We are excited to announce that attorney and Patent 213 blog editor, Nicholas J. Landau, was included in the 2021 edition of The Best Lawyers in America® for Patent Law. Firmwide, seven patent attorneys at Bradley are listed by Best Lawyers. Several of our patent law attorneys also author blog content for Patent 213.

A member of the firm’s Intellectual Property Practice Group and contributing author and editor of the Patent 213 blog, Mr. Landau advises clients in the procurement, protection and litigation of all forms of intellectual property, including patents, trademarks and trade secrets. He is particularly experienced in patent prosecution, having drafted over 150 patent applications in numerous areas of technology. His patent prosecution experience includes multiple successful ex parte appeals. Mr. Landau’s practice also includes the management of large international patent portfolios and coordinating intellectual property strategy at the multinational level. He advises clients on their freedom to operate new products and services in light of the intellectual property rights of others, and how to avoid liability for infringing others’ rights.

Following are the other Bradley attorneys selected by Best Lawyers as “Lawyer of the Year” for Patent Law as well as their additional recognized practice areas:

  • Jeffrey D. Dyess was named Antitrust Law “Lawyer of the Year” in Birmingham. He also is listed for Commercial Litigation, Litigation – Intellectual Property, Litigation – Patent.
  • Stephen H. Hall was named Litigation – Intellectual Property “Lawyer of the Year” in Huntsville. He also is listed for Litigation – Patent, Patent Law and Trademark Law.

The other patent attorneys listed as 2021 Best Lawyers are:

  • Frank M. Caprio (Copyright Law, Litigation – Intellectual Property, Litigation – Patent, Patent Law, Trade Secrets Law, Trademark Law)
  • Angela Holt (Litigation – Intellectual Property, Litigation – Patent)
  • Mark D. Strachan (Litigation – Patent)
  • Phillip E. Walker (Litigation – Intellectual Property, Litigation – Patent, Patent Law, Trademark Law)

We are excited for our attorneys and Patent 213 blog authors on their achievements!

“Abstract Assertion of Breadth” Does Not Prove Non-EnablementMcRO, Inc., owns a U.S. patent on a method for animating faces in video games. Back in 2016, when McRO sued a number of video-game developers for patent infringement, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the patent as subject-matter eligible. Now, the CAFC has again upheld the patent, this time against a challenge of non-enablement.

Patents must enable the full scope of claims

At their core, patents are a quid pro quo bargain. In return for patent rights, the inventor must teach the public how to practice the invention. The standard is: “After reading this disclosure, would a person skilled in the art know — without undue experimentation — how to practice the invention?” This is stated in Section 112 as the enablement requirement. If the written disclosure does not fully enable the claimed invention, then the inventor has not held up their end of the bargain and the patent is invalid. One ready way of attacking a patent as non-enabling is to point to an embodiment of the claimed invention that would not be understood from the disclosure. For example, if a patent claims pens of all colors, but only teaches how to make blue pens, then the patent is non-enabling and therefore invalid.

To show non-enablement, the defendants pointed to two methods of animation that were not fully enabled by the patent’s specification. But when the court found that neither method was infringing — and thus that both methods were outside the scope of the claims — the defendants offered no other concrete examples. They were left with an “abstract assertion” that the claims covered non-enabled methods. The CAFC held that an “abstract assertion of breadth” will not support a claim of non-enablement.

Animating speech in video games

When video-game characters speak, they sometimes look like sock puppets — the mouth opens and closes, the head might turn or nod. To realistically animate speech, designers must match the mouth shape to the character’s words and the facial expression to their emotions. Manually drawing that, frame by frame, takes too long. McRO’s patent covers a method for automatically generating the lip movements and facial expressions of speaking characters.

The method works by first associating each possible single sound (a phoneme) with one mouth position (a morph target). The patent describes specifying the mouth model by identifying vertices in particular positions. Then each morph target is defined as the set of vectors which describe the displacement of each vertex from its position on a neutral, reference mouth. Each facial expression is described by a blending of multiple morph targets in specific proportions, known as a “morph weight set.” This much of the method was known in the prior art.

The novelty of McRO’s patent is in automatically generating a stream of morph weight sets from a time-marked transcript of recorded phonemes. Before, artists would have had to assign the morph weight sets at each frame. But McRO’s patent describes using a set of rules to automatically generate the stream of morph weight sets, given only a time-aligned phonetic transcription.

The ’278 Patent

At issue were three method claims of U.S. Patent No. 6,611,278, of which claim 1 is representative:

  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 times 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.

Under the CAFC’s construction in 2016, in the field of rules-based animation, the claims of the ’278 Patent are limited by defining morph weight sets as a function of the timing of phoneme subsequences. In the specification, morph weight set is defined in terms of a “delta set,” i.e., the set of displacement “vectors” of each vertex from the reference mouth. Critically, the CAFC agreed with the district court that these vectors must be three-dimensional.

