author: REYNA, Circuit Judge.

text:
    MCRO, INC., DBA Planet Blue, Plaintiff-Appellant v. BANDAI NAMCO GAMES AMERICA INC., Naughty Dog, Inc., Konami Digital Entertainment, Inc., Sega of America, Inc., Electronic Arts Inc., Obsidian Entertainment, Inc., Disney Interactive Studios, Inc., Square Enix, Inc., Neversoft Entertainment, Inc., Treyarch Corporation, Capcom USA, Inc., Sony Computer Entertainment America LLC, Atlus U.S.A., Inc., Sucker Punch Productions, LLC, Infinity Ward, Inc., Lucasarts, A Division of LucasFilm Entertainment Company Ltd. LLC, Warner Bros. Interactive Entertainment, A Division of Warner Bros. Home Entertainment Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc., Valve Corporation, Codemasters USA Group, Inc., Codemasters Software Inc., Codemasters, Inc., The Codemasters Software Company Limited, Defendants-Appellees
    2015-1080, -1081, -1082, -1083, -1084,-1085, -1086, -1087, -1088, -1089, - 1090, -1092, -1093, -1094, -1095, - 1096, -1097, -1098, -1099, -1100, -1101
    United States Court of Appeals, Federal Circuit.
    Decided: September 13, 2016

      Jeffrey A. Lamken, MoloLamken LLP, Washington, DC, argued for plaintiff-appellant. Also represented by Michael Gregory Pattillo, Jr.; John Francis Pe-trsoric, Mark Stewart Raskin, Robert Alan Whitman, Mishcon de Reya New York LLP, New York, - NY; John M. Whealan, Chevy Chase, MD.
    ' Sonal Naresh Mehta, Durie Tangri LLP, San Francisco, CA, representing defendants-appellees Electronic Arts Inc., Capeom' USA, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc., argued for all defendants-appellees.
    Edward R. Reines, Weil, Gotshal & Manges LLP, Redwood Shores, CA, for defendants-appellees Bandai Namco Games America Inc., Sega of America, Inc., Disney Interactive Studios, Inc., Nev-ersoft Entertainment, Inc., Treyarch Corporation, Atlus U.S.A., Inc., Infinity Ward, Inc., LucasArts, a Division of LucasFilm Entertainment Company Ltd. LLC, Warner Bros. Interactive Entertainment, a Division of Warner Bros. Home Entertainment Inc.
    Basil Trent Webb, Shook, Hardy & Bacon, LLP, Kansas City, MO, for defendants-appellees Naughty Dog, Inc., Sony Computer Entertainment America LLC, Sucker Punch Productions, LLC. Also represented by John D. Garretson, Beth A. Larigan.
    Wendy J. Ray, Morrison & Foerster LLP, Los Angeles, CA, for defendants-appellees Konami Digital Entertainment, Inc., Square Enix, Inc. Also represented by Benjamin J. Fox.
    Andrew David Tsu, Spach Capaldi & Waggaman LLP, Newport Beach, CA, for defendant-appellee Obsidian Entertainment, Inc. Also represented by Thomas Walling.
    Jan Patrick Weir, Michelman & Robinson, LLP, Irvine, CA, for defendant-appel-lee Valve Corporation. Also represented by Joseph James Mellema; Theodore J. An-gelis, David T. McDonald, K & L Gates LLP, Seattle, WA.
    Kevin W. Kirsch, Baker & Hostetler LLP, Cincinnati, OH, for defendants-ap-pellees Codemasters, Inc., Codemasters USA Group, Inc., Codemasters Software Inc., The Codemasters Software Company Limited. Also represented by Jared A. Brandyberry; Barry Eastburn Bretsch-neider, Washington, DC.
    Charles Duan, Public Knowledge, Washington, DC, for amici curiae Public Knowledge, Electronic Frontier Foundation. Also represented by Vera Ranieri, Electronic Frontier Foundation, San Francisco, CA.
    Andrew John Pincus, Mayer Brown LLP, Washington, DC, for amicus curiae BSA I The Software Alliance. Also represented by Paul Whitfield Hughes.
    Before REYNA, TARANTO, and STOLL, Circuit Judges.
   REYNA, Circuit Judge.

This appeal is from a grant of judgment on the pleadings under Fed. R. Civ. P. 12(c) that the asserted claims of U.S. Patent Nos. 6,307,576 (“the ’576 patent”) and 6,611,278 (“the ’278 patent”) are invalid. The United States District Court for the Central District of California found that the asserted claims are directed to patent-ineligible subject matter and are therefore invalid under 35 U.S.C. § 101 (“§ 101”). McRO, Inc. v. Sony Computer Entm’t Am., LLC, 55 F.Supp.3d 1214 (C.D. Cal. 2014) (“Patentability Op.”). We hold that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences. of. phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101. Accordingly, we reverse.

I. Background

A. Factual Background

The ’576 patent and the ’278 patent were both issued to Maury Rosenfeld and are both titled “Method for Automatically Animating Lip Synchronization and Facial Expression of Animated Characters.” The ’278 patent is a continuation of the ’576 patent and shares the same written description.

1. Admitted Prior Art

The patents relate to automating part of a preexisting 3-D animation method. As explained in the background of the patents, the admitted prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. See generally ’576 patent col. 1 1. 14 to col. 2 1. 37. To animate the character as it speaks, the method morphs the character’s expression between the models. The “neutral model” is the 3-D representation of the resting, neutral facial expression of an animated character. The other models of the character’s face are known as “morph targets,” and each one represents that face as it pronounces a phoneme, i.e., makes a certain sound. This visual representation of the character’s face making a sound is also called a “ví-seme.” McRO Br. 7. An example morph target for the “ahh” phoneme is shown below. Each of these morph targets and the neutral model has identified points, called “vertices,” in certain places on the face. The set of differences in the location of these vertices (and the corresponding point on ■ the face) between the neutral model and the morph target form a “delta set” of vectors representing the change in location of the vertices between the two models. For each morph target, there is a corresponding delta set consisting of the vectors by which the vertices on that morph- target differ from the neutral model.

Defs.’ Br. 8.

Facial expressions are described as a function of the amount each morph target, and its corresponding delta set, is applied to modify the character model. “In producing animation products, a value usually from 0 to 1 is assigned to each delta set by the animator and the value is called the ‘morph weight.’ ” ’576 patent col. 1 11. 63-65. The set of morph weights for all the delta sets is called a “morph weight set.” The neutral model is represented by a morph weight set with all morph weights of 0. A desired morph target is represented by the morph weight of 1 for that morph target’s delta set and a morph weight of 0 for all other delta sets.

The power of this prior art animation method is in generating intermediate faces by using morph weights between 0 and 1 to blend together multiple morph targets. For example, the face halfway between the neutral model and the “oh” face can be expressed simply by setting the “oh” morph weight to 0.5, i.e., 50%, as shown below at the left. The model halfway to the next syllable, in turn, could be expressed by setting both the “oh” morph weight and that for the next syllable each to 0.5, creating a blend of those two delta sets. McRO Br. 11; see also Defs.’ Br. 8-11. For each morph weight set, the resulting facial expression is calculated by determining the displacement of each vertex from the neutral model as the product of the morph weights in the morph weight set and the corresponding delta sets for the morph targets. ’576 patent col. 2 11. 2-15.

McRO Br. 11.

Animation of the character and lip synchronization preexisting the invention was generally accomplished by an animator with the assistance of a computer. Animators used “a ‘keyframe’ approach, where the artist set[] the appropriate [morph] weights at certain important times (‘key-frames’)” instead of at every frame. ’576 patent col. 2 11. 31-33. Animators knew what phoneme a character pronounced at a given time from a “time aligned phonetic transcription” (“timed transcript”). This listed the “occurrence in time” of each phoneme the character pronounced, as shown in the example below. Id. at col. 111. 32-34.

McRO Br. 7.

