Tuesday, September 13, 2016

CAFC reverses CD California on 101 issue; CAFC says claims patent eligible and FRCP 12(c) judgement reversed.

In the case, MoloLamken LLP, Washington, DC, argued for plaintiff-appellant,
and prevailed over a stellar array of patent attorneys representing the various

The CAFC, in overturning a 101 ineligibility finding, mentioned the
words "unconventional rules":

This appeal is from a grant of judgment on the pleadings
under Fed. R. Civ. P. 12(c) that the asserted claims of
U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and
6,611,278 (‘‘the ’278 patent’’) are invalid. The United
States District Court for the Central District of California
found that the asserted claims are directed to patentin eligible
subject matter and are therefore invalid under
35 U.S.C. § 101 (“§ 101”). McRO, Inc. v. Sony Computer
Entm’t Am., LLC, 55 F. Supp. 3d 1214 (C.D. Cal. 2014)
(“Patentability Op.”). We hold that the ordered combination
of claimed steps, using unconventional rules that
relate sub-sequences of phonemes, timings, and morph
weight sets, is not directed to an abstract idea and is
therefore patent-eligible subject matter under § 101.
Accordingly, we reverse.

As to the subject matter: The ’576 patent and the ’278 patent
were both issued to Maury Rosenfeld and are both titled
“Method for Automatically Animating Lip Synchronization and Facial
Expression of Animated Characters.”


Essentially, the patents aim to automate a 3-D animator’s
tasks, specifically, determining when to set
keyframes and setting those keyframes. This automation
is accomplished through rules that are applied to the
timed transcript to determine the morph weight outputs.
The patents describe many exemplary rule sets that go
beyond simply matching single phonemes from the timed
transcript with the appropriate morph target. Instead,
these rule sets aim to produce more realistic speech by
“tak[ing] into consideration the differences in mouth
positions for similar phonemes based on context.” Id. at
col. 10 ll. 6–7.

One exemplary set of rules provided and applied in
the specification of the ’576 patent is for a character
transitioning from silence through saying “hello.” See
’576 patent col. 7 l. 36 to col. 9 l. 22. This exemplary set of
rules provides for inserting a transition starting shortly
before the first syllable after a silence. Id. at col. 8 ll. 24–

**Of the district court's analysis:

On July 10, 2014, all Central District of California defendants
from both tracks (“Defendants”) jointly filed a
motion for judgment on the pleadings that the asserted
claims were directed to patent ineligible subject matter
under § 101. Patentability Op., 55 F. Supp. 3d at 1216.
After a hearing, the district court granted the motion on
September 22, 2014, finding the asserted claims unpatentable.
Id. at 1230.

The district court’s analysis loosely tracks the twostep
framework laid out by the Supreme Court in Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)
(“Alice”). First, the district court discussed the claims
generally: “Facially, these claims do not seem directed to
an abstract idea. They are tangible, each covering an
approach to automated three-dimensional computer
animation, which is a specific technological process.”
Patentability Op., 55 F. Supp. 3d at 1224.


In the district court’s view,
because the claims were not limited to specific rules,7 but
rather “purport to cover all such rules,” the claims merely
call for application of the abstract idea of using rules. Id.
at 1227 (citing Alice, 134 S. Ct. at 2358). The district
court found that, “while the patents do not preempt the
field of automatic lip synchronization for computergenerated
3D animation, they do preempt the field of such
lip synchronization using a rules-based morph target
approach.” Id. at 1227. The court concluded that the
claims were unpatentable because “the novel portions of
[the] invention are claimed too broadly.” Id. at 1230.

The legal background:

The parties’ principal dispute is over the meaning and
application of two Supreme Court cases in light of Alice:
Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Diamond
v. Diehr, 450 U.S. 175 (1981) (“Diehr”). Both cases
addressed the patentability of process claims that include
steps requiring calculation.

The position of defendant-appellees:

Defendants argue that Flook controls because the
claims are unpatentable algorithms that “can be performed
solely with pencil and paper.” Defs.’ Br. 28. The
claims, in Defendants’ view, “merely purport to take a
preexisting process and make it faster by automating it
on a general-purpose computer.” Defs.’ Br. 19. Defendants
argue that these claims fail even under Diehr because
they do not result in any tangible product, instead
only producing a “stream of output morph weight sets”
that are applied “to produce lip synchronization” without
requiring the production of anything tangible like a video.

