McRO, Inc. v. Sony Computer Entm't Am., LLC

• Decision Date: 22 September 2014
• Docket Number: No. CV 14–383–GW FFMx.,CV 14–383–GW FFMx.
• Court: U.S. District Court — Central District of California
• Parties: McRO, INC., d.b.a. Planet Blue, Plaintiffs, v. SONY COMPUTER ENTERTAINMENT AMERICA, LLC, et al., Defendants.

55 F.Supp.3d 1214

McRO, INC., d.b.a. Planet Blue, Plaintiffs

v.SONY COMPUTER ENTERTAINMENT AMERICA, LLC, et al., Defendants.

No. CV 14–383–GW FFMx.

United States District Court, C.D. California.

Signed Sept. 22, 2014.

Brian E. Farnan, Michael J. Farnan, Farnan LLP, Wilmington, DE, Mark S. Raskin, Vincent Filardo, Jr., Mishcon De Reya New York LLP, New York, NY, for Plaintiffs.

Albert F. Harris, III, Basil T. Webb, Beth A. Larigan, Jonathan N. Zerger, Lynn C. Herndon, Shook Hardy and Bacon LLP, Kansas City, MO, Douglas Wayne Robinson, Tony M. Diab, Shook Hardy and Bacon LLP, Irvine, CA, for Defendants.

RULING ON DEFENDANTS' MOTION FOR JUDGMENT ON THE PLEADINGS BASED ON UNPATENTABILITY UNDER 35 U.S.C. § 101

GEORGE H. WU, District Judge.

I. Background

The Court is presiding over two sets of consolidated patent infringement cases filed by Plaintiff McRO, Inc., d.b.a. Planet Blue (“Plaintiff” or “Planet Blue”): the “Track 1” cases, consolidated under Case No. CV–12–10322,¹ and the “Track 2” cases, consolidated under Case No. CV 13–1872.² The cases all involve Plaintiff's allegation that Defendants directly or indirectly infringed two patents for automatically animating the lip synchronization and facial expressions of 3D characters. The cases are proceeding on different tracks due to the filing or transfer dates of the cases, although various later-filed cases have been consolidated into Track 1 due to corporate or counsel relationships.

This Motion for Judgment on the Pleadings Based on Unpatentability under 35 U.S.C. § 101 (“Motion”) was jointly filed by all defendants in both Tracks: Namco Bandai Games America, Inc.; Sega of America, Inc.; Electronic Arts, Inc.; Disney Interactive Studios, Inc.; Capcom USA, Inc.; Neversoft Entertainment, Inc.; Treyarch Corporation; Warner Bros. Interactive Entertainment, Inc.; LucasArts Entertainment Co. LLC; Activision Publishing, Inc.; Blizzard Entertainment, Inc.; Infinity Ward, Inc.; Atlus U.S.A., Inc.; Konami Digital Entertainment, Inc.; Square Enix, Inc.; Obsidian Entertainment, Inc.; Naughty Dog, Inc.; Sony Computer Entertainment America, LLC; Sucker Punch Productions, LLC; The Codemasters Software Company Limited; Codemasters, Inc.; Codemasters USA Group, Inc.; and Valve Corp. (collectively, “Defendants”). Notice of Mot., Docket No. 338 at 2. Plaintiff filed its Opposition on July 24, 2014. Docket No. 344. Defendants filed their Reply on July 31, 2014. Docket No. 350.

At issue are United States Patent Nos. 6,307,576 (“ '576 Patent”), issued October 23, 2001, and 6,611,278 (“ '278 Patent ”), issued August 26, 2003, both to Maury Rosenfeld, and both titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters.” The '278 Patent resulted from a continuation of the application that resulted in the ' 576 Patent, meaning the patents share the same disclosure. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1304, n. 3 (Fed.Cir.2008).

The patents explain that prior methods of animating lip synchronization and facial expressions were laborious and uneconomical. '576 Patent 1:14–31. The patents address that problem with an automated method of using “weighted morph targets and time aligned phonetic transcriptions of recorded text, and other time aligned data.” '576 Patent 2:64–3:12. The patents explain that in the relevant art, “ ‘phonemes [are] defined as the smallest unit of speech, and correspond[ ] to a single sound.” '576 Patent 1:34–36. A sound recording can be transcribed into a “time aligned phonetic transcription” in which the timing of each phoneme is noted. '576 Patent 1:32–34. Such transcriptions can be created by hand or by automatic speech recognition programs. '576 Patent 1:39–43.

The patents explain that the prior art practice for 3–D computer generated speech animation was by manual techniques using a “morph target” approach. '576 Patent 1:44–46. That approach uses a reference model of a neutral mouth position in conjunction with “morph targets,” which are models of the mouth in non-neutral positions corresponding to different phonemes. '576 Patent 1:46–49. The reference model and morph targets all share the same “topology” of the mouth, defined by the same number and placement of “vertices” that designate specific points on the mouth. For example, vertex “n” on the neutral mouth and all of the morph targets may represent the left corner of the mouth. '576 Patent 1:51–54.

