McRO v. Bandai Namco Games Am. (McRO II)
837 F.3d 1299 (2020)
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Rule of Law:
To invalidate a patent for lack of enablement under 35 U.S.C. § 112, the challenger must provide clear and convincing evidence identifying specific embodiments that fall within the scope of the claims but are not taught by the specification; abstract assertions of breadth are insufficient.
Facts:
- McRO, Inc. owned U.S. Patent No. 6,611,278, which described a method for automatically animating lip synchronization and facial expressions for 3D characters.
- The patented method uses 'morph targets' (models of mouth positions) and applies 'morph weight sets' based on rules corresponding to a timed sequence of phonemes (units of speech).
- The patent specification defines a 'delta set,' a key component of the invention, as the set of 'vectors' from each vertex on a neutral model to each vertex on a morph target model.
- A group of video game developers, including Bandai Namco and Sony (the Developers), used third-party software to create facial animations in their games.
- This software employed a technique called 'bones animation,' which attaches control objects ('bones') to vertices and uses transforms, stored as 4x4 matrices or 16-term vectors, to direct the movement of those vertices.
Procedural Posture:
- McRO, Inc. sued the Developers in the U.S. District Court for the Central District of California for patent infringement.
- The district court initially granted judgment on the pleadings for the Developers, finding the patent invalid under 35 U.S.C. § 101.
- McRO appealed to the U.S. Court of Appeals for the Federal Circuit, which reversed the § 101 invalidity finding and remanded the case.
- On remand, the Developers moved for summary judgment of non-infringement and for invalidity due to lack of enablement under 35 U.S.C. § 112.
- The district court granted summary judgment for the Developers on both grounds and entered a final judgment.
- McRO, as appellant, appealed the summary judgment rulings to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
1. In the context of a patent for 3D character animation, is the claim term 'vector' limited to its three-dimensional geometric meaning, or does it encompass a broader mathematical meaning of any ordered list of numbers? 2. To succeed on a summary judgment motion for invalidity due to lack of enablement, must the challenger identify specific, concrete examples of claimed but non-enabled embodiments?
Opinions:
Majority - Taranto, Circuit Judge
1. Yes, the claim term 'vector' is limited to its three-dimensional geometric meaning. The court's reasoning for this narrow claim construction is based entirely on the intrinsic evidence of the patent itself. The specification's description of a 'vector from each vertex n on the reference to each vertex n on each morph target,' combined with the spatial context of animating 3D characters and a mathematical formula that presupposes the addition of 3D vectors, all compel the conclusion that the patentee used the term in its specific, geometric sense. The broader mathematical definition is inappropriate in the context of this patent. As it is undisputed that the Developers' 'bones animation' system does not use three-dimensional geometric vectors, it does not infringe the patent. 2. Yes, a challenger must identify specific examples of claimed but non-enabled embodiments. The court found that the Developers failed to meet their burden of proving invalidity by clear and convincing evidence because they did not identify any technology that both fell within the scope of McRO's claims and was not enabled by the patent's specification. The Developers' primary examples, 'bones animation' and the 'BALDI system,' were deemed irrelevant to the enablement analysis because the court's claim construction placed them outside the scope of the claims. Without concrete examples, the Developers' argument was merely an abstract and conclusory assertion that the claims were too broad, which is insufficient to support a summary judgment of invalidity.
Analysis:
This decision reinforces the principle from Phillips v. AWH Corp. that the patent specification is the primary tool for claim construction, capable of narrowing a term's ordinary meaning based on context. More significantly, it clarifies the evidentiary burden for an enablement challenge, making it more difficult for accused infringers to succeed on summary judgment. The ruling establishes that a defendant must concretely identify an embodiment that is both infringing and not enabled, preventing them from using non-infringing alternatives as evidence of a patent's undue breadth and creating a potential 'catch-22' for litigants arguing both non-infringement and non-enablement based on the same technology.
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