Animating 101: Court Clarifies Application of Patent-Eligibility Test Under Alice

In McRO, Inc. v. Bandai Namco Games America, Inc., No. 15-1080 (Fed. Cir. Sept. 13, 2016), the Federal Circuit reversed a district court’s finding that patents directed to processes for automated lip synchronization animation methods were directed to patent-ineligible abstract ideas. In doing so, the Court provided additional guidance for applying the abstract idea prong the two-step patent eligible subject matter test first articulated in Alice.

The patents at issue involved processes for automatically animating lip synchronization of computer-generated characters. The claimed methods apply rules assigned to a timed transcript and various animation frames to automatically set the facial expressions, rather than by being set by a human animator. The district court held that the claims were directed to an abstract idea, finding that the claims were not limited to specific rules and the “novel portions of [the] invention are claimed too broadly.”

On appeal, the Federal Circuit reversed. The Court explained that, under Alice, “a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.” In doing so, the Court stated that courts should look to whether the claims “focus on a specific means or method that improves the relevant technology” or are “instead directed to a result or effect that itself is an abstract idea.” The Court found that the claims at issue were not purely generic because they “are limited to rules with certain common characteristics, i.e., a genus,” that improved an existing technological process through the use of the claimed rules. According to the Court, the claimed process was not the same as the previously-performed manual process; therefore, the “claimed rules, not the use of the computer,” were what “improved [the] existing technological process.”

Turning to preemption concerns, the Court considered whether the claims preempted all rules-based processes for automating lip synchronization. The Court found that the claimed “rules [are] rendered in a specific way” and do not preclude further improvements or alternative processes for rules-based methods of animating lip synchronization. Because the claims incorporate specific features using particular techniques, the Court held the claims are directed to patent-eligible subject matter.