Friday, 26 September 2014

Abstract ideas and patentability: what about animating lip synchronization and facial expressions?

© Frank Hellard
Following the ruling of the US Supreme Court in Alice v CLS Bank, several courts all over the US are contributing to refining the approach to the provision of 35 USC s 101, interpreting (sometimes quite creatively) the Supreme Court's teaching. This time, it is the turn of the District Court for the Central District of California, which published its judgment in McRO Inc. (Planet Blue) v Activision Publishing Inc. et al. on Monday. The two consolidated patent infringement cases decided by Judge George H. Wu concerned the alleged infringement of McRO's US Patents No. 6,307,576 and 6,611,278, disclosing methods to animate lip synchronisation and facial expression in animated characters. The court found the patents to be invalid under s 101, holding that the claims were directed to abstract ideas and failed to disclose an 'inventive concept'.

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.


MaxDrei said...

I devised some "rules" for my computer to follow when doing lip synching work and Judge Wu tells me that my claim is bad because I claimed too widely. In my claim, I should have been a tad more specific, he kindly advises.

How many ways are we up to now, to put down an over-broad covetous claim? Not enabled, obvious, that's old hat. But now, new, we have the objection that the claimed subject matter is simply not eligible. We can argue about which one is best suited for application to any particular covetous claim.

Nice though, to have one more tool in the invalidator's toolbox. The secret of getting any job done neatly is always to have the tool which is just right for that job in the box, instantly available for deployment when the need arises.

Stefano Barazza said...

Thanks for your comment, MaxDrei! There is another point that, somehow, troubles me:

'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.'

Obviously, changes in the prevalent interpretation of the law (including patent law) happen, over time (and they are actually quite beneficial, as they render the juridical system dynamic and respondent to social changes). However, how do we reconcile these changes, especially if hard to predict at the time of the filing of a patent application, with the principles of legal certainty and legitimate expectation? What happens to a patent owner who invested time and money in developing an invention and applying for a patent protection that, at the time, he legitimately expected to be validly granted? And, conversely, what happens to a third party that willingly (meaning, without disputing the validity of the patent) infringed what was considered to be, at the time, a valid monopoly?

Of course, I am not suggesting that some monopolies on certain inventions should be upheld (because filed under a different interpretation of the law) and others declared invalid, nor that the patent law should be inelastic for 20 year intervals. However, the problem is there and I suspect that a new stream of case law under Alice will soon bring it to the light. There are few solutions to address it for the past (e.g. the monopoly could be ruled valid until the date of the revirement, but this would raise even worse issues than the one it tries to address); however, if courts (especially the Supreme Court) provided better guidance on how to interpret and apply their groundbreaking decisions, this would at least help restore legal certainty and refine legitimate expectations for the future.

Jurgen Steinlicht said...

That's a very interesting observation! I agree on the difficulty of reconciling this decision with the principles of legal certainty and legitimate expectations and I can certainly think of civil law cases where courts, including the ECJ, have condemned this. It almost sounds as if we're saying "Hey, look, if you're lucky, the law will stay the same, if you aren't, your patent will be invalid" day...if... Not a great way to help inventors do business! I think this is also MaxDrei's concern, after all.

Anonymous said...

Reality is that the law of patents is in the hand of judges, nowadays. The more legislation subsides, the more courts try to fill that gap. The result? This mess.

New Hope said...

Two points regarding Judge Wu's comment: "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"

First, it's false. At least in the US, it's been standard practice for years to avoid making specific statements in your specification about the prior art and the relationship of your invention to the prior art. That's because those admissions will inevitably be used to challenge the validity of your patent.

Second, the possibility of one's patent being invalidated as a result of a change in patent law -- whether judicial or Congressional in nature -- is, and always has been, a known risk. That is particularly true of the so-called software patents that we are seeing being invalidated now which have never been accepted as valid by a very large portion of US society (at least) including many patent attorneys and experts in the field.

There is no "surprise" here. These arguments have been around a long time. Lawyers didn't begin making them in earnest, unfortunately, until the number of effecively unexamined and plainly invalid computer-implemented claims out there went from "pretty bad" to "unbelievably bad".

If "inventors" want to "do business", they are going to need to learn to claim their inventions according to the tried and true principles of patent law that have been with us from the beginning.

Adding "use one more rule" to a set of rules for performing an information processing task automatically is not going to suffice, certainly not when the rule in question is not even recited in the claim, and ideally not ever. Why not ever? Because granting such claims creates infinite opportunies for lawyers to cut off the freedom of computer users to use basic logical principles to create their own useful rules, which those computer users inevitably would do (because they're human beings).

MaxDrei said...

Stefano, I'm not as troubled as you, by the point you make.

As others have suggested, a claim that offers as the invention "do it with some Rules" is a dead man walking. The pre-Alice jurisprudence in any patent jurisdiction was enough to knock it on the head.

Interesting will be when a claim comes along that is directed to subject matter of technical character, that is enabled over its full scope, and is clever rather than obvious. Is that sort of a claim to be struck down as "abstract"? I doubt it.

Stefano Barazza said...

@ MaxDrei
In principle, I certainly share the view that 'a claim that offers as the invention "do it with some Rules" is a dead man walking', and was well before Alice (unless the content of the rules is part of the claim). My concern, however, arises in light of the court's statement quoted in my comment, because the judge seems to implicitly acknowledge that, before Alice (or Mayo), his judgment would have been different.

Abstracting from this specific case, if Alice has really caused such a dramatic shift in the patent-eligibility test (and I am not saying it has), we will face some significant issues: beyond rulings of invalidity unforeseen under the then-prevalent interpretation, we may come across similar cases decided differently (e.g. two invalidity proceedings on the same or similar patents decided differently pre and post Alice; or an infringement case decided in favour of the patent owner before Alice, and a similar proceeding, in relation to the same patent, culminated in a judgment of invalidity of the asserted right after the revirement). In Italy, we experienced a similar situation a few years ago, although in relation to a procedural issue (a consolidated case law on certain requirements related to opposition proceedings brought against a preliminary injunction was suddenly reversed by a decision of the Court of Cassation) - a procedural escamotage allowed courts to attenuate the effects of the unexpected new case law.

Of course, this may well remain a purely theoretical concern, because I don't think that Alice (or Mayo) changed the interpretation of the law in such a dramatic, unforeseen and unexpected way. We will have to wait and see how district courts and the Federal Circuit apply and interpret the Supreme Court's teaching.

MaxDrei said...

Thanks Stefano, as to your point that the outcome would have been different but for Alice is just a consequence of Binding Precedent, stare decisis.

DC judges are obliged to genuflect to the CAFC ie State Street. But the Federal Circuit must defer to the Supreme Court which has now (at long last) pronounced, with Alice, how to understand 35 USC 101.

By the way, "escamotage" great word. I look forward to using it myself.

Anonymous said...

Alice gave 2 limbs to the 101 test. One must contribute something beyond (I) an abstract ideas and (II) a well known idea. Here the invention did not contribute enough over the prior art and so really fell down on the second part of the test, which seems fair. Also I don't think Alice changes the law, but it does stop the usual practice of US Examiners of rewarding patents for simply implement something on a computer claimed using technical language. That practice was clearly getting out of hand and starting to hurt the industry.