By John S. Parzych and Krithiga Ganesan
It is no secret that the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International (Alice) is wreaking havoc to software and business method patents found to merely link abstract ideas with conventional elements, such as a computer. However, we are now also getting a taste of Alice’s potential effects on non-business method patents.
Particularly, on September 22, the U.S. District Court for the Central District of California invalidated two patents focused on non-business method claims. The decision, McRO, Inc d.b.a. Planet Blue v Activision Publishing, Inc et al. (McRO), appears to be the first instance where the framework set forth in Alice has been applied to patents not directed to business methods.
The patents considered in McRO, U.S. Patent No. 6,307,576 (the ‘576 patent) and U.S. Patent No. 6,611,278 (the ‘278 patent), were directed to methods for automatically applying lip-synchronization to facial expressions in animated videos. As described in the ‘576 patent, prior art practice of applying lip synchronization used models for differing mouth positions, each corresponding to a different phoneme. In the prior art methods, an animator would manually apply weights (referred to morph weights) corresponding to different mouth positions in each frame to an appropriate value. The point of novelty of the ‘576 and ‘278 patents focused on automating this process by providing a set of default correspondence rules between the different phonemes and the different morph weights.
Judge Wu, in explaining the District Court’s decision, stated that the framework for distinguishing patents that claim abstract ideas from those that claim patent-eligible concepts is a two-step process, as set forth in Alice. Particularly:
“[i]f the claim is not directed to a patent-ineligible concept, then the test stops at step one. If the claim is so directed, but we find in step two that the claim contains an inventive concept that transforms the nature of the claim into something patent eligible, then it seems that there was a categorization error in finding the claim – which is considered as an ordered combination – directed to an abstract idea in step one. (internal quotes omitted)”
Because this framework requires identifying the inventive concept in a claim, the District Court concluded that claims cannot be viewed in isolation and must be evaluated in the context of the prior art for the purposes of §101 (patentable subject matter) analysis. The Court explained the claim concept that transforms an abstract claim into a patent-eligible claim should be inventive in its own right, and not involve conventional activity. Put another way, in order to be held valid under §101, it is not merely sufficient for a claim to recite tangible elements or steps in order to transform the abstract claim into something patent-eligible, but that the tangible element or step needs to be new in light the prior art.
To that end, when applying Alice to the claims of the ‘576 and ‘278 patents, Judge Wu initially noted that the claims recited tangible steps. However, the point of novelty of these claims was still deemed to be abstract, which led to the later finding that the claims were invalid. The Court’s characterization of the inventive concept of the claims was based on the description of prior art methods of lip-synchronization described in the background of the ‘576 patent. Particularly, the Court determined that the novel aspect of the claims was directed to automating the application of morph weights based on correspondence rules involving a plurality of visual phoneme groups and a plurality of morph weight sets. In turn, the Court concluded that the inventive concept was an abstract idea because it was “described at the highest level of generality” in the specification. To that end, the Court found that the specification did not distinctly and specifically describe the correspondence rules that were the focus of the claims, pointing to text in the specification that “this is only an example of a set of rules which could be use[d] for illustrative purposes, and many other rules could be specified according to the method of the invention” for evidence. The Court concluded based on the Alice decision that the claim covers all such rules in light of the prior art, and therefore constitutes an abstract idea. Put another way, even though the claim recited tangible steps, if “a new part of the claim is an abstract idea[,] that constituted a claim to an abstract idea”.
While it is unclear the extent by which the McRO decision may be adopted by other courts, there are several clear takeaways. For example, the District Court cautioned that patent applications should say as little as possible about the prior art. In fact, the McRO decision could be viewed as incentivizing patent applicants to not include descriptions of the prior art. However, the practice of describing the prior art in applications can often provide a built-in argument against obviousness rejections. As such, it seems patent applicants should take heed of the McRO decision, potentially to the extent of not candidly describing the prior art as well as avoiding any reference to specific prior art patents or publications in the specification. Instead, applicants can settle for a middle ground, e.g., clearly identifying the problem and setting out the technical solution, while emphasizing throughout the specification that the solution offers a new or unconventional approach. Further, regarding any relevant prior art, applicants would disclose it to the U.S. Patent and Trademark Office during prosecution of the application, and allow the Office to draw their own conclusions regarding the art.
A further takeaway from McRO is the Court’s admonishment of the patents because their point of novelty was described too broadly. As such, applicants must be careful when drafting method claims to ensure that the step(s) that focus on the point of novelty is not only tangible, but also described in the specification distinctly and without broad generalizations.
In bridging Alice to patents not directed to software or business methods, the McRO decision has thrown down the gauntlet for applicants who are pursuing protection on method claims having any abstract undertones. To overcome this new challenge, more than ever, applicants need to carefully construct their specification to rise above the prior art, not only for initial patentability but future potential invalidity attacks.