McRO Inc v. THQ Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: McRO, Inc., d.b.a. Planet Blue (Delaware / California)
  • Defendant: THQ, Inc. (Delaware / California)
  • Plaintiff’s Counsel: Russ, August & Kabat; Mishcon de Reya New York LLP
• Case Identification: 2:12-cv-10345, C.D. Cal., 12/04/2012
• Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant is subject to personal jurisdiction and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s methods for creating animated lip-synchronization in its computer and video games infringe two patents related to the automated generation of facial animation from phonetic data.
• Technical Context: The technology at issue automates the process of synchronizing a 3D character's lip and facial movements to recorded speech, a fundamental and historically labor-intensive aspect of producing animation for video games and other media.
• Key Procedural History: The complaint alleges that Defendant has had knowledge of the patents-in-suit since at least December 2007, based on alleged correspondence with the inventor. U.S. Patent No. 6,611,278 is a continuation of the application that resulted in U.S. Patent No. 6,307,576 and is subject to a terminal disclaimer, meaning its term is tied to that of the earlier patent.

Case Timeline

Date	Event
1997-10-02	Priority Date for ’576 Patent and ’278 Patent
2001-10-23	U.S. Patent No. 6,307,576 Issued
2003-08-26	U.S. Patent No. 6,611,278 Issued
2007-12-01	Alleged pre-suit knowledge of patents by Defendant (approx.)
2012-12-04	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,307,576 - "Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters," Issued October 23, 2001

The Invention Explained

• Problem Addressed: The patent describes prior art methods of animating a character’s speech as "extremely laborious and lengthy" and "tedious and time consuming," relying on manual artist-driven "keyframe" animation for each sound, which limits efficiency and cost-effectiveness (ʼ576 Patent, col. 1:20-35).
• The Patented Solution: The invention is a method that automates this process. It uses a time-aligned phonetic transcription of recorded audio (a data file listing which phonemes are spoken and when) and applies a pre-defined "set of rules" to automatically generate a corresponding stream of facial poses, known as "morph weight sets" (ʼ576 Patent, Abstract; col. 4:35-50). These rules govern which facial pose corresponds to a given phoneme and how to transition between poses over time, replacing the manual work of an animator.
• Technical Importance: The invention sought to replace a subjective, manual, and expensive artistic process with an objective, rules-based, and efficient automated system, aiming to significantly reduce the time and cost of producing realistic animated speech.

Key Claims at a Glance

• The complaint does not specify which claims are asserted. The primary independent claim is Claim 1, a method claim.
• Key elements of Claim 1 include:
  • obtaining a first set of rules that define an output morph weight set stream as a function of a phoneme sequence and time;
  • obtaining a timed data file of phonemes (e.g., a phonetic transcription);
  • generating an intermediate stream of morph weight sets by evaluating the phoneme sub-sequences against the set of rules; and
  • applying the final stream of morph weight sets to a sequence of animated characters to produce lip synchronization.

U.S. Patent No. 6,611,278 - "Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters," Issued August 26, 2003

The Invention Explained

• Problem Addressed: As a continuation of the application for the ’576 Patent, this patent addresses the identical problem: the laborious, time-consuming, and costly nature of manually animating lip-sync for 3D characters (ʼ278 Patent, col. 1:20-35).
• The Patented Solution: The patented solution is substantively the same as in the parent ’576 Patent, describing a rules-based system that automatically generates facial animation from a time-aligned phonetic transcription of speech. The claims, however, are directed to an "apparatus" rather than a "method" ('278 Patent, Abstract; col. 4:35-50).
• Technical Importance: This patent extends the protection of the core invention to cover the apparatus or system that performs the automated, rules-based animation process.

Key Claims at a Glance

• The complaint does not specify which claims are asserted. The primary independent claim is Claim 1, an apparatus claim.
• Key elements of Claim 1 include:
  • a computer system;
  • a first set of rules stored in the computer system;
  • a timed data file of phonemes readable by the system;
  • means for generating an intermediate stream of output morph weight sets by evaluating the phonemes against the rules;
  • means for generating a final stream of output morph weight sets; and
  • means for applying the final stream to animate characters.

III. The Accused Instrumentality

Product Identification

• The complaint broadly identifies the accused instrumentalities as "various computer and/or video games" developed, published, manufactured, or sold by Defendant THQ, Inc. (Compl. ¶11). It also accuses the "automated lip-synchronization methods and processes" that THQ employs to create those games (Compl. ¶12).

Functionality and Market Context

• The complaint alleges that Defendant is in the business of developing and publishing video games (Compl. ¶2). It further alleges that THQ uses "automated lip-synchronization methods" to create the facial animation for three-dimensional characters in these games (Compl. ¶12, ¶14).
• The complaint does not provide technical details on how Defendant's specific methods operate, asserting only that they perform the function of automated lip synchronization and facial expression for 3D characters (Compl. ¶10, ¶14).

