The Software IP Report

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent.

McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative claim:

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.

McRO asserted the patent against everyone who’s anyone in the videogame space, including Bandai Namco, Sony, LucasArts, Activision, Blizzard, Disney, Square Enix, and others, in the Central District of California. The district court initially held the patent invalid for ineligible subject matter, but the Federal Circuit overturned that decision in 2016 (covered by this blog here) and let the case continue. The district court then ruled that the patent was invalid and not infringed, leading to this second appeal to the Federal Circuit.

The Federal Circuit’s decision came down to claim construction. The parties agreed on the definition of “morph weight set” as “[a] set of values, one for each delta set, that, when applied, transform the neutral model to some desired state, wherein each delta set is the set of vectors from each vertex on the neutral (reference) model to each vertex on a model of another mouth position.” The disagreement came from the term “vector” within that definition. The district court’s definition sided with the defendant: “a vector with direction and magnitude in three-dimensional space,” i.e., (ax, ay, az). McRO wanted the definition to be “an ordered set of numbers,” i.e., (a1, a2, … an).

While both definitions are generally accepted meanings of “vector,” the Federal Circuit decided that the context of the patent necessitated the narrower, 3D definition. The entire patent is within the context of three-dimensional modeling. The deltas, which are vectors, are described as going “from” a vertex of a neutral mouth “to” the corresponding vertex of a phoneme-specific mouth. The deltas, after being scaled by the morph weight, are simply added to the corresponding vertices. The vertices are necessarily locations in three-dimensional space, meaning that the addition of the deltas must represent a linear transformation through three-dimensional space. The parties had agreed that infringement hinged on this claim construction dispute, so the noninfringement ruling was upheld.

The district court’s invalidity ruling was not upheld, however. The district court had ruled that the patent’s description had not enabled the “full scope” of the claims, rendering it invalid under § 112(a). The legal standard for enablement is that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” The court here seemed to lay out a test (without labeling it as such) for the situation in which an accused infringer argues that some embodiments of the claims are enabled and some are not. “All the enablement cases on which the district court relied, and on which the Developers rely in this court, involved specific identification of products or processes that were or may be within the scope of the claims and were allegedly not enabled. … In short, none of the cases invoked by the district court and by the Developers have involved an abstract assertion of breadth, without concrete identification of matter that is not enabled but is or may be within the claim scope.”

Applying that pseudo-test to this case, the court found that the two examples proffered by the defendants—the “bones” method and the BALDI method—unpersuasive. These two methods don’t use vectors in the narrow sense required by the claim construction above, so they fall outside the scope of the claims. In fact, the bones method is the accused product used by the defendants. “The Developers have not, at this point in the case, met their burden of identifying a set of rules, for automatically outputting chosen mouth shapes, that is or may be within the scope of claim 1.”

“Without any specific examples, the district court’s reasoning is too abstract, too conclusory, to support summary judgment.” The Federal Circuit vacated but didn’t reverse the district court, meaning that the defendants may be able to offer new examples to prove nonenablement. The defendants had offered to withdraw their invalidity counterclaims, so the case may end quickly on remand in the same posture it’s in now—no infringement but an intact patent.

Lessons for Practice

McRO found itself in a damned-if-you-do-damned-if-you-don’t situation in this appeal. If the Federal Circuit agreed with McRO’s broader construction of “vector,” then the bones and BALDI methods would have been within the scope of the claims, and McRO likely still would have lost the case, only on enablement instead of infringement. While this case may represent the proportion of the time that it just isn’t possible to successfully navigate between the rock of noninfringement and the hard place of invalidity, a patentee can maximize its chances by thinking about supporting the full scope at the drafting stage and by drafting dependent claims providing a range of claim scopes.