative claim of the patent at issue was:
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.
The court first cautioned that the courts must “‘avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims…. Whether at step one or step two of the Alice test, in determining patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.”
The court also noted that it is important to distinguish between claims directed to a result, rather than claims directed to specific methods of accomplishing the result: “a patent may issue ‘for the means or method of producing a certain result, or effect.’”
In the claims at hand, the court found that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process … and does not preempt approaches that use rules of a different structure or different techniques.”
The new decision can serve as a useful guide for patent applicants when drafting software-implemented method claims. The decision indicates that if the claims are directed to a result, however accomplished, then they are unlikely to be patent-eligible. However, if the claims are directed to a discrete method of achieving a result, they may be patent-eligible even if implemented on a general purpose computer.
[A summary of all of the Federal Circuit decisions that found software to be patent eligible, as well as most district court and Patent Trial and Appeals Board decisions with similar results, is available at this post on IP Spotlight.]