MCRO's Pyrrhic Victory

May 21, 2020 – Article

On May 20 the Federal Circuit for the second time found McRO’s patent for automatically generating animations to be patentable, this time reversing the district court’s finding of invalidity for lack of enablement. In its previous decision, McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I), the Federal Circuit reversed the district court’s holding that the claims were directed to a judicial exception, an abstract idea. In McRo I the Court had reversed based on its determination that the claims were to a genus limited to rules with certain common characteristics, a genus. Id. at 1313. In particular, the “rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences.” Id.

Using the Federal Circuit’s description of the specific embodiment the district court then conducted a claim construction which restricted the meaning of the claim terms to those found in the specification which the Federal Circuit had relied upon in McRO I. The district court subsequently granted the defendant’s motion for invalidity because the specification did not enable the full scope of the claims since the claims were being asserted against the defendants’ methods admitted to be not enabled under the court’s claim construction.

The Federal Circuit affirmed the district court’s finding of non-infringement based on the claim construction. Claim 1, representative of the claims on appeal reads:

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;

obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;

generating an output morph weight set stream by applying said first set of rules to each sub- sequence of said plurality of sub-sequences of timed phonemes; and

applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.

The dispositive was the meaning of the “vector” as used in the district court’s claim construction. The district court interpreted using the definition in the specification “a vector with direction and magnitude in three-dimensional space.” McRO argued for the normal meaning of vector does not include the “three-dimensional space.” The Federal Circuit disagreed and affirmed the district court’s claim construction and grant of summary judgment.

Regarding invalidity, the district court had relied upon McRO’s infringement assertions against the defendants’ techniques which were not enabled by the claims. However, the defendants’ methods were outside of the scope of the claims as interpreted by the district court and was irrelevant to enablement. The Federal Circuit held that the defendants had not proven enablement where McRO had presented some expert testimony in favor of enablement.

In asserting a lack of enablement, it is necessary to demonstrate a technique falling within the claim scope as interpreted by a court which is not enabled.