The US Court of Appeals for the Federal Circuit vacated a summary judgment finding an asserted patent invalid for lack of enablement while affirming the holding of non-infringement. McRO, Inc. v. Bandai Namco Games America Inc., Case No. 19-1557 (Fed. Cir. May 20, 2020) (McRO II) (Taranto, J.).
The asserted patent was directed to a method for automatically generating animations having a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: phonemes and morph targets. A phoneme is “the smallest unit of speech, and corresponds to a single sound.” A morph target is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth positions, each corresponding to a different phoneme or set of phonemes.”
In McRO I (IP Update, Vol. 19, No. 10), the Federal Circuit held the claimed subject matter to be patent eligible, explaining that the claimed rules were used in a process specifically designed to achieve an improved technological result in conventional industry practice, and it was the claimed rules, not the use of a computer, that improved the existing technological process. The Court also found that the claims did not preempt all approaches that used rules for achieving automated lip-synchronization of three-dimensional characters. The Court therefore concluded that the claims were patent eligible based on the Alice step one abstract idea inquiry. As a result of McRO I and BASCOM Global Internet Servs. v. AT&T Mobility (IP Update, Vol. 19, No. 8), the US Patent and Trademark Office released a memorandum to patent examiners addressing subject matter eligibility (IP Update, Vol. 19, No. 11).
On remand of McRO I, the district court held that the defendants were entitled to summary judgment of non-infringement because the accused products did not practice the claimed methods, and to summary judgment of invalidity because the specification failed to enable the full scope of the claims. The court found that the defendants’ use of a bones animation technique did not practice the claimed “morph weight set” limitation, because it did not use three-dimensional vectors for its movement of vertices. Regarding enablement, the district court noted that the defendants had identified two animation techniques—bones animation and the “BALDI system”—that were not enabled by the specification. McRO appealed.
Notwithstanding McRO’s argument that the claim term “vector” should be construed as an “ordered set of numbers,” the Federal Circuit affirmed the district court’s claim construction of the claim term “morph weight set” as requiring three-dimensional vectors. The Court found that the specification only supported the three-dimensional vector construction, and not the broader “ordered set of numbers.”
Regarding enablement, the Federal Circuit agreed with McRO that the defendants failed to identify with particularity any method of animation that fell within the scope of the asserted claim and was not enabled. In view of the Court’s construction of the term “morph weight sets,” the bones animation and the BALDI system were both clearly outside the scope of the claims and were thus irrelevant to enablement. For example, with respect to bones animation, the district court’s non-infringement decision compelled this conclusion, because the accused bones animation did not use three-dimensional geometric vectors to move vertices.