|© Frank Hellard|
The two patents at issue, according to their descriptions, addressed issues in animating lip synchronisation and facial expression through the use of 'weighted morph targets and time aligned phonetic transcriptions of recorded text'. To overcome the tedious work of inputting keyframe data for every different facial expression, the invention employed a set of rules that applied a stream of morph weight sets in the presence of a sequence of timed phonemes or other timed data. Essentially, by rendering this process automatic, the patents aimed to significantly improve the efficiency, in terms of costs and time, of the animating process. The alleged patent infringers, however, argued that the patents were invalid under s 101, maintaining that they merely 'set forth the previously-known animation method as a series of mathematical steps, and instruct[ed] the user to perform those steps on a computer'. Consequently, the defendants filed a motion for judgment on the pleadings based on unpatentability.
The court first reconstructed the principles and tests to be applied in the context of a s 101 analysis. It recited the teaching of Mayo Collaborative Services v Prometheus Laboratories Inc., where the Supreme Court detailed a two-step inquiry to evaluate whether an invention is an unpatentable law of nature, physical phenomenon or abstract idea. Such inquiry comprises the assessment of (i) whether the claims at issue are directed to one of the patent-ineligible concepts, and (ii) if there is any additional element that transforms the nature of the claim, by adding a meaningful 'inventive concept' to it. The judge noted, however, that the Supreme Court never fully delineated the contours of this test, using, instead, secondary considerations to corroborate its findings: 'thus [...], the two-part test for identifying an abstract idea appears to be of limited utility, while comparisons to previously adjudicated patents - or more precisely, to past cases’ characterizations of those patents - have done the heavy lifting'. Perhaps with a touch of irony, he recited the famous observation of Oliver Wendell Holmes: '[t]he life of the law has not been logic: it has been experience'.
The court then provided an interesting overview of the principle enshrined in s 101 ('patents should not "foreclose more future invention than the underlying discovery could reasonably justify"', quoting Mayo). It argued that this provision cannot be regarded as the only tool available to fine tune the balance between patent protection and follow-on innovation, but acknowledged that, according to several scholars, s 101 should be the pivotal mechanism to this aim, an opinion shared by the Supreme Court. Lower courts, therefore, 'are now left with the task of figuring out when the "two-part" test is satisfied'. The judge evaluated the possibility of using the function-way-result test, to enrich the two-step enquiry. According to this test, infringement depends upon the performance of a substantially equivalent function, 'in substantially the same way to obtain the same result' (Union Paper-Bag Mach. Co. v Murphy). The court explained that the analysis frequently focuses on the identity of the 'way' in which the patent and accused product work, as identity of function and result is easier to assess. 'Similarly', it added, 'the question in the abstract idea context is whether there are other ways to use the abstract idea in the same field': '[i]f so, the Supreme Court has expressly encouraged others to find those other ways, without being held back by patents that preempt the whole concept'. In this evaluation, care should be taken to avoid linking unpatentability to lack of inventive effort on the side of the infringer.
Assessing the defendants' argument that the claims at issue dealt with the abstract idea of rules-based lip synchronisation, the decision noted that, taken in isolation, the claims do not seem directed to an abstract idea. However, Judge Wu clarified that, when conducting the s 101 analysis , courts must factor out 'conventional activity', and consider the claims as an 'ordered combination'. Citing General Electric Co. v Wabash Appliance Corp., he noted that 'where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea'. Applying this principle to the case in hand, he observed that the claims merely added to the prior art the use of rules, rather than artists, to set the morph weights and transitions, leaving to the user the task of providing the rules. Keeping into account the recent ruling in Alice, according to which the 'mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention' (on which see, for example, the recent ruling of the Federal Circuit in buySAFE Inc. v Google Inc., commented in an earlier post), the court concluded that '[b]ecause 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'"'. The court also explained that the assessment of novelty should not be conflated with the analysis under s 101:
Defendants argue that a "patentee simpl[y] does not waste the time, money and effort to prosecute a patent application for an invention they casually indicate was known in the art." [...] But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual - and honest - description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One 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.
Plaintiff points to one Defendant’s contemporaneous characterization of Plaintiff’s system as "revolutionary." [...] This argument is unpersuasive in this context for two reasons. First, for purposes of the § 101 inquiry, which is different from the § 103 inquiry, the revolutionary nature of an abstract idea does not weigh in favor of patentability. [...] Second, there has been no showing that the cited praise relates to the claims in all their breadth, rather than to a particular implementation that is not specified by the claims. Thus, the inventor’s specific implementation of the abstract idea represented by the claim may have been of significant value beyond that of the abstract idea itself.In light of the above mentioned reasons, Judge Wu found the claims to be unpatentable under s 101.