Animators, using a computer, manually-determined the appropriate morph weight sets for each keyframe based on the phoneme timings in the timed transcript. “For each keyframe, the artist would look at the screen and, relying on her judgment, manipulate the character model until it looked right — a visual and subjective process.” McRO Reply Br. 4 (emphasis removed); Defs.’ Br. 10 (“Using the [timed transcript], the animator would decide what the animated face should look like at key points in time between the start and end times, and then ‘draw' the face at those times”). Because the pronounced phoneme and drawn keyframe corresponded in time, this prior art process synchronized the lips and facial expression of the 3-D character. A computer program would then interpolate between the keyframes set by the animator, creating the intermediate frames by determining the appropriate morph weight sets at intermediate points in time simply based on continuously transitioning between the keyframes. ’576 patent col. 2 11. 32-36.

2. Claimed Invention

The patents criticize the preexisting keyframe approach as “very tedious and time consuming, as well as inaccurate due to the large number of keyframes necessary to depict speech.” ’676 patent col. 2 11. 35-37. They suggest the

present invention overcomes many of the deficiencies of the prior art and obtains its objectives by providing an integrated method embodied in computer software for use with a computer for the rapid, efficient lip synchronization and manipulation of character facial expressions, thereby allowing for rapid, creative, and expressive animation products to be produced in a very cost effective manner.

Id. at col. 211. 38^4. “Accordingly, it is the primary object of this invention to provide a method for automatically ... producing accurate and realistic lip synchronization and facial expressions in animated characters.” Id. at col. 2 11. 45-50.

Essentially, the patents aim to automate a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes. This automation is accomplished through rules that are applied to the timed transcript to determine the morph weight outputs. The patents describe many exemplary rule sets that go beyond simply matching single phonemes from the timed transcript with the appropriate morph target. Instead, these rule sets aim to produce more realistic speech by “takfing] into consideration the differences in mouth positions for similar phonemes based on context.” Id. at col. 10 11. 6-7.

One exemplary set of rules provided and applied in the specification of the ’576 patent is for a character transitioning from silence through saying “hello.” See ’576 patent col. 7 1. 36 to col. 9 1. 22. This exemplary set of rules provides for inserting a transition starting shortly before the first syllable after a silence. Id. at col. 8 11. 24-28. The transition marks when the character begins to transition from silence, shown by the closed-mouthed neutral model, to the morph target for the first syllable, with its open-mouthed shape. Id. at col. 8 11. 61-63. That is, the rule automates a character’s facial expressions so the character will wait until shortly before it starts speaking to begin opening its mouth. In terms of the prior art method, the effect of this rule is to automatically create a keyframe at a point that no phoneme is being pronounced. Id. át col. 9 11. 10-11. If instead no transition were placed at that position, the resulting animation would have an'unrealistic quality. The character would open its mouth gradually from the beginning of the sequence through its first utterance as a result of the computer interpolating a continuous transition between those two points. In the prior art system, an animator would have to subjectively identify the problematic sequence and manually fix it by adding an appropriate keyframe. The invention, however, uses rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators.

Claim 1 of the ’576 patent is representative and dispositive of the asserted claims for the purposes of appeal:

A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
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; obtaining a timed data file of phonemes having a plurality of sub-sequences; generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules; generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

’576 patent, cl. 1, col. 11 11.27-47.

B. Procedural History

In 2012 and 2013, Plaintiff-Appellant McRO, Inc., d/b/a Planet Blue (“McRO”) filed lawsuits in the U.S. District Courts for the Central District of California and for the District of Delaware. The defendants are generally video game developers and publishers. On January 15, 2014, eight of the lawsuits originally filed in Delaware were transferred to the Central District of California. The five cases remaining in Delaware are not part of this appeal, but are stayed pending the resolution of this appeal.

The Central District of California (“district court”) consolidated the proceedings there for pre-trial purposes on two tracks. It held a claim construction hearing in the Track 1 cases on April 29, 2014, and issued its Rulings on Claim Construction on May 1, 2014. J.A. 4009, 4155-73.

C. District Court’s § 101 Ruling

On July 10, 2014, all Central District of California defendants from both tracks (“Defendants”) jointly filed a motion for judgment on the pleadings that the asserted claims were directed to patent ineligible subject matter under § 101. Patentability Op., 55 F.Supp.3d at 1216. After a hearing, the district court granted the motion on September 22, 2014, finding the asserted claims unpatentable. Id. at 1230.

The district court’s analysis loosely tracks the two-step framework laid out by the Supreme Court in Alice Corp. v. CLS Bank Int’l, — U.S.-, 134 S.Ct. 2347, 2355, 189 L.Ed.2d 296 (2014) (“Alice”). First, the district court discussed the claims generally: “Facially, these claims do not seem directed to an abstract idea. They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process.” Patentability Op., 55 F.Supp.3d at 1224. “At first blush, it is therefore difficult to see how the claims might implicate the basic underlying concern that these patents tie up too much future use of any abstract idea they apply.” Id. (quotation marks omitted).

Second, the district court attempted to “factor out conventional activity” by comparing the claims to the admitted prior, art process that the patent sought to improve. Id. at 1224. The court accepted as undisputed that “a central part of the patents is ‘using morph weight set representations of the facial shape coupled with rules ... to generate keyframes.’ ” Id. at 1226. The court then looked to “whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.” Id.

After looking at each claim element in turn, the district court concluded, “the claim adds to the prior art ... the use of rules, rather than artists, to set the morph ■weights and transitions between phonemes.” Id. at 1227. Nonetheless, the district court found the claims too broadly preemptive to satisfy § 101. In the district court’s view, because the claims were not limited to specific rules, but rather “purport to cover all such rules,” the claims merely call for application of the abstract idea of using rules. Id, at 1227 (citing Alice, 134 S.Ct. at 2358). The district court found that, “while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach.” Id. at 1227. The court concluded that the claims were unpatentable because “the novel portions of [the] invention are claimed too broadly.” Id. at 1230.

The district court entered judgment against McRO on October 31, 2014. J.A. 24-26. McRO appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. PaRties’ Arguments

The parties’ principal dispute is over the meaning and application of two Supreme Court cases in light of Alice: Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) (“Flook”) and Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981) (“Diehr”). Both cases addressed the patentability of process claims that include steps requiring calculation.

A. McRO’s Position

McRO argues that Diehr controls the outcome here and dictates that the claims are not directed to an abstract idea. Specifically, McRO argues that the claims are not directed to an abstract idea because they generate a tangible product, namely “a video of a 3-D character speaking the recorded audio.” McRO Br. 38. According to McRO, the claimed process is technological because it provides “a method for getting a computer to automatically generate video of a 3-D animated character speaking in sync with pre-recorded dialogue— without requiring an artist’s constant in-termediation.” McRO Br. 42.

McRO argues that even if we find the claims are directed to an abstract idea, they are nonetheless patent eligible because they “effect an improvement in [a] technology or technical field,” specifically 3-D computer generated lip-synchronization. McRO Br. 43 (quoting Alice, 134 S.Ct. at 2359 (citing Diehr, 450 U.S. at 177-78, 101 S.Ct. 1048)). This improvement, McRO argues, results from its method that “employs specific types of rules” and uses those rules in “a specific technological way.” McRO Br. 45 (emphasis in original). The claimed type of rules are only those “rules that define output morph weight set stream, as a function of phoneme sequence and time of said phoneme sequence.” Id. at 46 (quoting ’576 patent, cl. 1, col. 11 11. 30-32). When applied, in McRO’s interpretation, these rulés must “adjust for the fact that a phoneme may look different when spoken depending on the phonemes preceding and/or following it.” McRO Br. 46.

These limitations are specific enough in McRO’s view because the rules will necessarily vary by character as, for example, “a swamp monster will use different rules than a tight-lipped cat.” Id. at 46. McRO argues that' its claims cannot preempt the field because other techniques exist that automate facial synchronization by capturing actors’ facial motions and applying those motions to 3-D animated characters. McRO Br.' 50 (citing Barbara Robertson, Big Moves, Computer Graphics World (Nov. 2006), available at http://www.cgw. com/Publications/CGW/2006/Volume-29Issue-ll-Nov-2006-/Big-Moves.aspx).

