McRO v. Bandai Namco: When Software Rules Survive Alice at Step One

McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), decided September 13, 2016, is the case software patentees cite when they need to show that computer-implemented claims can survive Alice at step one. In the years after Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), district courts invalidated software claims in bulk, often stopping the inquiry the moment they could describe a claim’s purpose in a few abstract words. McRO pushed back. A unanimous panel held that claims to a rules-based method of automatically synchronizing the lip and facial movements of animated characters were not directed to an abstract idea at all, because they claimed a specific technological improvement over the prior manual process. The decision remains the leading authority that automating a task once done by humans can be patent-eligible when the automation is achieved through a particular, non-preemptive technique.

At a glance

• Case: McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)
• Court: United States Court of Appeals for the Federal Circuit
• Decided: September 13, 2016; opinion by Judge Reyna
• Holding: Claims reciting specific rules for automated lip synchronization of 3-D characters are not directed to an abstract idea under 35 U.S.C. Section 101 and are patent-eligible at Alice step one
• Disposition: Reversed and remanded. The district court had granted judgment on the pleadings under Rule 12(c) that claims of U.S. Patent Nos. 6,307,576 and 6,611,278 were ineligible

The animation problem the patents solved

Before the patented method, animating a character’s speech was painstaking manual labor. A human animator watched or listened to recorded dialogue and, frame by frame, set the character’s facial “morph targets,” the predefined mouth and face shapes that correspond to particular sounds. The animator adjusted “morph weights” to blend those shapes so that the character appeared to pronounce each syllable, and set the timing of transitions between them by eye and ear. The results depended on the animator’s skill, and the work did not scale.

The inventor, Maury Rosenfeld, developed a way to automate the process using rules. The claimed method took a “timed transcript” of the recorded speech, a sequence of phonemes with their timing, and applied rules that used that timing to set morph-weight values and to control the transitions between facial positions. The rules were the invention. Rather than the animator deciding by intuition how the mouth should move between an “oh” and an “ee,” the system applied defined relationships, driven by the phonetic sequence, to generate the animation automatically.

The Alice framework and the trap at step one

Section 101 makes ineligible claims directed to abstract ideas, and Alice supplied the two-step test: first ask whether a claim is directed to an abstract idea, and if so, ask whether it recites an inventive concept that transforms the idea into a patent-eligible application. The recurring danger for software claims lies at step one. A court can nearly always restate a software claim at a high level of generality, “automating lip synchronization,” “using rules to animate,” and then declare that generalized purpose an abstract idea. That framing tends to decide the case before the analysis begins.

Judge Reyna’s opinion refused to play that game. The court warned that in applying step one, judges must be careful to avoid “oversimplifying the claims” by stripping them to a gist and ignoring the specific requirements they impose. The proper question is whether the claims, read in light of the specification, are directed to a specific improvement in computer or technological functionality or instead merely invoke a result to be achieved. The court looked at what claim 1 actually required and concluded it was the former.

Why the rules made the claims a technological improvement

The heart of McRO is its holding that the claimed rules produced a concrete technological improvement over the existing manual process, and that this improvement, not generic computer implementation, defined the claims. The court found that the claims did not simply take the animator’s mental process and say “do it on a computer.” The prior manual method was not driven by the particular kind of rules the claims required. The automation used rules of a specified character, relating phoneme timing to morph-weight transitions, that improved the technological process itself. As the court put it, claim 1 “uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.”

That distinction is doctrinally important. In Alice, the computer did generic work in service of an old economic practice. In McRO, the specific rules were the advance, and they changed how the animation was produced rather than merely speeding up a task with off-the-shelf computing. The court thus located the claims on the eligible side of the line drawn by earlier Federal Circuit cases such as Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which had held that claims directed to an improvement in computer capabilities are not abstract.

Preemption as a guidepost

The court reinforced its conclusion with a preemption analysis. The concern animating the abstract-idea exception is that a patent might monopolize a basic tool of innovation. So the court asked whether the claims would preempt all ways of automatically synchronizing animation using rules. They would not. The evidence showed that the claimed rules operated in a defined manner, and other rules-based approaches to the same task remained available. Because the claims did not lock up the field of automated lip synchronization but only a particular genus of rules that achieve it, the preemption concern was not implicated, which the court treated as confirming eligibility at step one. The opinion is careful, though, to note that preemption is a guidepost rather than a standalone test: the absence of complete preemption supports but does not by itself establish eligibility.

Open questions

McRO drew a line but did not make it self-executing. How “specific” must claimed rules be before they count as a technological improvement rather than an abstract instruction to “apply rules”? The opinion leaned on the factual record that the prior art was not rules-based in the claimed way, which invites disputes about how courts should handle eligibility on the pleadings, before that record exists. And the boundary between McRO-style eligible automation and the ineligible “do it on a computer” claims of Alice still requires case-by-case judgment about whether the claimed advance lies in the technique or merely in the use of a computer as a tool. Later decisions have both embraced and distinguished McRO, and the precise reach of its “improved technological result” reasoning remains contested as of July 2026.

Implications for inventors and businesses

• Claim the technique, not the goal. Software claims survive step one far better when they recite the specific rules, data structures, or operations that produce a result, rather than reciting the result and leaving implementation to a generic computer.
• Build the improvement story in the specification. McRO relied on a clear contrast between the claimed method and the prior manual process. Specifications should document the technological problem and explain how the claimed approach improves the process itself.
• Mind preemption. Claims that plainly leave alternative approaches open are easier to defend. Overbroad claims that would capture every way of achieving a result invite both eligibility and validity attacks.
• Automation alone is not enough. Merely computerizing a task humans used to do by hand risks an Alice invalidation. The defensible position is that the automation works through a particular, non-conventional mechanism.

Frequently asked questions

What did the McRO patents cover? U.S. Patent Nos. 6,307,576 and 6,611,278 claimed a method of automatically animating the lip and facial expressions of 3-D characters by applying specific rules that set morph-weight values and transitions based on the timing and phonetic content of recorded speech.

Why were the claims patent-eligible when so many software claims fail Alice? The Federal Circuit found at step one that the claims were directed to a specific technological improvement over prior manual animation, not to an abstract idea. The claimed rules operated in a particular way that produced a concrete result, and they did not preempt all rules-based approaches to the task.

What role did preemption play? The court used preemption as a guidepost. Because the claims required rules of a particular type and left other rule-based methods free, they did not lock up the fundamental idea of automated lip synchronization, which supported eligibility at step one.

Authorities and sources

• McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Full-text opinion via BitLaw.
• 35 U.S.C. Section 101; Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
• Harvard Journal of Law & Technology, “Federal Circuit Court Provides Clarity on Patent Preemption Post-Alice”.
• Finnegan, “Animating 101: Court Clarifies Application of Patent-Eligibility Test Under Alice”.
• Banner Witcoff, “IP Alert: McRO Inc. v. Bandai Namco Games America Inc. et al.”.