from the United States District Court for the Central
District of California in Nos. 2:12-cv-10322-GW-FFM,
2:14-cv-00389-GW-FFM, 2:14-cv-00439-GW-FFM, Judge George H.
Jeffrey A. Lamken, MoloLamken LLP, Washington, DC, argued for
plaintiff-appellant. Also represented by Michael Gregory
Pattillo, Jr.; John Francis Petrsoric, Mark Stewart Raskin,
Robert Alan Whitman, Mishcon de Reya New York LLP, New York,
NY; JohnM. Whealan, Chevy Chase, MD.
NARESH Mehta, Durie Tangri LLP, San Francisco, CA,
representing defendants-appellees Electronic Arts Inc.,
Capcom USA, Inc., Activision Publishing, Inc., Blizzard
Entertainment, Inc., argued for all defendants-appellees.
R. Reines, Weil, Gotshal & Manges LLP, Redwood Shores,
CA, for defendants-appellees Bandai Namco Games America Inc.,
Sega of America, Inc., Disney Interactive Studios, Inc.,
Neversoft Entertainment, Inc., Treyarch Corporation, Atlus
U.S.A., Inc., Infinity Ward, Inc.. LucasArts. a Division of
LucasFilm Entertainment Company Ltd. LLC, Warner Bros.
Interactive Entertainment, a Division of Warner Bros. Home
Trent Webb, Shook, Hardy & Bacon, LLP, Kansas City, MO,
for defendants-appellees Naughty Dog, Inc., Sony Computer
Entertainment America LLC, Sucker Punch Productions, LLC.
Also represented by John D. Garretson, Beth A. Larigan.
J. Ray, Morrison & Foerster LLP, Los Angeles, CA, for
defendants-appellees Konami Digital Entertainment, Inc.,
Square Enix, Inc. Also represented by Benjamin J. Fox.
David Tsu, Spach Capaldi & Waggaman LLP, Newport Beach,
CA, for defendant-appellee Obsidian Entertainment, Inc. Also
represented by THOMAS Walling.
Patrick Weir, Michelman & Robinson, LLP, Irvine, CA, for
defendant-appellee Valve Corporation. Also represented by
Joseph James Mellema; Theodore J. Angelis, David T. McDonald,
K&L Gates LLP, Seattle, WA.
W. KiRSCH, Baker & Hostetler LLP, Cincinnati, OH, for
defendants-appellees Codemasters, Inc., Code-masters USA
Group, Inc., Codemasters Software Inc., The Codemasters
Software Company Limited. Also represented by Jared A.
Brandyberry; Barry Eastburn BRETSCHNEIDER, Washington, DC.
Charles Duan, Public Knowledge, Washington, DC, for amici
curiae Public Knowledge, Electronic Frontier Foundation. Also
represented by Vera Ranieri, Electronic Frontier Foundation,
San Francisco, CA.
John Pincus, Mayer Brown LLP, Washington, DC, for amicus
curiae BSA I The Software Alliance. Also represented by Paul
Reyna, Taranto, and Stoll, Circuit Judges.
appeal is from a grant of judgment on the pleadings under
Fed.R.Civ.P. 12(c) that the asserted claims of U.S. Patent
Nos. 6, 307, 576 ("the '576 patent") and 6,
611, 278 ("the '278 patent") are invalid. The
United States District Court for the Central District of
California found that the asserted claims are directed to
patent-ineligible subject matter and are therefore invalid
under 35 U.S.C. § 101 ("§ 101").