Bones and BALDI

The defendant developers use “bones animation” to animate faces. As in the ’278 Patent, in bones animation, models are specified by identifying vertices and transformations of their positions. But in bones animation, the transformations are encoded as a four-by-four matrix defining movements which can include not only translations, but also rotations and scales. This is in contrast to the three-dimensional displacement vectors to which the ’278 Patent was limited by the court. Consequently, the district court had held that developers’ use of bones animation did not infringe McRO’s patent.

A second animation method the court calls “the BALDI system.” According to the district court, the BALDI system uses an interlocking set of mathematical equations that balance the influence of different proximate phonemes on various aspects of the model’s facial expression. As with bones animation, BALDI’s equations do not represent displacements of vertices by simple three-dimensional vectors.

Both bones and BALDI animation, then, do not infringe the claims of the ’278 Patent. The district court so held, and the CAFC agreed.

Abstract assertion of breadth

In addition to its finding of non-infringement, the district court had also invalidated the ’278 Patent for non-enablement. Section 112 requires that a patent enable a person skilled in the art to practice the full scope of the claimed invention. Importantly, a patent need only enable the claimed invention, not matter outside the claims. So the question of enablement depends on an interpretation of the claims — what they cover and what they don’t.

Following this logic, a finding of non-enablement requires “concrete identification of at least some embodiment or embodiments asserted not to be enabled.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The CAFC cited a number of cases to emphasize that the identification must be concrete, not abstract. To prove non-enablement, it is not enough to abstractly explain that that the claims might cover more than the disclosure enables. Instead, the courts will require a concrete example.

The developers pointed to two such concrete examples — bones animation and BALDI animation. They claimed that neither method was enabled by the specification. For example, each method uses transformations of more dimensions that the 3D vectors disclosed by the ’278 Patent. The developers attempted to show that the two methods were within the scope of the claims but were not enabled. As such, the ’278 Patent would not have enabled the full scope of the claimed invention and would therefore be invalid.

However, as discussed above, the developers had also argued that these methods were non-infringing — and the court agreed! The court interpreted the claims as reading on vectors only of three dimensions, leaving bones and BALDI outside the claims’ scope. This also removed them from the scope of methods which the ’278 Patent could be required to enable.

Without the bones and BALDI examples, the developers were left only with an “abstract assertion” that the claims exceeded the enabled scope. In particular, they focused on the “first set of rules” limitation in claim 1. This is conceivably broad, and the district court had found that it was broader than anything disclosed in the specification. The CAFC disagreed and narrowly construed the limitation according to the specification. It went even further and found that the “first set of rules” limitation would have been well known in the art, whether the ’278 Patent disclosed it or not. Finally, without any concrete example of a non-enabled embodiment, the developers’ “abstract assertion of [the] breadth” of the claims could not carry their burden under the Wands.

Practice points

This case is a good example of the interplay between enablement and claim interpretation. To win on non-infringement, the developers had argued for a narrow reading of the claims. But the narrow claims were fully enabled. Had they lost on infringement, they might have won on enablement. An interesting tension in itself, patent litigators can learn an important lesson from this case. Like Hercules at the crossroads, choose carefully.

Be careful how you choose your arguments. Lawyers are accustomed to arguing in the alternative, offering a number of arguments — even taking inconsistent positions — in the hope that one will carry the day. But if you aren’t careful, a win could lead to a loss. Certainly, the defendants were happy to get a judgment of non-infringement, so that they can keep doing what they do. But they likely would also have like a judgment of invalidity, so that they wouldn’t have to worry about the ’278 Patent in the future.

This might have been avoided with surgically precise claim constructions. The developers did not actually practice the BALDI method, only the bones method. Had they been able to get a claim interpretation that read on BALDI but not bones, the developers could have used BALDI as a concrete example for meeting their burden under Wands. They’d have gotten two victories for the price of one.

An Early Out Under § 101 Based on Claimed Long-standing Commercial PracticesLate last week, the U.S. Court of Appeals for the Federal Circuit delivered ShoppersChoice.com the affirmation it ordered in Electronic Communication Technologies, LLC (ECT) v. ShoppersChoice.com, LLC. In doing so, the court supplied accused infringers with a helpful example of what may be appropriate for early dismissal under 35 U.S.C. § 101. In addition, this opinion discusses the ineligibility of claims directed at long-standing commercial practices.

ECT brought suit in the Southern District of Florida alleging that ShoppersChoice’s order and shipping confirmation systems infringed claim 11 of U.S. Patent No. 9,373,261. At a high level, the technology in this case is centered around an automated notification system that provides advance notice to customers about the pickup or delivery of a good or service. More specifically, the single asserted claim reads as follows:

An automated notification system, comprising:

one or more transceivers designed to communicate data;

one or more memories;

one or more processors; and

computer program code stored in the one or more memories and executed by the one or more processors, the computer program code comprising:

code that enables a first party associated with a personal communication device (PCD) to input or select authentication information for use in connection with a subsequent notification communication session involving advance notice of a delivery or pickup of a good or service at a stop location by a mobile thing (MT);

code that causes storage of the authentication information;

code that monitors location or travel information in connection with the MT;

code that causes initiation of the notification communication session to the PCD with the one or more transceivers, in advance of arrival of the MT at the stop location, based at least in part upon the location or travel information associated with the MT;

code that, during the notification communication session, provides the authentication information to the PCD that indicates to the first party that the notification communication session was initiated by an authorized source; and

code that, during the notification communication session, enables the first party to select whether or not to engage in a communication session with a second party having access to particulars of the pickup or delivery.

