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Mcro, Inc. V. Bandai Namco Games America Inc., 837 F.3D 1299 (Fed

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Mcro, Inc. V. Bandai Namco Games America Inc., 837 F.3D 1299 (Fed Case: 19-1557 Document: 88 Page: 1 Filed: 05/20/2020 United States Court of Appeals for the Federal Circuit ______________________ MCRO, INC., DBA PLANET BLUE, Plaintiff-Appellant v. BANDAI NAMCO GAMES AMERICA INC., TREYARCH CORPORATION, Defendants SONY COMPUTER ENTERTAINMENT AMERICA LLC, SUCKER PUNCH PRODUCTIONS, LLC, INFINITY WARD, INC., LUCASARTS, A DIVISION OF LUCASFILM ENTERTAINMENT COMPANY LTD. LLC, ACTIVISION PUBLISHING, INC., BLIZZARD ENTERTAINMENT, INC., NAUGHTY DOG, INC., ELECTRONIC ARTS, INC., DISNEY INTERACTIVE STUDIOS, INC., SQUARE ENIX, INC., Defendants-Appellees ______________________ 2019-1557 ______________________ Appeal from the United States District Court for the Central District of California in Nos. 2:12-cv-10322-GW- FFM, 2:12-cv-10329-GW-FFM, 2:12-cv-10333-GW-FFM, 2:12-cv-10335-GW-FFM, 2:12-cv-10338-GW-FFM, 2:14-cv- 00332-GW-FFM, 2:14-cv-00336-GW-FFM, 2:14-cv-00352- GW-FFM, 2:14-cv-00358-GW-FFM, 2:14-cv-00383-GW- FFM, Judge George H. Wu. Case: 19-1557 Document: 88 Page: 2 Filed: 05/20/2020 2 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA ______________________ Decided: May 20, 2020 ______________________ MARK STEWART RASKIN, King & Wood Mallesons LLP, New York, NY, for plaintiff-appellant. Also represented by MICHAEL DEVINCENZO, JOHN FRANCIS PETRSORIC, ROBERT WHITMAN; MARC AARON FENSTER, PAUL ANTHONY KROEGER, Russ August & Kabat, Los Angeles, CA. JOHN D. GARRETSON, Shook, Hardy & Bacon, LLP, Kansas City, MO, for defendants-appellees Sony Computer Entertainment America LLC, Sucker Punch Productions, LLC, Naughty Dog, Inc. Also represented by BETH A. LARIGAN. SONAL NARESH MEHTA, Wilmer Cutler Pickering Hale and Dorr LLP, Palo Alto, CA, for defendants-appellees In- finity Ward, Inc., Activision Publishing, Inc., Blizzard En- tertainment, Inc., Electronic Arts, Inc. EVAN FINKEL, Pillsbury Winthrop Shaw Pittman LLP, Los Angeles, CA, for defendants-appellees LucasArts, Dis- ney Interactive Studios, Inc. Also represented by JAMES CHANG. BENJAMIN J. FOX, Morrison & Foerster LLP, Los Ange- les, CA, for defendant-appellee Square Enix, Inc. Also rep- resented by WENDY J. RAY. ______________________ Before REYNA, MAYER, and TARANTO, Circuit Judges. TARANTO, Circuit Judge. McRO, Inc., d/b/a Planet Blue (McRO) brought this case against more than a dozen video game developers (the Developers), alleging that the Developers infringed three Case: 19-1557 Document: 88 Page: 3 Filed: 05/20/2020 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 3 method claims of U.S. Patent No. 6,611,278, owned by McRO. The district court held the claims invalid for ineli- gibility under 35 U.S.C. § 101, but we reversed that holding in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (McRO I). On remand, the dis- trict court ultimately held that the Developers were enti- tled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specifica- tion fails to enable the full scope of the claims. McRO appeals. We affirm the judgment of noninfringe- ment. We vacate the judgment of invalidity and remand for the district court to consider any appropriate further proceedings in light of, among other things, the Developers’ offer to withdraw their counterclaims without prejudice. See ECF No. 86. I A McRO owns U.S. Patent No. 6,611,278, which describes and claims a method for automatically generating anima- tions, with a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: “phonemes” and “morph targets.” A “phoneme,” the patent explains, is “the smallest unit of speech, and corresponds to a single sound.” ’278 patent, col. 1, lines 38–40. A “morph target” is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth posi- tions, each corresponding to a different phoneme or set of phonemes.” Id., col. 1, lines 48–53. The patent describes specifying a model by identifying groups of vertices placed in particular positions. In a “typ- ical case,” “[e]ach morph target has the same topology as the neutral model, the same number of vertices, and each vertex on each model logically corresponds to a vertex on Case: 19-1557 Document: 88 Page: 4 Filed: 05/20/2020 4 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA each other model.” Id., col. 1, lines 54–59. Because of that precise correspondence, each morph target can be defined as a set of “deltas,” each delta a vertex-specific vector: