by Dennis Crouch
McRO, Inc. (Planet Blue) v. Bandai Namco Games (Fed. Cir. 2020)
This case has returned to the Federal Circuit. In 2016, the court issued an important legibility decision in the case — finding the algorithm for syncing anime lip-movements with various sounds to be patent eligible. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I). Less than four years later, McRO I has been cited by over 2000 PTAB decisions as well as 200+ court decisions. The only more-cited patent cases from 2016 are Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016); and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
On remand, the accused infringers again successfully moved for dismissal — this time on summary judgment of invalidity (enablement) and non-infringement. On appeal, the Federal Circuit has vacated the invalidity holding, but upheld the non-infringement determination.
Non-Enablement and Point of Novelty: Aspects of the invention that are known in the art need not be fully described. Rather, the law relies upon the artisanal knowledge to fill the gaps. A “patent need not teach, and preferably omits, what is well known in the art.” AK Steele (Fed. Cir. 2003). However, novel aspects of the invention must be enabled – and must reasonably teach how to make and use that aspect of the invention.
Non-Enablement by Example: Enablement requires that the patentee “teach the public how ‘to practice the full scope of the claimed invention.'” without undue experimentation. Slip Op. quoting AK Steele. In a number of cases, the courts have invalidated patents on enablement grounds after identifying infringing products/processes that are not enabled. On appeal here, the Federal Circuit offered a limiting principle to that approach — it must be tied to a particular and actual product/process, not simply “an abstract assertion of breadth.”
In the case, the accused infringers identified two particular techniques that were not enabled (“bones” and BALDI). However, a narrow claim construction meant that neither of those were actually covered by the claims. And, only the claimed invention need be enabled.
No other concretely identified animation techniques have been advanced to support the district court’s and Developers’ enablement analyses.
Slip Op. Without any other particular example of infringing but non-enabled activity, the court held that theory of enablement failed. The district court noted the breadth of the claims and narrowness of the specification. On appeal, the Federal Circuit found that conclusion suggestive of an enablement problem, but insufficient:
[T]hese observations merely state the conclusion that the claims are too broad and the specification’s discussion is too narrow. The observations do not justify the conclusion with any concrete support. To say that the “first set of rules” limitation is broader than “if . . . then . . . else” statements based on keyframes is not to say what else is or may be within the phrase—and it was the burden of the Developers, not McRO, to prove that such specific content exists and that it is not enabled.
The appellate panel does not delve into this, but remember that enablement is a question of law, not a question of fact. The result then is that the defendant has the burden of persuading the judge on enablement, not proving its case. Lack of enablement can be supported by various factual conclusions, and those must be proven with clear and convincing evidence.
Non-Infringement: McRO’s non-infringement argument hinged upon claim construction of the claim term “morph weight set.” The morph weights identify how much and in what direction various morph targets (such as lip portions) move. The district court interpreted the term to require these be in 3-D geometric vector form. The result of that claim construction was no-infringement because the accused infringers “do not represent the displacements of each vertex in terms of a simple xyz displacement vector.”
On appeal, the Federal Circuit affirmed the claim construction — holding that “the specification compels the three-dimensional geometric construction of ‘vector’ adopted by the district court.” McRO had argued that vector should be given a broader definition to include how it is used in computer science — as a sequential list of numbers.
- I don’t know why the Federal Circuit allowed the focus of this whole argument to be on the term ‘vector.’ Here, the argument was on how to define the term used to define the actual claim terms. Rather, the focus should have zeroed in on the claim term itself (“morph weight set”) and decide what that claim term required.
- In a bit of an oddity, Federal Circuit’s opinion actually uses vector in the computer science form — noting that the accused process “stores information, whether as a 4×4 matrix or as an equivalent 16-term vector.”
- Without knowing more, the difference being argued about here appears to be resolvable with a mere mathematical transform that could be seen as the equivalent. No doctrine of equivalents argument was presented on appeal.
U.S. Patent No. 6,611,278 (“Method for automatically animating lip synchronization and facial expression of animated characters”).