Quoting Bob Dylan in “You’re a Big Girl Now,” from the landmark album Blood on the Tracks, Judge Wu in the Central District of California has summed up the present state of patent-eligibility jurisprudence under 35 U.S.C. § 101: “A change in the weather has known to be extreme.” McRo, Inc. v. Codemasters Inc., No. CV 14-439-GW(FFMx) (C.D. Cal. Sept. 22, 2014). Judge Wu made this statement in the course of granting a defense motion for judgment on the pleadings under FRCP 12(c), holding claims of U.S. Patent Nos. 6,307,576 and 6,611,278 invalid for failing to recite patent-eligible subject matter under Section 101. Although a Dylan quote is always nice, more significantly, Judge Wu’s analysis included determining which patent claim elements were included in the prior art, and which were not, and then focusing on elements not previously known in determining whether the patent claims were not patent-eligible as being directed to an abstract idea. The old rule that a patent claim should be considered “as a whole” when its validity is at stake is certainly taking a beating these days.
The patents-in-suit were both directed to a method for automatically performing lip and facial expression synchronization for animated characters to provide a more natural correspondence between the animated characters and recorded sounds.
In considering the applicable law, Judge Wu invoked the now-familiar rubric of Mayo Collaborative Services v. Prometheus Laboratories, Inc., and Alice Corp. Pty. Ltd. v. CLS Bank Int’l., which includes first, determining whether the claims were directed to a patent-ineligible concepts such as an abstract idea, and then, second, determining whether the claims recited an additional inventive concept to make them “significantly” more than simply coverage for the patent-ineligible abstract idea. However, as Judge Wu noted, in practice “the two-step test may be more like a one step test evocative of Justice Stewart’s most famous phrase,” that when confronted with pornography, “I know it when I see it.” In any case, Alice at a minimum resolved the question of whether simply reciting a computer made a claim patent-eligible: it does not.
Judge Wu began his analysis by rejecting the plaintiff’s argument that the defendants’ recently-issued patents for lip-synchronization were somehow relevant, and “undermine[d] Defendants’ argument that the patents-in-suit are directed to unpatentable subject matter.” It was in this context that the Judge Wu quoted Bob Dylan, explaining that even if the plaintiff’s and the defendants’ patents rose and fell together, “it is hard to fault anyone for seeking patents that may turn out to be invalid where the applicable standards are shifting and uncertain.”
Although finding that the patents-in-suit did not meet the requirements of Section 101, Judge Wu rejected the defendant’s arguments “that the patents cover the mere idea of using rules for three-dimensional lip synchronization, without requiring specific content for those rules.” In fact, “considered standing alone, the asserted claims do not seem to cover any and all use of rules for three-dimensional lip synchronization.” Instead, the claims each covered a specific “approach to automated three-dimensional computer animation.”
However, looking at the claims in the context of the prior art, the court found that the claims were not patent-eligible. Certain details of lip synchronization recited in the claims were found in the prior art, which “did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets.” Yet the patents also taught “that the prior art includes using morph targets that correspond to phonemes and calculating delta sets that contain the vectors from each for tax on the neutral model to the morph target,” which was consistent with the court’s construction of “morph weight set.”
Thus, conducting an element-by-element analysis of claim 1 of the ’576 patent, the court found that “what the claim adds to the prior art is the use of rules, rather than artists, to set the morph waits and transitions between phonemes.” These concepts were both “specified at the highest level of generality.” Therefore, quoting Alice and Mayo, the court found that “[b]ecause the claim purports to cover all such rules, in light of the prior art, the claim merely states “an abstract idea while adding the words ‘apply it.’”
That said, the court emphasized that “a § 101 defect does not mean that the invention was in the prior art.” An invention can be novel even if, as here, “the claims are directed to an abstract idea.” The patentee had made admissions concerning prior art at a time when it seemed that “such admissions were unlikely to be harmful” under then-applicable interpretations of the law. Judge Wu thought that one unintended outcome of Alice might be to provide “an incentive for patent applicants to say as little as possible about the prior art in their applications,” although he noted that such a “strategy is limited by the doctrine of inequitable conduct.” (I am not sure I agree that Alice will affect prior art admissions; patent applicants in the United States already generally say as little as possible about prior art because of concerns about patent examiners misusing such admissions under the 2007 KSR case.)
In any event, Judge Wu further emphasized that the section 101 patent-eligibility inquiry differs from the Section 103 obviousness analysis, and “the revolutionary nature of an abstract idea does not weigh in favor of patentability.”