Fed Circuit reverses McRO animation patent ruling again
A long-running software patent validity dispute, involving some of the world’s biggest video game makers, has taken another twist at the US Court of Appeals for the Federal Circuit.
The Federal Circuit yesterday, May 20, ruled that a dozen video game developers, including Bandai Namco (“Pac-Man”) and Blizzard (“World of Warcraft”), did not infringe an animation patent owned by McRO.
But the court also reversed, for the second time, a California federal court’s decision that the McRO patent was invalid.
The case had previously taken on significance as an early test of the US Supreme Court’s famous 2014 Alice decision on patent eligibility.
The US District Court for the Central District of California struck out the McRO patent, which covers methods of animating facial expressions, as being ineligible under the US Code’s section 101 in the wake of Alice.
But this decision was reversed by the Federal Circuit in 2016, which found that the claimed method of animating lip synchronization and facial expressions did not cover patent-ineligible subject matter under section 101.
The Federal Circuit sent the case back to the California court, which subsequently granted the video game makers summary judgment that they did not infringe the patent.
But the California court also invalidated the patent again, this time on the grounds of ‘enablement’—whether the patent sufficiently described its invention, and ‘enabled’ it to be reproduced by a person of ordinary skill in the art.
McRO appealed once more to the Federal Circuit, which yesterday affirmed the finding of noninfringement, but reversed the California court’s validity decision.
According to the Federal Circuit, the video game developers had not met the high burden of proof required for invalidating a patent for lack of enablement.
“We agree with McRO that the Developers failed to identify with particularity any method of animation that falls within the scope of claim 1 and is not enabled,” wrote Circuit Judge Richard Taranto on behalf of the court.
“Without any specific examples, the district court’s reasoning is too abstract, too conclusory, to support summary judgment,” Taranto added.
According to the Federal Circuit, the video game developers had merely stated their conclusion that the patent claims were too broad and not clearly specified.
“The observations do not justify the conclusion with any concrete support,” Taranto wrote.
The Federal Circuit remanded the case back to the California district court, but rejected a request from McRO to assign it to a different district judge.
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