there is a “vector from each vertex n on the reference to each ver- tex n on each morph target,” and that vector is the “delta” for that vertex. Id., col. 1, lines 60–63. To animate a particular facial expression, an artist de- fines a plurality of morph targets (with corresponding delta sets) and assigns a scalar “morph weight”—“a value usu- ally from 0 to 1”—to each target. Id., col. 1, lines 65–67. Next, the artist chooses a vertex on the reference model and adds the “corresponding delta set’s vertex multiplied by the scalar morph weight.” Id., col. 2, lines 1–3. Repeat- ing this vertex-specific process for each morph target being used to create the desired animation, the artist sums the resulting vectors and proceeds to the next reference-model vertex. See id., col. 2, lines 4–5. The specification summa- rizes this process with a formula, stating that for “each ver- tex v in the neutral model”: J.A. 15 (cleaning up ’278 patent, col. 2, line 6).1 1 In the sigma (summation) term of the formula, there are n morph targets (x = 1 through n) that contribute to the ultimate result. For each morph target x, its delta (a vector) for the chosen vertex—i.e., the particular vertex’s vector within |delta setx|—is multiplied by the scalar morph weight for that morph target. The n resulting vec- tors (for x = 1 through n) are added in the ordinary way for vectors, i.e., term by term in the ordered-sequence repre- sentation. Then the sum, in its ordered-sequence represen- tation, is added to the ordered-sequence representation of the corresponding vertex of the neutral model. Case: 19-1557 Document: 88 Page: 5 Filed: 05/20/2020 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA 5 Although prior-art methods used morph weight sets, the patent asserts, artists using those methods had to “set all of these weights at each frame to an appropriate value.” ’278 patent, col. 2, lines 26–27. Accordingly, those methods were time-consuming and laborious, and artists therefore sought to reduce the required work with a “‘keyframe’ ap- proach, where the artist [would] set[] the appropriate weights at certain important times (‘keyframes’) and a pro- gram [would] interpolate[] each of the channels at each frame.” Id., col. 2, lines 28–31. But the keyframe approach itself was “very tedious and time consuming, as well as in- accurate.” Id., col. 2, lines 31–34. By contrast, the ’278 patent teaches a method of “auto- matically” generating animations using morph weight sets. In particular, it describes a method in which a time- marked transcript of recorded text denoting each pho- neme—a “time aligned phonetic transcription” (TAPT)—is received by a computer system. Id., col. 2, line 64, through col. 3, line 5. The system takes this input and applies “a set of rules that determine the system[’]s output compris- ing a stream or streams of morph weight sets.” Id., col. 3, lines 2–5. The specification describes an exemplary set of rules, with six distinct morph targets, for animating the word “hello.” See id., col. 7, line 33, through col. 8, line 55. It further provides several “illustrative examples of other rules which may be used.” See id., col. 9, line 32, through col. 11, line 11. McRO asserts claims 1, 4, and 13 of its patent. Claim 1 is representative for purposes of the issues on appeal: 1. A method for automatically animating lip syn- chronization and facial expression of three-dimen- sional 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; Case: 19-1557 Document: 88 Page: 6 Filed: 05/20/2020 6 MCRO, INC. v. BANDAI NAMCO GAMES AMERICA obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional charac- ters; 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. Id., col. 11, lines 44–59. B In 2012, McRO sued the Developers for patent infringe- ment based on the Developers’ production and sale of video games that used one of two third-party software applica- tions—FaceFX or Annosoft—to model facial animations. Both FaceFX and Annosoft use a technique called “bones animation,” which attaches “special control objects (called ‘bones’)” to multiple vertices on a three-dimensional image (i.e., an image that looks three-dimensional). J.A. 4649. Each bone stores information, whether as a 4x4 matrix or as an equivalent 16-term vector, that acts as a “transform” to direct the attached vertices to move to certain positions. J.A. 4650. This movement, which can be complex, gener- ally combines “simpler linear transformations such as ro- tations, translations, [or] scales.” Id.
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