Another fun case dealing with Alice Corp. and 35 USC 101
This is case that deals with 35 USC 101, where the judge relied on Alice Corp to invalidate all of the plaintiff’s claims. The inventions at issue in this case are directed towards automatically synchronizing lip movements of cartoon characters. See US patent Numbers 6,307,575 and 6,611,278. A representative claim of the ‘278 patent is reproduced below
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
Historically to create lip synchronization on cartoons, graphic designs would assign different weights from 0-1 of how the lips should look based on timed phonemes. For example, a hard “E” (smiling would be 0) and an “oh” sound would be 1. The animators would assign different weights at different frames, and then the rending software would extrapolate the data between the frames to create the lip movements of the cartoon.
Essentially, the two noted patents are directed towards creating a set of rules to define the weights (kinda like what was previously being done by hand), automatically determining the sequencing of the new phonemes based on an audio sequence (the new part), and applying the set of rules to the determined sequence to create the animated characters lips.
Applying Alice Corp. to the fact in this case, the Judge seemed to feel for the patent owners, stating that:
They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.
Accordingly, it seemed that the Judge in this case was going to validate the patents because they cover essentially vary narrow patent scope. Further, the Judge indicated that others could continue to implement what they were previously doing, by having users enter the weights.
However, the Judge stated that Alice Corp. was not viewed in a vacuum, and analyzed that Alice Corp. essentially stated that no “abstract idea” could be patented. The Judge here approach was to 1) identify the point of novelty for the claimed invention, 2) determine if the point of novelty for the claimed invention was an abstract idea. Using this test, the judge found that the point of novelty was applying the set of rules (abstract idea) to the determined phonemes in the frames. Specifically, the judge stated that this point of novelty was an abstract idea because it would preempt the field of automatic lip synchronization for computer-generated 3D animation using a rule based morph target approach.
I would not be surprised if this case gets overturned on appeal (or a new more clear law is created). However, what I would recommend to clients going forward with software related patents is to make sure what is being done is more than just an automated approach, or could not be automated. In a case like this, if the claims included a specific example of how the weights were based on the phenomes, the case may have turned out different. However, it seems like post Alice Corps. alot (if not all) software related patents could be invalided. That is one reason why I think this case will be overturned on appeal, or will require congress to establish new laws.
I will be interested to see if the patent office issue new examination guidelines for a post Alice Corps. world.