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A Digital Camera (A Mechanical/Electronic Device) is Patent Ineligible

  • July 6, 2021
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Yu sued Apple for infringement of the claims of U.S. Patent 6,611,289. The district court granted Defendants’ motion to dismiss on the basis that the asserted claims were invalid under 35 U.S.C. § 101. Yu appealed. The Federal Circuit (“the Court”) found no error and affirmed.

The ’289 patent is titled “Digital Cameras Using Multiple Sensors with Multiple Lenses.” The district court granted Defendants’ Rule 12(b)(6) motion to dismiss with prejudice after concluding that each asserted claim was patent ineligible under § 101. The district court held that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.” The district court explained that photographers have been using multiple pictures to enhance each other for a long time. The court noted that the asserted claims lack an inventive concept because of “the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.”

On appeal, the Federal Circuit agreed that claim 1 was directed to the abstract idea of taking two pictures and using one picture to enhance the other in some way, under Step One of the two-step Mayo/Alice analysis. “Given the claim language and the specification, we conclude that claim 1 is ‘directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery’ rather than ‘a specific means or method that improves the relevant technology.’”

Yu contended that claim 1 was directed to a patent-eligible application of this idea as opposed to just the idea itself. However, the district court noted that only conventional camera components were recited to effectuate the resulting “enhanced” image—two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor. These conventional components “perform only their basic function and are set forth at a high degree of generality.” “What is claimed is simply a generic environment in which to carry out the abstract idea.”

The Federal Circuit also found Yu’s contrary arguments unpersuasive. The Court noted that “Yu’s claimed invention is couched as an improved digital camera (machine).” “But whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive.’” The Court pointed out that “not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.” Yu argued that the asserted claims were directed to a patent-eligible improvement in digital camera functionality by “providing a specific solution” to problems such as “low resolution caused by low pixel counts” and “inability to show vivid colors caused by limited pixel depth.” The Court noted that “claim 1’s solution to those problems is the abstract idea itself—to take one image and ‘enhance’ it with another.” Yu further pointed to the specification to support that the asserted advance in the claims is the particular configuration of lenses and image sensors. But the Court argued that “[e]ven a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims.” See ChargePoint, Inc. v. Sema-Connect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019). The Court noted that the specification-asserted advance over the prior art is a four-lens, four-image-sensor configuration in which three of the sensors are color-specific while the fourth is a black-and-white sensor. Yet representative claim 1 requires only a two-lens, two-image-sensor configuration in which none of the image sensors must be color. “In these circumstances, the mismatch between the specification statements that Yu points to and the breadth of claim 1 underscores that the focus of the claimed advance is the abstract idea and not the particular configuration discussed in the specification that allegedly departs from the prior art. Accordingly, at step one, we agree with the district court that claim 1 of the ’289 patent is directed to an abstract idea.”

Turning to step two, the Court concluded that claim 1 does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention, because claim 1 is recited “at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea.”

Yu argued that “[t]he unconventional nature of the digital camera architecture is demonstrated by the prosecution history of the ’289 Patent” because the asserted claims were allowed over multiple prior art references. However, the Court pointed out that “even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).”  “Conventional computer equipment can be ‘vital’ to an advance that is still abstract, but not suffice to avoid ineligibility at Alice step two.” The Court noted that the claimed hardware configuration itself is not an advance and does not itself produce the asserted advance of enhancement of one image by another, which is an abstract idea. “The claimed configuration does not add sufficient substance to the underlying abstract idea of enhancement—the generic hardware limitations of claim 1 merely serve as ‘a conduit for the abstract idea.’” The Federal Circuit affirmed the judgment of the district court.

Judge Newman, dissenting, reminded that claim 1 in the ’289 patent was for a digital camera having a designated structure and mechanism that perform specified functions: “claim 1 is not for the general idea of enhancing camera images.”  “This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” The ’289 patent specification states that the digital camera achieves superior image definition. Judge Newman explained that the camera of the ’289 patent “may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.”

Judge Newman cited Diamond v. Diehr to explain that the question of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.” “In contravention of this explicit distinction between Section 101 and Section 102, the majority now holds that the ’289 camera is an abstract idea because the camera’s components were well-known and conventional and perform only their basic functions. That is not the realm of Section 101 eligibility. The Supreme Court disposed of this position in Diehr.” Judge Newman “stress[ed] this history, for the principle that the majority today invokes was long ago discarded. A device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting.” Judge Newman pointed out that the determination of patentability of a new device was not a matter of eligibility under Section 101, but of compliance with all the statutory provisions. “Patent-eligible subject matter must meet the substantive standards of patentability in order to receive a patent, but Section 101 ineligibility does not arise simply because a device embodies minor and predictable differences from the prior art, as the majority holds.” “The question . . . of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter.” Diamond v. Diehr, 450 U.S. 175, 190 (1981).

“As technology advanced, the Supreme Court was cognizant of the importance of technology to the nation’s economy and well-being, and resolved significant new issues. For example, as the field of biotechnology evolved, the Court reiterated that Section 101 embraces any new or useful ‘manufacture’ or ‘composition of matter,’ and reminded us that ‘Congress intended statutory subject matter to ‘include anything under the sun that is made by man.’’ Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). . . .  And as litigation burgeoned in computer-implemented technologies, in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), the Court sought to provide guidance by proposing a two-step analytical process to distinguish abstract idea from specific embodiment. The Alice two-step analysis does not produce the majority's now-effected enlargement of Section 101.”

Judge Newman stressed that “[i]n the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce.” “The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.”

Judge Newman concluded that the digital camera in the ’289 patent was a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. “Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received. The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.”

Yu v. Apple, Inc., No. 2020-1760 (Fed. Cir. Jun. 11, 2021).