ShoppersChoice moved for judgment on the pleadings of invalidity under 35 U.S.C. § 101. Without engaging in any claim construction, the district court granted the motion when it held that the single asserted claim is abstract. In fact, while the district court conceded that the claim did include certain features that “add a degree of particularity to the invention,” such as the use of authentication information and the option to communicate with the pickup or delivery representative, it found that the “concept embodied by the invention is only the abstract idea of notifying a party of the travel status of a good or service.”

On appeal, ECT argued that the enhanced security protocols of its delivery notification system rendered the claim eligible under 35 U.S.C. § 101. In an effort to answer the question posed in Step 1 of the Alice/Mayo framework – i.e., are the claims directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon – the court first noted that the asserted claim recites a list of equipment – i.e., “one or more transceivers designed to communicate data;” “one or more memories;” “one or more processors;” and computer program code. The code (1) enables a first party to input authentication information; (2) stores the authentication information; (3) monitors the location of a mobile thing; (4) sends notification to the first party in advance of arrival of the mobile thing; (5) sends the authentication information to the first party; and (6) enables the party to select whether or not to communicate with a second party about the status of the mobile thing. Then, the court determined that functions (3) and (4) merely feature a fundamental business practice of letting a customer know in advance of the readiness for pickup or delivery. In short, the court found that the idea of providing advance notification of the pickup or delivery of a mobile thing was a long-standing commercial practice and, as such, abstract. Moreover, the added “security” measures in the claim – i.e., functions (1)-(2) and (5)-(6) – were also deemed to be abstract and amounting “to nothing more than gathering, storing, and transmitting information.” Indeed, the court distinguished the security measures in claim 11 of the ʼ261 patent from the improvements in computer capabilities that were held in previous decisions to be non-abstract under Step 1 of the Alice/Mayo framework.

With a determination under Step 1 that claim 11 is abstract, the court engaged in Step 2 of the Alice/Mayo framework to determine whether the claim contains an “inventive concept” to transform the claimed abstract idea into patent-eligible subject matter. Finding that the features in claim 11 are merely well understood, routine, and require nothing unconventional to apply the abstract idea, the court concluded that the claim was not saved under Step 2. The Federal Circuit reminded ECT (and us) that patent eligibility has nothing to do with the number of words in the claims, but rather focuses on the content therein. Moreover, the court noted that enablement of a claim does not in any way ensure that the claim is subject matter eligible under § 101.

As to ECT’s more creative argument that its good faith request after receiving a Notice of Allowance that the USPTO confirm § 101 eligibility — coupled with the expedited allowance — weighs in favor of eligibility, the Federal Circuit was unimpressed. Unfortunately for ECT, a patentee’s diligence and/or good faith during prosecution does not protect a claim from an Article III patent eligibility review. ECT also failed to convince the appellate panel that the district court erred in finding the asserted claim ineligible without engaging in claim construction. Indeed, without an argument from ECT that any specific term required construction, the court had a hard time buying into ECT’s argument. In fact, as noted by the court, it is appropriate to determine patent ineligibility under § 101 at the pleadings stage where the patentee has provided no proposed construction of any terms or proposed expert testimony that would change the § 101 analysis.

It seems that ECT might have fared better (at least at this early stage) if it had at least attempted to advance a specific and detailed claim construction argument in its opposition to ShoppersChoice’s motion. In fact, a number of denials of § 101 motions to dismiss based on patent eligibility have been based on the determination that claim construction is necessary to resolve the § 101 challenge. Nevertheless, this opinion provides an example of a successful early challenge under § 101 by an accused infringer. Because claim construction and discovery are costly phases of patent litigation, this type of early case-dispositive motion may allow a defendant to exit the suit without a significant financial hit.

As an aside, ShoppersChoice also recently argued (via teleconference) to the appellate court that the district court abused its discretion by not classifying this case as exceptional under 35 U.S.C. § 285 and not awarding attorneys’ fees. ShoppersChoice had three main arguments: (1) ECT improperly attempted to enforce the ’261 patent, which belongs to a family in which three patents have previously been invalidated; (2) ECT could not describe any claimed inventive concept to the district court; and (3) ECT has a prolific history of bringing allegedly nuisance infringement claims against multiple defendants. ECT countered that ShoppersChoice relies on patents that were not in the suit and non-precedential cases (with respect to ECT’s prior litigations). We will have to wait and see what the Federal Circuit decides, but it is not likely that the appellate court will disturb the district court’s order.