Ariosa is cited:

We also review de novo whether a claim is invalid
under the judicially created exceptions to § 101. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375
(Fed. Cir. 2015).

[Later -->]

Even so, we have recognized that “the absence
of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower
concern here is whether the claimed genus of rules
preempts all techniques for automating 3-D animation
that rely on rules.

As to claim interpretation:

we note that, in this case, claim
construction is helpful to resolve the question of patentability
under § 101. Specifically, the parties’ dispute about
whether the “first set of rules” must evaluate sequential
phonemes or can evaluate individual phonemes is resolved
by the claim language. We agree with McRO that
the claims are limited to rules that evaluate subsequences
consisting of multiple sequential phonemes.
This limitation is apparent on the face of the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). In particular, the intermediate morph
weight sets and transition parameters are generated “by
evaluating said plurality of sub-sequences against said
first set of rules.” ’576 patent, cl. 1, col. 11 ll. 36–39.10
This limitation could not be satisfied by rules that only
evaluate individual phonemes. Instead, the claimed “first
set of rules” must be formulated to evaluate subsequences
of phonemes.11

Genus/species arose:

Claims to the genus of an invention, rather than a
particular species, have long been acknowledged as patentable.
E.g., Diamond v. Chakrabarty, 447 U.S. 303,
305 (1980) (patentable claim to “a bacterium from the
genus Pseudomonas containing therein at least two stable
energy-generating plasmids, each of said plasmids providing
a separate hydrocarbon degradative pathway.”).
Patent law has evolved to place additional requirements
on patentees seeking to claim a genus; however, these
limits have not been in relation to the abstract idea
exception to § 101. Rather they have principally been in
terms of whether the patentee has satisfied the tradeoff of
broad disclosure for broad claim scope implicit in 35
U.S.C. § 112. E.g., Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). It is
self-evident that genus claims create a greater risk of
preemption, thus implicating the primary concern driving
§ 101 jurisprudence, but this does not mean they are


We therefore look to whether the claims in
these patents focus on a specific means or method that
improves the relevant technology or are instead directed
to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016) (“Enfish”);

As to the appellees:

Defendants’ attorney’s argument that any rules-based
lip-synchronization process must use the claimed type of
rules has appeal, but no record evidence supports this
conclusion. Defendants again rely only on the patents’
description of one type of rules, but the description of one
set of rules does not mean that there exists only one set of
rules, and does not support the view that other possible
types of rules with different characteristics do not exist.
The only information cited to this court about the relationship
between speech and face shape points to the
conclusion that there are many other possible approaches
to automating lip synchronization using rules. For example,
Amicus cites Kiyoshi Honda, Physiological Processes
of Speech Processing, in Springer Handbook of Speech
Production 7 (Jacob Benesty et al. eds., 2008) (“Honda”),
as support for the proposition that the claimed rules
reflect natural laws. Amicus Public Knowledge Br. 12.
Honda shows, however, that the interaction between
vocalization and facial expression is very complex, and
there are relationships present other than those required
by the claimed rules.


Here, the structure of the limited rules reflects a specific
implementation not demonstrated as that which “any
[animator] engaged in the search for [an automation
process] would likely have utilized.” Myriad, 133 S. Ct. at
2119–20 (quotation marks omitted). By incorporating the
specific features of the rules as claim limitations, claim 1
is limited to a specific process for automatically animating
characters using particular information and techniques
and does not preempt approaches that use rules of a
different structure or different techniques. See Morse, 56
U.S. at 113. When looked at as a whole, claim 1 is directed
to a patentable, technological improvement over
the existing, manual 3-D animation techniques. The
claim uses the limited rules in a process specifically
designed to achieve an improved technological result in
conventional industry practice. Alice, 134 S. Ct. at 2358
(citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent,
therefore, is not directed to an abstract idea.
Because we find that claim 1 is not directed to ineligible
subject matter, we do not reach Alice step two. Enfish,
822 F.3d at 1339.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1080.Opinion.9-9-2016.1.PDF


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