The “deltas,” or changes, of each vertex on each morph target relative to the corresponding vertex on the neutral model are computed as a vector to produce an individual “delta set” of vectors for each morph target. '576 Patent 1:58–62. From the neutral model, the animator need not move the mouth position all the way to a morph target. Instead, the animator can apply a value between 0 and 1, called the “morph weight,” to a delta set to move the mouth just a percentage of the way to the corresponding morph target. '576 Patent 1:63–2:1. For example, if the sound (morph target) is “oh,” and the morph weight is 0.5, the mouth only moves halfway between the neutral position and the “oh” morph target. '576 Patent 2:16–22. It is also possible to blend the morph targets, for example, 0.3 “oh” and 0.7 “ee,” resulting in a mouth position exhibiting a combination of the “oh” and “ee” sound characteristics. '576 Patent 2:23–28.

According to the patents, applying the appropriate morph weights in the prior art was usually done using a “keyframe” approach. In the keyframe approach, an artist sets the morph weights at certain important times, and a computer program then interpolates each of the channels at each frame between the keyframes. '576 Patent 2:29–34. The patents state that this method requires the artist to manually set a large number of keyframes, which is tedious, time consuming, and inaccurate. '576 Patent 2:34–37. Therefore, an object of the invention is to provide “an extremely rapid and cost effective means to automatically create lip synchronization and facial expression in three dimensional animated characters.” '576 Patent 2:50–54.

The invention “utilizes a set of rules that determine the system[']s output comprising a stream or streams of morph weight sets when a sequence of timed phonemes or other timed data is encountered.” '576 Patent 3:3–7. The invention includes:

[C]onfiguring a set of default correspondence rules between a plurality of visual phoneme groups and a plurality of morph we sets; and specifying a plurality of morph weight set transition rules Zrfo specifying durational data for the generation of transitionary curves between the plurality of morph weight sets, allowing for the production of a stream of specified morph weight sets to be processed by a computer animation system....

'576 Patent 3:23–30.

Defendants argue that the claims of both patents in suit are patent ineligible under 35 U.S.C. § 101 because they merely “set[ ] forth the previously-known animation method as a series of mathematical steps, and instruct[ ] the user to perform those steps on a computer.” Mot., Docket No. 338 at 12.

II. Legal Standard

A. Motion for Judgment on the Pleadings

Rule 12(c) of the Federal Rules of Civil Procedure permits a party to move to dismiss a suit “[a] fter the pleadings are closed ... but early enough not to delay trial.” Fed.R.Civ.P. 12(c). “Judgment on the pleadings is proper when, taking all allegations in the pleading as true, the moving party is entitled to judgment as a matter of law.” Stanley v. Trustees of Cal. State Univ., 433 F.3d 1129, 1133 (9th Cir.2006) ; see also Fleming v. Pickard, 581 F.3d 922, 925 (9th Cir.2009). Because a motion for judgment on the pleadings is “functionally identical” to a motion to dismiss, the standard for a Rule 12(c) motion is the same as for a Rule 12(b)(6) motion. See Platt Elec. Supply, Inc. v. EOFF Elec., Inc., 522 F.3d 1049, 1052 n. 1 (9th Cir.2008).

A complaint may be dismissed for failure to state a claim upon which relief can be granted for one of two reasons: (1) lack of a cognizable legal theory or (2) insufficient facts under a cognizable legal theory. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). See also Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir.2008) (“Dismissal under Rule 12(b)(6) is appropriate only where the complaint lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory.”). A motion to dismiss should be granted if the complaint does not proffer enough facts to state a claim for relief that is plausible on its face. See Twombly, 550 U.S. at 558–59, 570, 127 S.Ct. 1955 ; see also William O. Gilley Enters., Inc. v. Atlantic Richfield Co., 588 F.3d 659, 667 (9th Cir.2009) (confirming that Twombly pleading requirements “apply in all civil cases”). “[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged—but it has not ‘show[n]’—‘that the pleader is entitled to relief.’ ” Ashcroft v. Iqbal, 556 U.S. 662, 679, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Fed.R.Civ.P. 8(a)(2) ).

In deciding a 12(b)(6) or 12(c) motion, the court is limited to the allegations on the face of the complaint (including documents attached thereto), matters which are properly judicially noticeable and other extrinsic documents when “the plaintiff's claim depends on the contents of a document, the defendant attaches the document to its motion to dismiss, and the parties do not dispute the authenticity of the document, even though the plaintiff does not explicitly allege the contents of that document in the complaint.” Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir.2005). The court must construe the complaint in the light most favorable to the plaintiff and must accept all factual allegations as true. Cahill v. Liberty Mutual Ins. Co., 80 F.3d 336, 337–38 (9th Cir.1996). The court must also accept as true all reasonable inferences to...