Overbroad Claiming of Automation Rules Renders Claim Unpatentable

The court granted defendants' motion for judgment on the pleadings that plaintiff's "patents for automatically animating the lip synchronization and facial expressions of 3D characters" were invalid for lacking patentable subject matter. "[T]he point of novelty here is the idea of using rules, including timing rules, to automate the process of generating keyframes . . . [W]hat the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes [the smallest unit of speech, corresponding to a single sound]. However, both of these concepts are specified at the highest level of generality. . . [T]he user, not the patent, provides the rules. And while the patent does provide an example of a very partial set of default and secondary rules, it expressly states that 'this is only an example of a set of rules which could be use[d] for illustrative purposes, and many other rules could be specified according to the method of the invention.' Because the claim purports to cover all such rules, in light of the prior art, the claim merely states 'an abstract idea while adding the words 'apply it.’'. . . . This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly."

McRo, Inc. v. Namco Bandai Games America, Inc., 2-12-cv-10322 (CACD September 22, 2014, Order) (Wu, J.)