McRO Saga Ends with Affirmation of Non-Infringement and Unresolved Question of Enablement

In McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., et al., No. 2019-1577 (Fed. Cir. May 20, 2020), the Federal Circuit affirmed a district court’s decision of noninfringement but, for a second time, reversed the finding of invalidity, remanding to the Central District of California for reconsideration of enablement. Because Defendants offered to withdraw their invalidity counterclaims without prejudice, this long-running dispute has likely come to an end.

McRO asserted a patent related to a method of “automatically” generating 3-D animations depicting lip movements and facial expressions using morph weight sets, including a simple exemplary set of rules. In 2012, McRO sued over 20 video game developers, accusing software applications with “bones animation” to make video game images look three-dimensional. The CDCA found the claims invalid under Section 101. The Federal Circuit reversed finding that claims recited a technical means for accomplishing a particular objective do not present preemption concerns, so long as there exists the possibility of alternative technical means for accomplishing that same objective. 

Once returned to the CDCA, the court returned a decision of noninfringement, finding the “bones animation” method used by Defendants did not practice the "morph weight set" limitation as narrowly understood based on the intrinsic evidence in the patent itself, not a broader interpretation that may exist in the field of art. In November 2018, the court granted defendants’ motion for summary judgment of invalidity, noting that defendants had identified two animation techniques—the accused “bones” animation and the prior art BALDI system—not enabled by the specification.

The Federal Circuit affirmed the finding of noninfringement. The Court, however, reversed the lower court’s finding of invalidity for failing to meet the enablement requirement because it failed to provide specific examples sufficient to support summary judgment. The Court summarized that Section 112 requires enablement of “only the claimed invention,” not matter outside the claims. Because both examples proffered by Defendants and considered by the lower court—“bones” animation and the BALDI system—were outside the scope of the claims, they could not support nonenablement. Judge Taranto wrote, "We do not go so far as to hold that there is a triable issue of fact on enablement—instead, we vacate the judgment and remand for the district court to consider how to proceed,” noting that Defendants had offered to drop their counterclaims of invalidity.