United States District Court Invalidates Abstract Software Patent Claims

On September 22, 2014, the United States District Court for the Central District of California (District Court) released their decision in McRO, Inc d.b.a. Planet Blue v Activision Publishing, Inc et al. In this decision, the District Court applied the US Supreme Court decision in Alice (previously reported by E-TIPS®) to non-business method claims, finding the patent claims of the plaintiff, McRo, Inc (Planet Blue), invalid for being directed to an abstract idea and lacking an “inventive concept” sufficient to transform the claims into patent-eligible subject matter under 35 U.S.C. § 101. Planet Blue, a computer graphics company based in Santa Monica, California, asserted claims of U.S. Patent Nos. 6,307,576 and 6,611,278 against several gaming companies, including Electronic Arts Inc, Blizzard Entertainment Inc, and Sega of America Inc. Writing for the District Court, Judge George Wu held the asserted claims to be invalid, as they were directed to an abstract idea and pre-empted the field of autonomic lip synchronization for computer-generated three-dimensional (3D) animations using a rules-based morph target approach. The asserted patents claim a method for automatically animating lip synchronization and facial expression of 3D characters involving “configuring a set of default correspondence rules between a plurality of visual phoneme groups and a plurality of morph weight sets [...]”. While recognizing that the claims appear to be tangible and not directed to an abstract idea, Judge Wu found that the claims failed to recite any specific default correspondence rules used to achieve the automatic lip and facial synchronization. Instead, the user would have to manually set up the default correspondence rules prior to implementing the method. Consequently, Judge Wu held that the claims merely state “an abstract idea while adding the words ‘apply it’.” Since use of the default correspondence rules was the inventive concept of the claims (the remainder was taught by the prior art), and the claimed default correspondence rules were merely an abstract idea, the asserted claims were invalidated under 35 USC 101 for being patent ineligible subject matter. Notably, the patents themselves provided a ‘casual’ and ‘honest’ description of the prior art that demonstrated how the majority of the claimed elements were previously known. On this point, Judge Wu remarked:

“[o]ne unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.”

Although the hazards of a detailed description of the prior art in patent specifications has been known to patentees since before Alice, this decision provides a convenient admonition of this strategy. Summary by: Michael House