SOFTWARE PATENT MUST PROVIDE ENOUGH DETAIL TO ENABLE ANOTHER TO MAKE AND USE THE INVENTION

In McRO (Planet Blue) v. Bandai, the former owned a patent for "automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions".


The Federal Circuit explained that the patent laws require that the patent "specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same."In other words, the specification must enable the skilled person to make and use the invention "without undue experimentation."


On the other hand, as also explained by the Federal Circuit, an "'artisan's knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art." A "'patent need not teach, and preferably omits, what is well known in the art.'"


Here, the novel aspect of the invention was a "set of rules that tells the system how to automatically output the chosen mouth shapes in a format that can create an animation." The Federal Circuit stated that "because this process is the novel aspect of the claimed invention, the specification must reasonably teach how to make and use this aspect of the invention."


The Federal Circuit found that Planet Blue had not identified that "set of rules".


COMMENT:


A potential pitfall in software patents is that an assumption is made that any software engineer can figure out how to code a result in an algorithm of the patent. This assumption might turn out to be erroneous. Thus, it might be potentially dangerous to merely describe in the patent an end result. Instead, a "safer" option could be to describe the specifics of each step to reach the end result.

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