McRO, Inc. v. Bandai Namco Games Am., Inc.

Opinion

 [*1093]  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 method claims of U.S. Patent No. 6,611,278, owned by McRO. The district court held the claims invalid for ineligibility 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 district court ultimately held that the Developers were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims.

 [*1094]  McRO appeals. We affirm the judgment of noninfringement. 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.

McRO owns U.S. Patent No. 6,611,278, which describes and claims a method for automatically generating [**3]  animations, 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 positions, 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 "typical 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 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 vertex n on each morph target," and that vector is the "delta" for that vertex. Id., col. 1, lines 60-63.

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