Still No Clear Picture - Federal Circuit Split on Patent Eligibility

In Yu v Apple Inc 20-1760 the majority decision of divided Court of Appeals for the Federal Circuit (CAFC) decisions has arguably further extended the scope of patent ineligible subject-matter under the Supreme Court’s two-step Mayo/Alice inquiry.

Yu’s US patent 6,611,289 involves claims to improvements to digital cameras by using multiple image sensors, multiple lenses and digital processing to produce enhanced images containing detail that would be lost or compromised if multiple sensors and lenses were not used.

Only claims 1, 2 and 4 were in issue and both parties agree that claim 1 is representative for eligibility purposes.

1. An improved digital camera comprising:
a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
two lenses, each being mounted in front of one of said two image sensors;
said first image sensor producing a first image and said second image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

The District Court granted Apple’s motion to dismiss Yu’s infringement action after it 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 noted that there is a long history of using multiple photographs to create enhanced photographic images and further found that the claims involve elements that are well-known, routine and conventional.

On appeal the CAFC majority held that the District Court was correct in finding under step 1 of the Alice/Mayo eligibility test that the claims are directed to the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The majority found that claim 1 is directed to a result or effect that itself is the abstract idea and merely invokes generic processes and machinery rather than a specific means or method that improves the relevant technology. The CAFC rejected Yu’s contention that the claims are directed to patent eligible applications of the abstract idea, finding that the enhanced images were obtained by using known components performing their known functions, with these recited at too high a degree of generality in the claims. While the specification shows that the enhanced images can be obtained by specific configurations of sensors and lenses, the asserted claims mention less sensors and lenses and only captured an abstract idea that was too far removed from the specification’s disclosure of the novel features.

The majority also rejected Yu’s contention that the patent affirmatively satisfied the step 2 determination of whether the claim nonetheless includes an inventive concept sufficient to transform the nature of the claim into a patent-eligible application. Whereas Yu argued that claim 1 was found to be novel, the majority noted that a novel claim can still be only an abstract idea. Further, while the claim mentions hardware configurations that are vital to the invention, the mentioned configurations were considered insufficient to elevate the claim beyond an abstract idea as the claimed hardware configuration itself (in contrast to those detailed in the specification) is not and does not produce the asserted enhancement of one image by another. By not having recourse to the inventive concept disclosed in the specification, the asserted claims were held to lack an inventive concept sufficient to transform them from being mere abstract ideas.

In her dissenting decision Judge Newman responds to the majority’s decision by emphasising that the claimed invention is a mechanical and electronic device of defined structure and mechanism and as such is not an abstract idea and is not converted into one by a statement of purpose or advantage. Judge Newman reproached the majority for finding the claimed invention to be an abstract idea on account of failing to separate eligibility under §101 from novelty under §102 when it noted that the claimed invention only uses known components performing their known functions. The separation of eligibility under §101 from novelty under §102 was deemed necessary by the Supreme Court in Diamond v Diehr, 450 U.S. 175 (1981), where at 189-90 it stated:

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a cate-gory of statutory subject matter.”

Judge Newman considered the majority were fundamentally wrong in considering that the patentability of a new device involved the abstract idea ground of ineligibility under § 101. Judge Newman considered that when the Supreme Court proposed the two-step patent eligibility test in Alice Corp. Pt. Ltd v CLS Bank International, 573 U.S. 208 (2014) one of its purposes was to distinguish between abstract ideas and specific embodiments. In finding Yu’s specific embodiment to be an abstract idea Judge Newman considers that the majority have gone beyond the Supreme Court’s guidance and so have effectively expanded the scope of the abstract idea ground of ineligibility under § 101. She considered such an expansion will affect all fields of patenting activity rather than the biological and computer-implemented technology fields that are the main focus of the § 101 ineligibility grounds and is contrary to statute, precedent and public interest.

Author: Quinn Miller

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