B. Defendants’ Position

Defendants argue that Flook controls because the claims are unpatentable algorithms that “can be performed solely with pencil and paper.” Defs.’ Br. 28. The claims, in Defendants’ view, “merely purport to take a preexisting process and make it faster by automating it on a general-purpose computer.” Defs.’ Br. 19. Defendants argue that these claims fail even under Diehr because they do not result in any tangible product, instead only producing a “stream of output morph weight sets” that are applied “to produce lip synchronization” without requiring the production of anything tangible like a video. ’576 patent, claim 1, col. 11 11. 44-47; Defs.’ Br. 30. Even if specific processing steps are required, Defendants argue the claims remain directed to an abstract idea because they only require using “mathematical algorithms to manipulate existing information to generate additional information.” Defs.’ Br. 34 (quoting Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)).

Echoing the district court, Defendants fault the claims for not specifically claiming particular rules, and instead requiring that the user provide the rules. Defs.’ Br. 40-42; see also Patentability Op., 55 F.Supp.3d at 1227, 1230. Defendants dispute that the claimed rules depend on the preceding or succeeding phonemes, i.e., sub-sequences of phonemes, and fault McRO for failing to raise this interpretation as a claim construction issue before the district court. Defs.’ Br. 43-44. Defendants claim broad preemption occurs because the rules only reflect relationships “that any intelligible lip-synchronization process must consider.” Id. at 50 (emphasis original). The relationships expressed by these rules, Defendants argue, inevitably capture “a preexisting fundamental truth” about how a human mouth looks while speaking certain sounds over time, preempting all possible rules-based methods. Alice, 134 S.Ct. at 2356; see Defs.’ Br. 16, 49-61.

III. Standard of Review

We review procedural aspects of the grant of judgment on the pleadings under the law of the regional circuit, in this case the Ninth Circuit. Allergan, Inc. v. Athena Cosmetics, Inc., 640 F.3d 1377, 1380 (Fed. Cir. 2011). The Ninth Circuit reviews the grant or denial of judgment on the pleadings under Rule 12(c) de novo. Kotrous v. Goss-Jewett Co., 523 F.3d 924, 929 (9th Cir. 2008). We also review de novo whether a claim is invalid under the judicially created exceptions to § 101. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015).

IV. DISCUSSION

A.' Claim Interpretation

As an initial matter, we note that, in this case, claim construction is helpful to resolve the question of patentability under § 101. Specifically, the parties’ dispute about whether the “first set of rules’” must evaluate sequential phonemes or can evaluate individual phonemes is resolved by the claim language. We agree with McRO that the claims are limited to rules that evaluate sub-sequences consisting of multiple sequential phonemes. This limitation is apparent on the face of the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2Q05) (en banc). In particular, the intermediate morph weight sets and transition parameters are generated “by evaluating said plurality of sub-sequences against said first set of rules.” ’576 patent, cl. 1, col. 11 11. 36-39. This limitation could not be satisfied by rules that only evaluate individual phonemes. Instead, the claimed “first set of rules” must be formulated to evaluate sub-sequences of phonemes.

B. Patentability Under § 101

Section 101 defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” subject to the other limitations of the Patent Act. Apart from the Patent Act, the courts have created exceptions to the literal scope of § 101. “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134 S.Ct. at 2354 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., — U.S. -, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (“Myriad,”)). This appeal involves the abstract idea exception.

In Alice, the Court applied a two-step framework for analyzing whether claims are patent eligible. First, we determine whether the claim at issue is “directed to” a judicial exception, such as an abstract idea. Alice, 134 S.Ct. at 2355. Mathematical formulas are a type of abstract idea. Gottschalk v. Benson, 409 U.S. 63, 64, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) (“Benson”). The abstract idea exception prevents patenting a result where “it matters not by what process or machinery the result is accomplished.” O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113, 14 L.Ed. 601 (1854). We do not assume that such claims are directed to patent ineligible subject matter because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., — U.S.-, 132 S.Ct. 1289, 1293, 182 L.Ed.2d 321 (2012) (“Mayo”); see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir, 2016) (“TLI Commc’ns”). Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). If the claims are not directed to an abstract idea, the inquiry ends. If the claims are “directed to” an abstract idea, then the inquiry proceeds to the second step of the Alice framework.

In step two we consider whether the claims contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” Alice, 134 S.Ct. at 2355 (quotation omitted). To do so we look to both the claim as a whole and the individual claim elements to determine whether the claims contain “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 132 S.Ct. at 1294) (alteration in original).

In Alice, the Court applied some of its § 101 jurisprudence that preceded the two-step framework,' including Flook and Diehr. In Flook, claims requiring the use of a specific equation were unpatentable because they “simply provide[d] a new and presumably better method of calculating alarm limit values.” Flook, 437 U.S. at 594-95, 98 S.Ct. 2522. The mathematical “formula itself was an abstract idea” and “the computer implementation was purely conventional” because “the ‘use of computers for “automatic monitoring-alarming' " was ‘well known’.” Alice, 134 S.Ct. at 2358 (quoting Flook, 437 U.S. at 594, 98 S.Ct. 2522). “Flook stands for the proposition that the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of [the idea] to a particular technological environment.” Alice, 134 S.Ct. at 2358 (quoting Bilski v. Kappos, 561 U.S. 593, 610-611, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) (“Bilski”)) (internal quotation marks omitted).

The claims in Diehr, in contrast, were patentable. The claims likewise “employed a ‘well-known’ mathematical equation.” Alice, 134 S.Ct. at 2358 (quoting Diehr, 450 U.S. at 177, 101 S.Ct. 1048). A computer performed the calculations as part of a broader process for curing rubber, but “the process as a whole [did] not thereby become unpatentable subject matter.” Diehr, 450 U.S. at 187, 101 S.Ct. 1048. Instead, the Court looked to how the claims “used that equation in a process designed to solve a technological problem in ‘conventional industry practice.’ ” Alice, 134 S.Ct. at 2358 (quoting Diehr, 450 U.S. at 178, 101 S.Ct. 1048). When looked at as a whole, “the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.” Alice, 134 S.Ct. at 2358.

1. Specific. Limitations

The district court determined that claim 1 of the ’567 patent is “drawn to the [abstract] idea of automated' rules-based use of morph targets and delta sets for lip-synchronized three-dimensionál animation.” Patentability Op., 55 F.Supp.3d at 1226. We disagree. We have previously cautioned that courts “must be careful to avoid oversimplifying the claims” by looking at them generally and failing to account for the specific requirements of the claims. TLI Commc’ns, 823 F.3d at 611; see also Diehr, 450 U.S. at 189 n.12, 101 S.Ct. 1048. Here, the claims are limited to rules with specific characteristics. As the district court recognized during claim construction, “the claims themselves set out meaningful requirements for the first set of rules: they ‘definéf ] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’ ” J.A. 4171 (Dist. Ct. Claim Construction Op. 16) (quoting ’567 patent, cl. 1). They further require “applying said first set of rules to each sub-sequence ... of timed phonemes.” Id. Whether at step one or step two of "the Alice test, in determining the patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps. The specific, claimed features of these rules allow for the improvement realized by the invention.

, As the specification confirms, the claimed.improvement here is allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” that previously could only be produced by human animators. ’576 patent col. 2 11. 49-50. As the district court correctly recognized, this computer automation is realized by improving the prior art through “the use of rules, rather than artists, to set the morph weights and transitions between phonemes.” Patentability Op., 55 F.Supp.3d at 1227. The rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences. See, e.g., ’576 patent col. 3 ll. 19-33. Defendants do not dispute that processes that automate tasks that humans are capable of performing are patent eligible if properly claimed; instead, they argue that the claims here are abstract because they do not claim specific rules. This argument echoes the district court’s finding that the claims improperly purport to, cover all rules. Patentability Op., at 1227. The claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus.

Claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable. E.g., Diamond v. Chakrabarty, 447 U.S. 303, 305, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980) (patentable claim to “a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said, plasmids providing a separate hydrocarbon degradative pathway.”). Patent law has evolved to place additional requirements on patentees seeking to claim a genus; however, these limits have not been in relation to the abstract idea exception to § 101. Rather they have principally been in terms of whether the patentee has satisfied the tradeoff of broad disclosure for broad claim scope implicit in 35 U.S.C. § 112. E.g., Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). It is self-evident that genus claims create a greater risk of preemption, thus implicating the primary concern driving § 101 jurisprudence, but this does not mean they are unpatentable.

The preemption concern arises when the claims are not directed to a specific invention and instead improperly monopolize “the basic tools of scientific and technological work.” Alice, 134 S.Ct. at 2354 (quoting Myriad, 133 S.Ct. at 2116). The abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where “it matters not by what process or machinery the result is accomplished.” Morse, 56 U.S. at 113; see also Mayo, 132 S.Ct. at 1301. “A patent is not good for an effect, or the result of a certain process” because such patents “would prohibit all other persons from making the same thing by any means whatsoever.” Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175, 14 L.Ed. 367 (1853). A patent may issue “for the means or method of producing a certain result, or effect, and not for the result or effect produced.” Diehr, 450 U.S. 175, 182 n.7, 101 S.Ct. 1048. We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (“Enfish”); see also Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.-, 827 F.3d 1042, 1048 (Fed. Cir. 2016).

2. Claims Directed To

Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims. See Defs.’ Br. 10-15, 39-40. In support, Defendants point to the background section of the patents, but that information makes no suggestion that animators were previously employing the type of rules required by claim. 1. Defendants concede an animator’s process was driven by subjective determinations rather than specific, limited mathematical rules. The prior art “animator would decide what the animated face should look like at key points in time between the start and end times, and then ‘draw’ the face at those times.” Defs.’ Br. 10. The computer here is employed to perform a distinct process to automate a task previously performed by humans. McRO states that animators would initially set keyframes at the point a phoneme was pronounced to represent the corresponding morph target as a starting point for further fine tuning. J.A. 3573 at 8:53 (McRO’s Claim Construction Presentation). This activity, even if automated by rules, would not be within the scope of the claims because it does not evaluate sub-sequences, generate transition parameters or apply transition parameters to create a final morph weight set. It is the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks. Alice, 134 S.Ct. at 2358. This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way. Flook, 437 U.S. at 585-86, 98 S.Ct. 2522; Bilski, 561 U.S. at 611, 130 S.Ct. 3218; Alice, 134 S.Ct. at 2356.

Further, the automation goes beyond merely “organizing [existing] information into a new form” or carrying out a fundamental economic practice. Digitech, 758 F.3d at 1351; see also Alice, 134 S.Ct. at 2356. The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters. While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patentable. Bilski, 561 U.S. at 603, 130 S.Ct. 3218 (discussing 35 U.S.C. § 100(b)). The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S.Ct. at 1301.

The limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters. McRO has demonstrated that motion capture animation provides an alternative process for automatically animating lip synchronization and facial expressions. Even so, we have recognized that “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower concern here is whether the claimed genus of rules preempts all techniques for automating 3-D animation that rely on rules. Claim 1 requires that the rules be rendered in a specific way: as a relationship between sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). The specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization, unless the limits of the rules themselves are broad enough to cover all possible approaches. There has been no showing that any rules-based lip-synchronization process must use rules with the specifically claimed characteristics.

Defendants’ attorney’s argument that any rules-based lip-synchronization process must use the claimed type of rules has appeal, but no record evidence supports' this conclusion. Defendants again rely only on the patents’ description of one type of rules, but the description of one set of rules does not mean that there exists only one set of rules, and does not support the view that other possible types of rules with different characteristics do not exist. The only information cited to this court about the relationship between speech and face shape points to the conclusion that there are many other possible approaches to automating lip synchronization using rules. For example, Amicus cites Kiyoshi Honda, Physiological Processes of Speech Processing, in Springer Handbook of Speech Production 7 (Jacob Benesty et al. éds., 2008) (“Honda”), as support for the proposition that the claimed rules reflect natural laws. Amicus Public Knowledge Br. 12. Honda shows, however, that the interaction between vocalization and facial expression is very complex, and there are relationships present other than those required by the claimed rules. Honda at 24 (“Physiological processes during speech are multidimensional in nature as described in this chapter.”). This complex interaction permits development of alternative rules-based methods ' of animating lip synchronization and facial expressions of three-dimensional characters, such as simulating thé muscle action underlying characters’ facial expressions. Under these circumstances, therefore, we need not assume that future alternative discoveries are foreclosed.

Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” Myriad, 133 S.Ct. at 2119-20 (quotation marks omitted). By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse, 56 U.S. at 113. When looked at as a whole, claim 1 is directed .to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice, 134 S.Ct. at 2358 (citing Diehr, 450 U.S. at 177, 101 S.Ct. 1048). Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.

Because we find that claim 1 is not directed to ineligible subject matter, we do not reach Alice step two. Enfish, 822 F.3d at 1339.

V. Conclusion

Claim 1 is not directed to an abstract idea and recites subject matter as a patentable process under § 101. Accordingly, we reverse and hold that claims 1, 7-9, and 13 of the ’576 patent and claims 1-4, 6, 9, 13, and 15-17 of the ’278 patent are patentable under 35 U.S.C. § 101.

REVERSED AND REMANDED

Costs

No costs.

      . The images in this opinion are drawn from McRO’s claim construction tutorial presented to the district court, J.A. 3573, excerpts of which are used by both parties to explain the prior art method. Defendants dispute McRO’s depiction of the claimed method in that tutorial and we do not rely on any of those depictions. See Defs.’ Br. 46.

      .

      . McRO has asserted claims 1, 7-9, and 13 of the '576 patent and claims 1-4, 6, 9, 13, and 15-17 of the '278 patent. The district court focused its analysis on claim 1 of the '576 patent as representative. It held that neither the different text of the other independent claims nor the added limitations of the dependent claims in either patent affected the result regarding patentability. Patentability Op., 55 F.Supp.3d at 1228-29. The parties do not dispute this conclusion or separately argue any other claims. See McRO Br. 19; Defs.’ Br. 40 n.12. We agree and focus our discussion on this claim.

      . McRO, Inc. v. Bethesda Softworks LLC, No. 12-cv-1509 (D. Del.); McRO, Inc. v. Harmonix Music Sys. Inc., No. 12-cv-1510 (D. Del.); McRO, Inc. v. Rockstar Games, Inc., No. 12-cv-1513 (D. Del.); McRO, Inc. v. Take-Two Interactive Software, Inc., No. 12-cv-1517 (D. Del.); McRO, Inc. v. 2K Games, Inc., No. 12-cv-1519 (D. Del).