McRO, Inc. v. Sony Computer Entm't Am., LLC, 55
F.Supp.3d 1214 (CD. Cal. 2014) ("Patentability
Op"). We hold that the ordered combination of
claimed steps, using unconventional rules that relate
sub-sequences of phonemes, timings, and morph weight sets, is
not directed to an abstract idea and is therefore
patent-eligible subject matter under § 101. Accordingly,
'576 patent and the '278 patent were both issued to
Maury Rosenfeld and are both titled "Method for
Automatically Animating Lip Synchronization and Facial
Expression of Animated Characters." The '278 patent
is a continuation of the '576 patent and shares the same
Admitted Prior Art
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. See generally
'576 patent col. 11. 14 to col. 2 1. 37. To animate the
character as it speaks, the method morphs the character's
expression between the models. The "neutral model"
is the 3-D representation of the resting, neutral facial
expression of an animated character. The other models of the
character's face are known as "morph targets, "
and each one represents that face as it pronounces a phoneme,
i.e., makes a certain sound. This visual representation of
the character's face making a sound is also called a
"viseme." McRO Br. 7. An example morph target for
the "ahh" phoneme is shown below. Each of these
morph targets and the neutral model has identified points,
called "vertices, " in certain places on the face.
The set of differences in the location of these vertices (and
the corresponding point on the face) between the neutral
model and the morph target form a "delta set" of
vectors representing the change in location of the vertices
between the two models. For each morph target, there is a
corresponding delta set consisting of the vectors by which
the vertices on that morph target differ from the neutral
expressions are described as a function of the amount each
morph target, and its corresponding delta set, is applied to
modify the character model. "In producing animation
products, a value usually from 0 to 1 is assigned to each
delta set by the animator and the value is called the
'morph weight.'" '576 patent col. 111.
63-65. The set of morph weights for all the delta sets is
called a "morph weight set." The neutral model is
represented by a morph weight set with all morph weights of
0. A desired morph target is represented by the morph weight
of 1 for that morph target's delta set and a morph weight
of 0 for all other delta sets.
power of this prior art animation method is in generating
intermediate faces by using morph weights between 0 and 1 to
blend together multiple morph targets. For example, the face
halfway between the neutral model and the "oh" face
can be expressed simply by setting the "oh" morph
weight to 0.5, i.e., 50%, as shown below at the left. The
model halfway to the next syllable, in turn, could be
expressed by setting both the "oh" morph weight and
that for the next syllable each to 0.5, creating a blend of
those two delta sets. McRO Br. 11; see also
Defs.' Br. 8-11. For each morph weight set, the resulting
facial expression is calculated by determining the
displacement of each vertex from the neutral model as the
product of the morph weights in the morph weight set and the
corresponding delta sets for the morph targets. '576
patent col. 2 ll. 2-15.
of the character and lip synchronization preexisting the
invention was generally accomplished by an animator with the
assistance of a computer. Animators used "a
'keyframe' approach, where the artist set the
appropriate [morph] weights at certain important times
('keyframes')" instead of at every frame.
'576 patent col. 2 ll. 31-33. Animators knew what phoneme
a character pronounced at a given time from a "time
aligned phonetic transcription" ("timed
transcript"). This listed the "occurrence in
time" of each phoneme the character pronounced, as shown
in the example below. Id. at col. 1 ll. 32-34.
using a computer, manually determined the appropriate morph
weight sets for each keyframe based on the phoneme timings in
the timed transcript. "For each keyframe, the artist
would look at the screen and, relying on her judgment,
manipulate the character model until it looked right-a visual
and subjective process." McRO Reply Br. 4 (emphasis
removed); Defs.' Br. 10 ("Using the [timed
transcript], the animator would decide what the animated face
should look like at key points in time between the start and
end times, and then 'draw' the face at those
times."). 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. A computer program would then interpolate between
the keyframes set by the animator, creating the intermediate
frames by determining the appropriate morph weight sets at
intermediate points in time simply based on continuously
transitioning between the keyframes. '576 patent col. 2
patents criticize the preexisting keyframe approach as
"very tedious and time consuming, as well as inaccurate
due to the large number of keyframes necessary to depict
speech." '576 patent col. 2 ll. 35-37. They suggest
present invention overcomes many of the deficiencies of the
prior art and obtains its objectives by providing an
integrated method embodied in computer software for use with
a computer for the rapid, efficient lip synchronization and
manipulation of character facial expressions, thereby
allowing for rapid, creative, ...