INTRODUCTION

On September 13, 2016, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided another case, McRO (d.b.a. Planet Blue) v. Bandai Namco Games (“Planet Blue”) involving two software patents covering the same technology. It is another post-Alice case in a series of cases signaling that the Federal Circuit is determined to continue to narrow the scope of Alice (Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). This is good news for inventors, patent applicants and patent owners in the software industry. Particular to the Planet Blue case is what appears to be an opening for software inventions which do not necessarily improve the computer technology “itself,” but instead improve other technological processes, for example, by automating them using software.

BACKGROUND

First, on December 5, 2014, in DDR Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that “systems and methods of generating a composite [hybrid] web page that combines certain visual elements of a “host” website with content of a third-party merchant” were not an abstract idea and were thus patentable subject matter. That was because the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”

Next, on May 12, 2016, in ENFISH, LLC v. MICROSOFT Corp. et al., the Federal Circuit did not find a computer database model using a “self-referential table” an abstract idea, and thus, it was patentable subject matter. The court concluded that the disputed claims were “directed to a specific improvement to the way computers operate, embodied in the self-referential table.”

On June 27, 2016, In BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC, the Federal Circuit decided that it was not an abstract idea to provide a process for filtering content over the Internet by placing the filtering software on the server instead of the client computer and allowing customization by each user, after login, of the filtering software. The court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology.

It should be noted that all of the above cases appear to have a common thread, that is improvement in computer technology.

PLANET BLUE CASE

The Planet Blue case involved two patents directed to 3-D animation technology using software and computers. The patents relate to automating part of a preexisting 3-D animation method. “As explained in the background of the patents, the admitted prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. To animate the character as it speaks, the [prior art] method morphs the character’s expression between the models.” Using the prior art method, animators, using a computer, manually determined the appropriate morph weight sets for each of the established key-frames based on the phoneme timings in a timed transcript. “Because the pronounced phoneme and drawn keyframe corresponded in time, this prior art process synchronized the lips and facial expression of the 3-D character.”

The claimed invention automates a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes, by using rules that are applied to the timed transcript to determine the morph weight outputs. The claimed process produces more accurate and realistic lip synchronization and facial expressions in animated characters.

The Federal Circuit agreed with the patent owner and analogize this case with Diamond v. Diehr, 450 U.S. 175 (1981) (“Diehr”), finding that the algorithm and rules used improve an existing technological process (3-D animation technology), and that the rules used are specific enough to “prevent preemptionof all processes for achieving automated lip-synchronization of 3-D characters.” As such, the claimed process was not an abstract idea; it was patentable subject matter.

CONCLUSION

The Planet Blue case appears to be the first post- Alice case in which non-computer technology improving software was found to overcome the abstract idea challenge. The key seems to be to be able to show that (1) some technology is improved and (2) that preemption of all processes for achieving the same result is prevented by the way the patent claims are drafted.