In McRO, Inc. d.b.a. Planet Blue v. Namco Bandai Games America, civ. No. CV 12-10322-GW (FFMx) (C. D. Cal., Sept. 22, 2014), the granted Defendant’s motion for judgment on the pleadings that US Patent numbers 6,307,576 and 6,611, 278, were invalid as attempts to claim an abstract idea. (A copy of the decision is available at the end of this post.)
The claims were directed to automatically animated lip synchronization and facial expression of 3D animated characters. The court read the claims in view of the admitted state of the prior art and located a single “point of novelty”: “[T]he idea of using rules, including timing rules, to automate the process of generating keyframes.” “So what the claim adds to the prior art is the use of rules, rather than artists to set the morph weights and transitions between phonemes [e.g., the change in the shape of the lips as words are spoken.]”
What is interesting about this decision, is the court’s revival of the nearly ancient maxim that a valid claim cannot be functional at the point of novelty, citing Gen. Elec. Co. v Wabash Appliance Corp., 304 U.S. 371 (1938). The court does not note that this decision was overruled by Congress when in added s. 112, paragraph 6 (now “f”) to the Patent Statutes. Rather, the court leaps directly to the conclusion that an “abstract idea is the extreme case of functional language.” (For a good review of claims containing functional language, please see the series of articles by Ronal Slusky in Intellectual Property Today (2014)).
From here, the court repeatedly cites Mayo v. Prometheus for its approach of stripping the claims of any elements that were conceded to be in the prior art as non-inventive steps, and leaving the aforementioned “point of novelty.” Of course, “However, both of these concepts [the idea of using rules] are specified the highest level of generality… Because 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.’ Alice, 134 S. Ct. at 2338 (quoting Mayo, 132 S. Ct. at 1294)… And if… the inventive step is the use of timing rules, given the state of the prior art, that still leaves an abstract idea at the point of novelty, and [prevents] the development of any additional ways to use that abstract idea in the relevant filed.” Slip. Op. at 18-19.
Apart from the “point of novelty” approach to stripping away conventional claim elements, note the court’s citation of Mayo and Alice (that the Supreme Court used in Alice) to comingle the “natural phenomenon” approach of Mayo with the “abstract idea” approach in Alice. The Mayo decision had nothing to do with an attempt to patent an “abstract idea”; that term appears only once in Mayo, and it is attributed to Bilski, quoting Diehr. Finally, these claims are method claims, and they do not recite use of a computer (although one certainly would be needed to carry out the method). Early in the opinion, after reproducing the main claims, the court writes: “Facially these claims do not seem to be directed to an abstract idea.” This sounded hopeful, at least until the court’s analytical approach of claim-husking was announced.