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are made at a high level of generality and do not include specific evidence mapping accused functionality to claim limitations. No probative visual evidence provided in complaint.

’576 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method for automatically animating lip synchronization and facial expression of three-dimensional characters	Defendant "has used and continues to use the methods for automatically animating lip synchronization and facial expression of three-dimensional characters claimed in the ’576 Patent."	¶14	col. 11:26-29
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence	The complaint alleges Defendant uses "methods for automatically animating lip synchronization" which, to practice the patent, would require the use of such rules.	¶14	col. 11:30-33
obtaining a timed data file of phonemes having a plurality of sub-sequences	The complaint alleges Defendant employs "automated lip-synchronization methods and processes" which, to practice the patent, would require obtaining phonetic data.	¶12	col. 11:34-36
generating an intermediate stream of output morph weight sets...by evaluating said plurality of sub-sequences against said first set of rules	The complaint alleges Defendant's "uses of these lip synchronization methods and processes...infringe" the patent, which would require this evaluation step.	¶12, ¶14	col. 11:37-41
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization...	Defendant is alleged to have made, used, and sold "computer and/or video games" which incorporate the output of the claimed methods.	¶14	col. 11:45-49

Identified Points of Contention

• Factual Question: The primary point of contention will be factual: what is the actual architecture of THQ's animation pipeline? The case will depend heavily on discovery to determine whether THQ's systems use a "rules-based" approach that maps phoneme sequences to morph targets, or if they rely on a different technology (e.g., purely manual keyframing, machine learning, or a non-infringing automated process).
• Scope Question: A key question for the court will be whether the claims, particularly the term "set of rules," are directed to a specific technological improvement over the prior art or to the abstract idea of automating a task using rules. This raises the question of whether the claims meet the requirements for patent-eligible subject matter.

V. Key Claim Terms for Construction

The Term: "a first set of rules"

• Context and Importance: This term is the central feature of the claimed invention, representing the logic that automates the animation process. Its scope—whether it is broad enough to cover any rule-based system or is limited to the specific implementation in the patent—will be dispositive for both infringement and validity.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself refers generally to "a first set of rules that define output morph weight set stream as a function of phoneme sequence and time" ('576 Patent, col. 11:30-33), which a plaintiff may argue covers any system that performs this function.
  • Evidence for a Narrower Interpretation: The specification describes a specific, hierarchical rule structure, categorizing them into "default rules, auxiliary rules and post processing rules" ('576 Patent, col. 5:9-14). A defendant may argue that the term "set of rules" should be limited to an implementation that includes this disclosed contextual relationship between different rule types.

The Term: "evaluating... against said first set of rules"

• Context and Importance: This step defines the core action of the automated process. Its construction will determine what type of automated comparison constitutes infringement. Practitioners may focus on this term to distinguish the claimed method from other automated techniques.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff may argue this term simply means applying the rules to the phonetic data in any manner to generate the morph weight sets.
  • Evidence for a Narrower Interpretation: The specification describes a context-sensitive evaluation, where secondary rules use criteria such as "the phoneme, the duration or the phoneme's context in the output stream, that is what phonemes are adjacent or in the neighborhood to the current phoneme" ('576 Patent, col. 5:32-38). A defendant may argue that "evaluating" requires this specific type of contextual analysis, not just a simple one-to-one lookup.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, asserting that THQ knowingly and intentionally encourages infringement by "contracting with others to use the methods" and by creating and disseminating "promotional and marketing materials, instructional materials, product manuals, and technical materials" that facilitate infringing uses (Compl. ¶14; ¶18).
• Willful Infringement: Willfulness is alleged for both patents. The complaint bases this on alleged pre-suit knowledge of the patents by THQ "since at least as early as December 2007 as a result of correspondence and/or other communications between Mr. Maury Rosenfeld [the inventor] and employees in THQ' legal department" (Compl. ¶14; ¶18).

VII. Analyst’s Conclusion: Key Questions for the Case

• An Evidentiary Question of Technical Operation: The central factual dispute will be whether discovery reveals that the Defendant’s accused animation systems operate using a "rules-based" methodology as required by the claims. The complaint’s conclusory allegations must be substantiated with evidence showing that the accused systems compare timed phoneme data against a set of rules to automatically select and transition between facial poses.
• A Legal Question of Claim Scope and Patentability: A dispositive legal battle will likely concern the proper construction of the term "set of rules." The key question for the court will be whether this term, in the context of the claims and specification, represents a specific, patent-eligible technological improvement to computer animation, or if it is an unpatentable abstract idea of using generic rules to automate a known manual process. The outcome of this question will determine the patents' validity and ultimate enforceability.