      . The Track 1 cases at the time the district court issued its Judgment on Pleadings were: McRO, Inc. v. Namco Bandai Games Am,, Inc., CV-12-10322; McRO, Inc. v. Konami Digital Entm’t, Inc., CV-12-10323; McRO, Inc. v. Sega of Am., Inc., CV-12-10327; McRO, Inc. v. Elec. Arts, Inc., CV-12-10329; McRO, Inc. v. Obsidian Entm’t, Inc., CV-12-10331; McRO, Inc. v. Disney Interactive Studios, Inc., CV-Í2-10333; McRO, Inc. v. Naughty Dog, Inc., CV-12-10335; McRO, Inc. v. Capcom USA, Inc., CV-12-10337; McRO, Inc. v. Square Enix, Inc., CV-12-10338; McRO, Inc. v. Ñeversoft Entm’t, Inc., CV-12-10341; McRO, Inc. v. Trey arch Corp,, CV-12-10342; McRO, Inc. v. Atlus U.S.A., et ál., CV-13-1870; McRO, Inc. v. Sucker Punch Prod-s, LLC, CV-14-0332; McRO, Inc. v. Activision Blizzard, Inc., CV-14-0336; McRO, Inc. v. Infinity Ward, Inc., CV-14-0352; McRO, Inc, v. LucasArts Entm’t Co., CV-14^-358; McRO, Inc. v. 'Sony Corriput, Entm’t Am., LLC, CV-14-0383; McRO, Inc. v. Warner Bros. Interactive Entm't Inc., CV-14-0417.
      The Track 2 cases were: McRO, Inc. v. Valve Corp., CV-13-1874; McRO, Inc. v. Code-masters USA Grp., Inc., CV-14-0389; McRO, Inc. v. Codemasters, Inc., CV-14-0439. Patent-ability Op., 55 F.Supp.3d at 1216 n.l.

      .The parties do not argue that any of the district court's constructions affect patent eligibility or contest the constructions arrived at by the district court. The parties raise two unrelated claim interpretation issues on appeal, discussed below.

      . The claim term is "first set of rules,” but we will follow the shorthand adopted by the district court and parties of referring to the "rules” or "claimed rules.”

      . Defendants do not dispute this is an alternative method for automatic lip synchronization of 3-D animated characters; instead, they argue that "this technology is not remotely similar to the patented technology.” Defs.’ Br. 53.

      . Amicus similarly argues that the claims are directed to a natural phenomenon instead of an abstract idea, specifically "the movement of the mouth to articulate sounds.” Amicus Public Knowledge Br. 11; see also Defs.’ Br. 26.

      , The limitation with the same effect in independent claim 1 of the '278 patent is "applying said first set of rules to each sub-sequence” at column 11 lines 53-54.

      .The parties also dispute whether the rules must take into account the pacing of speech based on the "and time of said phoneme sequence” limitation. Resolution of this question is neither necessary to resolve of the issues on appeal nor indisputably resolved by the claim language. We therefore decline to address this issue in the first instance and express no opinion on whether McRO has waived these arguments or is bound by them for purposes of infringement.

      . See, e.g., Hearing Tr. at 14:00 — 15:09 (Defendants’ counsel acknowledging 'that a process for autopilot or facial recognition using rules could be patented, but arguing the claims here are unpatentable because they do not claim specific rules), available at htlp:// oralarguments.cafc.uscourts.gov/default.aspx? fl=2015-1080.mp3.

      . This is not a case where the patentee’s principal contribution was in discovering relationships that existed in nature, e.g., Myriad, 133 S.Ct. at 2112; animators were previously able to naturally depict the relationship between speech, timing, and facial expression.


source: Caselaw Access Project

author: PROST, Chief Judge.

license: Public Domain

text:
    LIFENET HEALTH, Plaintiff-Appellee v. LIFECELL CORPORATION, Defendant-Appellant
    2015-1549
    United States Court of Appeals, Federal Circuit.
    Decided: September 16, 2016

      Constantine L. TRela, Jr., Sidley Austin LLP, Chicago, IL, argued for plaintiff-appellee. Also represented by Joshua John Fougere, Washington, DC; Michael Son-GER, VINCENT JOHN GALLUZZO, MlCHAEL H. Jacobs, Crowell & Moring, LLP, Washington, DC; Stephen Edward Noona, Kaufman & Cañóles, P.C., Norfolk, VA.
    John M. Desmarais, Desmarais LLP, New York, NY, argued for defendant-appellant. Also represented by Paul A. Bondor, Dustin Guzior, Laurie Stempler; Jeffrey Howard Lerner, George Frank Pappas, Gary Rubman, Covington & Bur-ling LLP, .Washington, DC.
    Before PROST, Chief Judge, REYNA and CHEN, Circuit Judges.
   PROST, Chief Judge.

DefendanL-Appellant LifeCell Corporation (“LifeCell”) appeals from a final judgment of the U.S. District Court for the Eastern District of Virginia entered infa-vor of Plaintiff-Appellee LifeNet Health (“LifeNet”). Following claim construction and trial, a jury found LifeNet’s U.S. Patent No. 6,569,200 (“’200 patent”) infringed by LifeCell and not invalid. The district court denied LifeCell’s motion for a new trial and renewed motion for judgment as a matter of law (“JMOL”) on, inter alia, claim construction, non-infringement, and invalidity. The district court subsequently entered a final judgment consistent with the jury’s findings on infringement, validity, and damages. We affirm.

Background

LifeNet’s ’200 patent claims plasticized soft tissue grafts suitable for transplantation into humans. Such grafts are useful in various medical, orthopedic, dental, and cosmetic surgery applications. The ’200 patent explains that tissue grafts are typically preserved and provided in a dehydrated state, such as through freeze-drying, then rehydrated before implantation. The patent explains that the freeze-drying process is not optimal: it' can cause the tissue to become brittle with a tendency to fracture; it requires time in the operating room to rehydrate the tissue; and even after rehydration the tissue’s properties do not approximate that of normal tissue, and the graft can fail.

The ’200 patent’s “plasticized” tissue grafts avoid these problems. The tissue is preserved not by freeze-drying but by replacing the tissue’s water with biocompati-ble plasticizers, such as glycerol, that provide the hydrating functions of water. These plasticized grafts exhibit properties similar to that of normal tissue and avoid the rehydration process required for freeze-dried tissue.

■ The specification explains that, while the plasticizers' can be removed prior to implantation, they need not be. It therefore discloses various options for the implanting clinician: (1) “direct implantation of the grafts without further processing following removal from the packaging”; (2) “implantation following a brief washing in sterile isotonic saline to remove any remaining traces of plasticizer associated with the immediate surfaces of the grafts”; or '(3) “implantation following an extended (approximately 1 hour) washing with sterile isotonic saline to remove as much plasticizer as possible.” ’200 patent col. 12 11. 9-16.

LifeNet asserted claims 1-4, 7, 8, and 10 in this case. Claims 1-4 are apparatus claims, while claims 7, 8, and 10 are method claims. All of the asserted claims require that “one or more plasticizers are not removed from [an] internal matrix of [the] plasticized soft tissue graft prior to transplantation into a human” (or “the non-removal limitation”). For example, claim 1 recites:

1. A plasticized soft tissue graft suitable for transplantation into a human, comprising:
a cleaned soft tissue graft having an internal matrix; and ‘ one or more plasticizers contained in said internal matrix;
said one or more plasticizers are not removed from said internal matrix of said plasticized soft, tissue graft prior to transplantation into a human.

Id. at col. 2411.10-16 (emphasis added).

The non-removal limitation was added to the claims during prosecution in response to a rejection based on the Cavallaro reference; U.S. Patent No. 5,718,012 (“’012 patent”). Cavallaro also discloses using plasticizers in tissue constructs. In Cavallaro, the plasticizers are used to improve the tensile strength of collagen threads, and after such “conditioning treatment, the plasticizer must ... be removed.” ’012 patent col, 7 11. 40-43. Following the examiner’s rejection for anticipation by Cavallaro, LifeNet amended its claims to add the requirement that “one or more plasticizers are not removed from an internal matrix of [the] plasticized soft tissue graft prior to transplantation into a human.” J.A. 192. As support for the amendment, LifeNet recited the following language from the specification: “Replacement of the chemical plasticizers by water prior to implantation is not required and thus, the ... soft tissue plasticized product can be place[d] directly into an implant site without_” J.A. 193 (first and third alterations in original).

LifeCell’s accused products are soft tissue grafts preserved in a plasticizer solution called Solution E. It is undisputed that users of the accused products are instructed to soak the tissue grafts in saline solution for a minimum of two minutes prior to implantation and that a significant amount of plasticizers are removed during this two-minute rinse. LifeCell contends there is no evidence to suggest that surgeons have ever implanted the accused products without following those instructions.

