Software Patent Eligibility: Preemption Gets Starring Role at the Federal Circuit
“All right, Mr. DeMille, I’m ready for my close-up.” -- Sunset Boulevard (1950)
The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s star turn might not come. The Federal Circuit deemphasized preemption in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), when it held that, “[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework … preemption concerns are fully addressed and made moot.” The Federal Circuit’s recent decision McRO, Inc. v. Bandai Namco Games America Inc. clarifies the role of preemption in 35 U.S.C. § 101 jurisprudence. The decision explores the “abstract idea” prong of the Alice/Mayo framework and places preemption at center stage.
McRO addressed the patent eligibility of claims focused on automatically synchronizing the lip movements and facial expressions of computer-animated characters. With the claimed technology, different models of a character’s face could depict the various facial expressions made during speech. In admitted prior art methods, an artist would manually set morph weights for different models of the face at different keypoints, corresponding to the artist’s judgment of what time the character would pronounce a phoneme based on a timed transcript. The claimed invention automated the process with a different technique, using a set of applied rules on the timed transcript to determine when and how to set the keyframes.
The U.S. District Court for the Central District of California determined the claims were directed to the abstract idea of “automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation.” The Federal Circuit disagreed, stating that the district court’s interpretation oversimplified the claims and did not account for the claims’ specific requirements. The Federal Circuit’s analysis of patent eligibility emphasized preemption heavily. For example, the Federal Circuit noted that the claimed rules did not purport to cover all rules, but were limited to a genus of rules having certain characteristics. Because the claimed rules had specific structure, “broad preemption of all rules-based means of automating lip synchronization” would be prevented, “unless the limits of the rules themselves are broad enough to cover all possible approaches.” McRO appears to follow a two-step preemption analysis, first examining evidence showing how the claimed approach differs from the prior art (e.g., use of rules, rather than an artist’s judgment), and then determining whether the claimed subject matter preempts all such approaches (e.g., whether the rules of the claims preempt all rules-based approaches).
McRO is an important decision that clarifies preemption’s role in the Mayo/Alice framework. The earlier Ariosa decision may have implied non-preemption arguments played no such role. Indeed, the PTO seemed to adopt this position in a memo to examiners, which stated: “Questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo ….” But McRO shows that meaningful evidence of no preemption can establish that a claim is not “directed to” an abstract idea, and thus patent eligible.
In conclusion, McRO confirms that preemption is not merely a lip-service factor to be summarily dismissed after the Mayo/Alice framework is applied. As such, patent applicants should carefully consider the claim elements they consider to be improvements over the prior art and identify evidence showing the improvements. Applicants should also define those elements in the claims with specifically claimed characteristics, such that they will not be broad enough to cover all approaches based on those elements.