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

Summary Judgment of No Enablement Improper Without Identification of Specific Non-Enabled Embodiments

McRO, Inc. v. Bandai Namco Games America Inc., __ F.3d __, 2020 WL 2549542 (Fed. Cir. May 20, 2020) (Reyna, Mayer, TARANTO) (C.D. Cal.: Wu) (3 of 5 stars)

Fed Cir affirms summary judgment of noninfringement and vacates summary judgment of invalidity. McRO’s patent relates to automatic generation of lip movements and facial expressions in computer animation. As a matter of claim construction, the district court did not err in determining that McRO’s asserted claims require that certain concepts be recorded as vectors in three-dimensional space, and not (as McRO had argued) merely an ordered set of numbers. The opinion describes how “the specification compels the three-dimensional geometric construction” entered by the district court. Op. at 10.

The district court erred by entering judgment of invalidity for lack of enablement. “[T]he district court’s reasoning is too abstract, too conclusory, to support summary judgment.” Op. at 13. The opinion describes how Fed Cir caselaw requires a “specific identification of products or processes that were or may be within the scope of the claims and were allegedly not enabled.” Id. at 16 (discussing Automotive Techs., 501 F.3d 1274 (Fed. Cir. 2007); Genentech, 108 F.3d 1361 (Fed. Cir. 1997); MagSil, 687 F.3d 1377 (Fed. Cir. 2012); Sitrick, 516 F.3d 993 (Fed. Cir. 2008); Vaeck, 947 F.2d 488 (Fed. Cir. 1991); and Boston University, 896 F.3d 1357 (Fed. Cir. 2018)). Because the two accused techniques identified by the district court in its enablement analysis were noninfringing, they cannot support a nonenablement determination. Absent those two techniques, a determination of non-enablement was improper. The district court’s reasoning that McRO’s patent disclosed merely “working examples [without] any exemplary metric that might allow the court to understand the exact bounds of what is claimed” is, without more, insufficient to support summary judgment. Op. at 21.

KEYWORDS: INFRINGEMENT (NO); SUMMARY JUDGMENT; ENABLEMENT