During claim construction proceedings, the parties disputed the meaning of several terms, including the non-removal limitation. The parties’ dispute at the time centered on the degree of plasticizer removal — whether this limitation required that no plasticizer be removed (LifeCell’s position) or allowed for some, but not all, plasticizer to be removed (LifeNet’s position). Specifically, LifeCell’s proposed construction was that “no processing steps are taken, before transplantation into a human, that result in any amount of the one or more plasticizers being taken out of the internal matrix of the plasticized soft tissue graft.” J.A. 409 (emphasis added). LifeNet proposed that the term meant “without complete replacement of the plasticizer or plasticizers in the internal matrix of the tissue graft prior to direct implantation into a human.” Id. (emphasis added). The district court concluded in its Mafkman order that construction of the entire term was “unnecessary,” observing that the two-word phrase “ ‘not removed’ is easily understood by a person of , ordinary skill in the art to have its plain meaning that no plasticizers are removed prior to transplantation.” J.A. 65. The district court later denied Life-Cell’s motion for summary judgment that this limitation rendered claims 1-4 indefinite for allegedly including a method step in an apparatus claim.

At trial, LifeCell argued non-infringement based on evidence showing, that as much as 50% of the plasticizer in the accused products is removed during the two-minute saline rinse. According to LifeCell, this undisputed removal of plasticizers meant that its products do not meet the claim limitation requiring that plasticizers are “not removed.” In response, LifeNet did not dispute that plasticizers are removed from the accused tissue grafts during the two-miriute rinse .but maintained that no plasticizers are removed from the internal matrix of the tissue, graft, as recited in the non-removal limitation. According to LifeNet’s expert, Dr. David Kaplan, the only plasticizer removed during the rinse is “nonbound” plasticizer that exists in the gaps and voids of the tissue grafts, not plasticizer, “bound” to the graft’s internal matrix. J.A. 8230-31.

After a two-week trial, the jury found that LifeCell’s accused tissue grafts infringed the ’200 patent. It also found that LifeCell had failed to establish any of its invalidity defenses and awarded LifeNet $34,741,971 in damages. After briefing and oral argument, the district court denied LifeCell’s post-trial motions. LifeCell timely filed this appeal.

Wé have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

LifeCell raises several issues on appeal. First, it submits that the district court erred by allowing the jury to resolve a dispute about the scope of the limitation “said one or .more plasticizers are not removed from [an] internal matrix of [the] plasticized soft tissue graft” and that, because the accused products do not meet this limitation, JMOL of non-infringement is warranted. LifeCell. also argues that JMOL of no direct infringement is warranted because, regardless of how the limitation is construed, LifeCell itself does not directly infringe; rather, independent surgeons or their assistants prepare the grafts for transplantation. LifeCell further argues that claims 1-4 are invalid as indefinite for covering both an apparatus and, through the non-removal limitation, a method of using that apparatus. Separately, LifeCell contends that the district court misconstrued “plasticized soft tissue graft” and that, under the correct construction, LifeCell does not infringe as a matter of law. Finally, it seeks JMOL of invalidity on grounds that the asserted claims are either anticipated by the Werner reference, U.S. Patent No. 4,357,274, or rendered obvious over Werner and the knowledge of a person of ordinary skill. In the alternative, LifeCell seeks a new trial on infringement or invalidity.

The district court’s ultimate claim construction is a question of law reviewed de novo, with any subsidiary factual findings regarding extrinsic evidence reviewed for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., — U.S.-, 135 S.Ct. 831, 841, — L.Ed.2d - (2015). We review a district court’s denial of JMOL or a new trial under the law of the regional circuit. Voda v. Cordis Corp., 536 F.3d 1811, 1318 (Fed. Cir. 2008). Under the law of the Fourth Circuit, we review the denial of JMOL de novo, “examining] whether there is substantial evidence in the record upon which the jury could find for the prevailing party, viewing the evidence in the light most favorable to that party.” Carolina Trucks & Equip., Inc. v. Volvo Trucks of N. Am., Inc., 492 F.3d 484, 488 (4th Cir. 2007) (citation and internal quotation marks omitted). Denial of a motion for a new trial is reviewed in the Fourth Circuit for abuse of discretion “and will not be reversed save in the most exceptional circumstances.” Minter v. Wells Fargo Bank, N.A., 762 F.3d 339, 346 (4th Cir. 2014) (citation and internal quotation marks omitted).

A

As noted above, the district court found that no further construction was needed for the limitation “said one' or more plasticizers are not removed from [an] internal matrix of [the] plasticized soft tissue graft prior to transplantation.” See J.A. 65. LifeCell argues that the district court’s failure to resolve a legal dispute regarding the scope of that limitation constituted error under O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008). LifeNet responds that the infringement dispute was properly presented to the jury as a factual issue: whether the two-minute wash of the accused products removes plasticizers from the internal matrix as opposed to the gaps and voids of the tissue graft.

In O2 Micro, we held that “[w]hen the parties raise an actual dispute regarding the proper scope of ... claims, the court, not the jury, must resolve that dispute.” Id. at 1360. There is not necessarily an 02 Micro issue, however, whenever further claim construction could resolve the parties’ dispute. For instance, “[t]he fact that shortly before trial [a party] became dissatisfied with its own proposed construction and sought a new one does not give rise to an O2 Micro violation.” Nuance Commc’ns, Inc. v. ABBYY USA Software House, Inc., 813 F.3d 1368, 1373 (Fed. Cir. 2016). Here, in light of LifeCell’s failure to sufficiently request further construction of the relevant limitation leading up to and' during trial, we find that it fails to properly raise an O2 Micro issue.

According to LifeCell, the district court should have instructed the jury that the asserted claims prohibit the removal of any plasticizer from any part of the tissue graft, i.e., whether that plasticizer is bound to the internal matrix or nonbound in the gaps and voids of the tissue graft. As an initial matter, we observe that Life-Cell’s arguments relate not only to the degree of non-removal required but also, more pertinently, from where those plasticizers are not to be removed. Regarding the degree of removal, the district court agreed with' LifeCell at the Markman stage to the extent the two-word phrase “ ‘not removed’ means that no plasticizer is removed.” J.A. 66. The court did not, however, go on to discuss the second issue presented to us: from where those plasticizers are not to be removed. Indeed, the parties did not dispute at the Markman stage that the non-removal, as expressly recited in the asserted claims, is directed to “the internal matrix of the ... tissue graft.” J.A. 1522.

For context, LifeNet’s infringement theory at trial was that, while a two-minute wash of the accused products removes plasticizers from the gaps and voids of the tissue grafts, it does not remove plasticizer bound to the internal matrix. In other words, LifeNet did not dispute the degree of removal, as LifeCell contends, but looked to the remainder of the limitation to argue that, in the accused products, plasticizers are not removed “from [the] internal matrix.” LifeCell now argues that this evidence does not support an infringement finding because the internal matrix and tissue graft are one and the same — removal of plasticizer from the gaps and voids of the tissue graft also constitutes removal from the internal matrix. See Opening Br. 12 (asserting that “the internal matrix is the tissue graft”).

The problem with LifeCell’s argument is that it did not timely request modification of the district court’s claim construction. LifeCell asserts that it raised the claim construction dispute with the district court, pointing us to a motion in limine, objections and arguments made during trial, and a Rule 50(a) JMOL motion. However, in those instances, LifeCell merely sought to exclude testimony contrary to the district court’s claim construction (which, to be clear, was “[n]o further construction needed”) or to have the court instruct the jury as to the degree of removal. LifeCell did not dispute that the plasti-cizer could not be removed “from the internal matrix of the soft tissue graft.” J.A. 7790. The district court granted-in-part LifeCell’s motion in limine but expressly allowed LifeNet to “offer testimony that the plasticizers removed do not come from the internal matrix.” J.A. 7609. The court also overruled objections at trial on the same evidentiary issue. In doing so, the district court made clear, if it was not clear already, that it was not construing the limitation at issue to bar removal of plasti-cizer from the gaps and voids of the tissue graft.

Nevertheless, LifeCell did not request a new or modified claim construction. In its Rule 50(a) motion for JMOL filed at the close of LifeNet’s infringement case, Life-Cell continued to present the issue as a factual one, arguing that LifeNet offered testimony in violation of the court’s in limine order and that there was insufficient evidence to find infringement.

LifeCell’s objection to the district court’s jury instructions at the end of trial was also insufficient to raise the 02 Micro issue that it presses on appeal. LifeCell merely asked the court to replace “No further construction needed” with a plain-meaning construction consistent with the court’s prior statements: “Plain meaning, that no plasticizer is deliberately removed from the internal matrix of the soft tissue graft prior to transplantation into a human.” J.A. 7689. Even if the district court had agreed to that jury instruction, it would not have been the claim construction that LifeCell now seeks on appeal. LifeCell did riot ask for clarification of what constitutes removal “from the internal matrix.” In fact, the parties agreed to the construction of “internal matrix,” as expressly defined in the ’200 patent’s specification to mean “the intercellular substance of such soft tissue including for example ligaments and tendons, including collagen and elastin fibers and base matrix substances.” J.A. 1521; ’200 patent col. 6 11. 59-65. LifeCell never asked the court to adopt its argument that “internal matrix” is synonymous with “tissue graft.” ■

■ In sum, LifeCell’s evidentiary challenges and request for a claim construction did not adequately present the refashioned claim construction argument that it now raises on appeal. Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“[I]t was incumbent upon [the appellant] to raise its claim construction argument before the district court, and, having failed to do so, [it] cannot now resurrect that argument on appeal by pointing to ambiguous. statements in the record.”). LifeCell’s discontent with the agreed-upon construction of “internal matrix” or with the district court’s view of the longer phrase “said one or more plasticizers are not removed from [an] internal matrix of [the] plasticized soft tissue graft prior to implantation into a human” is not sufficient to give rise to an O2 Micro violation. See Nuance, 813 F.3d at 1373 (finding no O2 Micro issue when the district court adopted the appellant’s proposed plain-meaning construction and the appellant became dissatisfied with that construction shortly before trial).

As LifeNet submits, the parties presented a factual dispute at trial as to whether a two-minute rinse removes plasticizers from the internal matrix of the accused tissue grafts. Although LifeCell does not expressly challenge the sufficiency of the evidence on this issue, it points to purported inconsistencies in LifeNet’s evidence. For example, LifeCell argues that LifeNet’s expert, Dr. Kaplan, contradicted his own sworn statements and that LifeNet’s witnesses provided “uniform trial testimony ... that the internal matrix is the graft.” Opening Br. 35-37. We disagree with these characterizations of the evidence.

We do not accept LifeCell’s argument that Dr. Kaplan’s trial testimony regarding the non-removal of plasticizers from the internal matrix of the accused products “deserves no weight” because it supposedly contradicted his Marlcman declaration. See id. at 36. LifeCell points to an excerpt of Dr. Kaplan’s declaration stating that the ’200 patent discloses plasticizing in a new way that “does not require rehydration, or even washing, to remove the plastieizer(s) from the internal matrix of the graft.” J,A. 1220. Life-Cell interprets that testimony to imply that removal of plasticizer is not difficult, contrasting it with Dr. Kaplan’s trial testimony that removing plasticizer from the internal matrix would be “very difficult because it’s strongly bound into the surrounding structures” and that a two-minute rinse would not remove .plasticizer from the internal matrix. J.A. 8196, 8234. We see no inconsistency in Dr. Kaplan’s testimony. In the declaration excerpt, he was speaking to an advantage of the claimed invention over the prior art, not to the degree of difficulty of removing plasticizer from the internal matrix. Nor did Dr. Kaplan say at trial that plasticizer can never be removed from the internal matrix, only that, in the context of the technology at issue, such removal would disrupt the matrix.

We also reject LifeCell’s assertion that LifeNet’s witnesses agreed that an internal matrix is the same as a tissue graft, such that the asserted claims prohibit removal of plasticizer from anywhere in the tissue graft. LifeCell points to the testimony of a LifeNet witness, Dr. Qin, who said that “when we implant the tissue it’s basically just the matrix.” J.A. 7955. However, not only did Dr. Qin qualify his testimony, but that testimony was also in response to a question about revascularization, not what “internal matrix” means relative to “tissue” in the context of the ’200 patent. Dr. Kaplan, meanwhile, did opine on “internal matrix” in the context of the ’200 patent and stated that it is composed of the components left after a soft tissue graft has been cleaned. When asked if anything other than the internal matrix would be “left behind,” he responded: “Yes. When you go through this process, you are going to leave a huge number of voids in the tissue, ... and also you’ll have a great deal of water left in the [tjissue.” J.A. 8188. On cross-examination, he again differentiated the internal matrix from the tissue graft, opining that the graft “includes [the] internal matrix, ... but there’s other [sic] plenty of loose water, unbound water,” as well as “voids and other spaces where-you’ve deeellularized.” J.A. 8274-75. As noted above, the parties agreed to the construction of “internal matrix,” which was drawn from an express definition in the specification that did not refer to voids or gaps, and Dr. Kaplan’s testimony was consistent with that construction.

Against this background, we find that there was substantial evidence to support the jury’s determination that plasticizer is not removed “from the internal matrix” of the accused tissue grafts before transplantation. The jury was free to rely on Dr. Kaplan’s testimony and to find, as a factual matter, that the accused products meet the limitation at issue. The district court did not err in denying JMOL or a new trial on non-infringement.

B

Based on the non-removal limitation and under the law of divided infringement, LifeCell also argues that it cannot be liable for direct infringement regardless of how that limitation is construed. Direct infringement of an apparatus claim “requires that each and every limitation set forth in a claim appear in an accused product.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). Direct infringement of a method claim requires all steps of the claimed method to be performed by or attributable to a single entity. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379-81 (Fed. Cir. 2007). Although we may attribute a third party’s performance of method steps to a single entity in some circumstances, see Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc) (per curiam), LifeNet did not pursue an attribution theory at trial.

LifeCell posits that the non-removal limitation cannot be met until an independent third party, such as a surgeon, actually prepares and uses the accused products, and it is unknown at the time that LifeCell sells a graft if and how that graft will be used for transplantation. LifeNet counters that “the final product that leaves LifeCell’s hands is complete and ... infringes in that condition” without affirmative action by a third party. Response Br. 44. We agree with LifeNet.

Functional limitations recited in the negative may describe a capability or structural element. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1329 (Fed. Cir. 2003) (holding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it). Here, the preceding language in each asserted claim states that the relevant plasticizers are already part of the tissue graft. See, e.g., ’200 patent col. 24 1. 12 (“plasticizers contained, in [the] internal matrix”); id. at col. 24 11. 41-42 (“impregnating a cleaned, soft tissue graft with one or more plasticizers”). The non-removal limitation simply provides a negative limitation that those plasticizers remain in the internal matrix prior to transplantation.

LifeCell relies on Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005), and Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011), to argue that there can be no direct infringement by a single entity when a limitation is absent until a third party takes action. However, those cases are distinguishable. In Cross Medical, we held that surgical implants with an interface that had to be “opera-tively joined” to a segment of bone could not be directly infringed by the manufacturer insofar as that party “d[id] not itself make an apparatus” with the relevant portion already in contact with bone. 424 F.3d at 1311. Rather, a third party surgeon had to “actually bring the [relevant part] into contact with bone.” Id. at 1310. Similarly, in Centillion, we held that the accused infringer, who provided software to customers, did not itself practice a limitation requiring a “personal computer data processing means” because “it is entirely the decision of the customer whether to install and operate th[e] software on its personal computer data processing means.” 631 F.3d at 1287. The claimed inventions in Cross Medical and Centil-lion affirmatively required action by a third party, without which a limitation would be absent. Here, in contrast, the non-removal limitation clarifies that the recited plasticizer has not been removed and, because the plasticizer is biocompati-ble, can remain in the internal matrix of the tissue graft during transplantation, i.e., it need not ever be removed. This limitation is met without action by a third party. It is satisfied by the graft from the moment it is manufactured unless and until the plasticizer is removed from the internal matrix before transplantation.

Therefore, the non-removal limitation does not relieve LifeCell of direct infringement.

C

LifeCell also contends that because the non-removal limitation describes a method of use while the remainder of claims 1-4 describes an apparatus, those claims are indefinite for covering both an apparatus and a method of using that apparatus. The ultimate determination of indefiniteness is a question of law reviewed de novo, “although, as with claim construction, any factual findings by the district court based on extrinsic evidence are reviewed for clear error.” UltimatePointer, LLC v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016).

LifeCell relies on IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), in which we held a claim invalid for indefiniteness when “as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus.” Id. at 1384. As explained above, however, the non-removal limitation defines a property of the recited plasticizer in that the plasticizer is biocom-patible and does not need to be removed from the internal matrix before transplantation in the context of apparatus claims 1-4, so no later action by a user of the tissue graft is necessary. Those claims therefore do not mix an apparatus with a method of using that apparatus, and the district court did not err in denying JMOL as to indefiniteness.

D

LifeCell separately argues that the district court erred in its construction of “plasticized soft tissue graft.” The district court construed this limitation to require, inter alia, that “free and loosely bound waters of hydration in the tissue have been replaced with one or more plasticizers.” J.A. 63 (emphasis added).

LifeCell contends that the district court mistakenly failed to also require that the tissue graft be “dehydrated,” in the sense that the tissue can only have “low residual moisture.” Opening Br. 43-44. Under that construction, LifeCell contends there can be no infringement as a matter of law because the accused products have at least 60% moisture.- LifeNet responds that “dehydration,” as that word is used in the ’200 patent, merely means that some of the water has been replaced with plasticizer and that the district court’s construction already includes that understanding.

We agree with LifeNet. Although Life-Cell is correct that the written description repeatedly uses the word “dehydrated,” it does so broadly. For example, the specification discusses “soft tissue which is preserved by dehydration, such drying methods including for example, freeze-drying, and/or sublimation and/or air drying and/or liquid substitution.” ’200 patent col.' 6 11. 35-39 (emphasis added). Although the specification states that “[t]he present invention provides a dehydrated or freeze-dried plasticized bone or soft tissue product, preferably containing less than 5% residual moisture,” id. at col. 5 11. 29-3Í, we decline to confine the claims to such an embodiment where, as in this context, there is no indication that the “patentee ... intend[ed] for the claims and the embodiments in the specification to be strictly coextensive,” Phillips, 415 F.3d at 1323. There is no support for the proposition that the claimed soft tissue graft must be dehydrated to a certain degree or completely desiccated. The addition of the word “dehydrated” to the claim construe-; tion would be redundant of the requirement for plasticizer to replace some water, which is already properly part of the district court’s construction.

We decline to adopt LifeCell’s proposed construction of “plasticized soft tissue graft,” and LifeCell does not otherwise argue that the jury’s infringement verdict lacks substantial evidence. Therefore, we do not disturb the court’s- denial of JMOL of non-infringement or a new trial on this ground.

E

Finally, we address LifeCell’s argument that the asserted claims are either anticipated by Werner or obvious in view of Werner and the knowledge of a person of ordinary skill. Anticipation is a question of fact reviewed for substantial evidence. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Obviousness is a question of law reviewed de novo, with underlying factual findings, such as whether a reference discloses a limitation, reviewed for substantial evidence. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324 (Fed. Cir. 2008).

Werner is a patent that discloses a process for treating a soft tissue with hydrogen peroxide and other steps to increase biological stability. At trial, LifeNet disputed whether Werner meets two limitations of the asserted claims: “cleaned” and “plasticized soft tissue graft.” LifeCell argues on appeal that “[t]he evidence allows only one reasonable conclusion” — that Werner discloses both limitations and therefore anticipates the asserted claims. Opening Br. 57. Alternatively, it argues that Werner “at most ,.. would lack a sufficient degree of ‘cleaning’ the tissue, which would have been an obvious modification to a person skill in the art at the time of the invention.” Id.

With respect to a “plasticized soft tissue graft,” the district court construed that limitation to specifically require, inter alia, that plasticization occur “without altering the orientation of the collagen fibers, such that the mechanical properties, including the material, physical and use properties, of the tissue product are similar to those of normal hydrated tissue.” J.A. 69 (emphases added). LifeCell does not direct us to any evidence from its affirmative case to support its burden of showing that Werner discloses a “plasticized soft tissue graft.” See Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346, 1353 (Fed. Cir. 2013) (“[T]he burden of persuasion [as to invalidity] remains with the challenger during litigation.”). Aside from arguing for a different construction of “plasticized soft tissue graft,” which we have rejected, Life-Cell focuses on trying to undermine Dr. Kaplan’s testimony that Werner’s process renders the mechanical properties of tissue different from' native tissue.

A review of the record shows that there is substantial evidence to support a jury finding that Werner does not disclose a plasticized soft tissue graft under the district court’s construction. Dr. Kaplan ex-pláined that, unlike the ’200 patent, in Werner, “the mechanical properties are altered significantly from native tissue,” namely by “increasing] . tensile strength by a factor of 1.7 to 7,0.” J.A. 9262-63; see also J.A. 9279 (explaining that Werner does not retain the “mechanical properties of the native-like tissue”). Although Dr, Kaplan conceded on cross-examination that the data was not statistically different, he maintained that the difference in mechanical properties between Werner’s tissue and native tissue was still a basis for finding those properties not similar enough to meet the court’s construction of “plasticized soft tissue graft.” LifeCell’s expert, Dr. Stephen Badylak, testified that he could not say whether or not the tensile strength difference that Dr. Kaplan relied on was “similar” under the court’s construction. J.A. 9099. However, he agreed on cross-examination that “the mechanical properties,- including the physical and use properties” of Werner “have changed” and stated that he was “starting to think [the change in tensile strength] is different.” J.A. 9097-99.

The ultimate issue on this record was a classic factual dispute that the jury was free to resolve-in LifeNet’s favor. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1361 (Fed. Cir. 2012) (“[S]ubstantial > evidence supports the jury’s implied factual finding that none of these references disclosed the [limitation at issue].”). Since there is substantial evidence to support a finding that Werner fails to disclose “plasticized soft tissue graft,” we need not reach the “cleaned” limitation. The district .court did not err in denying LifeCell’s request for JMOL or a new-trial with respect to anticipation.

LifeCell only argues obviousness on appeal with respect to the “cleaned” limitation. It does not point to any evidence that a “plasticized soft tissue graft,” if not disclosed by Werner, would have been an obvious modification to a person of ordinary skill in the art. As LifeCell fails to provide a basis for disclosure of a “plasticized soft tissue graft” outside of Werner, the district court also did not err in denying JMOL or a new trial on obviousness.

Conclusion

For the foregoing reasons, we affirm the district court’s judgment.

AFFIRMED

      . Even if we were to reach the construction of the non-removal limitation, we see no error with the court’s construction under the principles of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The patentee added the non-removal limitation in response to a rejection during prosecution and cited a passage from the specification stating that the claimed invention could be directly implanted into a patient without preparation. That statement, however, was just one example of the non-removal limitation (no rinse prior to transplantation) and did not necessarily disclaim other embodiments disclosed in the specification (e.g., a brief rinse or a one-hour wash prior to implantation) that are consistent with the specification's teaching that plasticizer need not be replaced by water pri- or to implantation. See TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1125 (Fed. Cir. 2001) (rejecting argument that a claim amendment narrowed the claims at issue because the added limitation was already "present in the original claim").

      . LifeCell does not argue that the apparatus and method claims should be treated differently in our divided infringement analysis.