“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 Pauline Newman, Dissenting
On June 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s grant of a motion to dismiss for Apple and Samsung in a patent infringement action brought by Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”). Yu alleged infringement of Claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), titled “Digital Cameras Using Multiple Sensors with Multiple Lenses,” and the court dismissed due to ineligibility under Section 101. Judge Pauline Newman dissented.
In the district court, Samsung and Apple filed a Rule 12(b)(6) motion to dismiss the case, which was subsequently granted with prejudice, after the court determined that each asserted claim was patent ineligible under 35 U.S.C. § 101. The district court found that the claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way” and were thus patent ineligible. The court explained that, for over a century, photographers had used multiple photographs to enhance each other, so the claimed elements lacked any inventive concept. Yu appealed to the CAFC.
Mayo/Alice Framework for Patent Eligibility
In reviewing the appeal, the CAFC applied Ninth Circuit law in considering issues of material fact in the light most favorable to the nonmoving party and employed the two-step Mayo/Alice framework for determining patent eligibility. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–73 (2012). First, under the Alice test, a claim is patent ineligible if directed to an unpatentable law of nature, natural phenomenon, or abstract idea. Second, even if a claim passes the Alice test, a claim is patent ineligible under Mayo if it does not contain an inventive concept that “transform[s] the nature of the claim into a patent-eligible application.” The CAFC determined that the asserted claims of the ‘289 patent failed both tests.
Claim 1 is Directed to an Unpatentable Abstract Idea
Under the first step, the CAFC agreed with the district court that the asserted claims of the ‘289 patent were directed to the abstract idea of taking two photographs (optionally at different exposures) and using one to enhance the other. The court focused on the claim language and specification of representative Claim 1, citing Smart Systems in determining that Claim 1 is “directed to a result or effect that itself is the abstract idea” by simply invoking “generic processes and machinery” instead of claiming “a specific means or methods that improves the relevant technology.” Smart Sys. Innovations, LLC v. Chi. Transit Authority, 873 F.3d 1364, 1371 (Fed. Cir. 2017). Yu argued that even though the idea of using multiple photographs to enhance each other had been widely practiced for centuries, Claim 1 was not directed to this idea generally, but a specific, patent-eligible application of this idea. The CAFC disagreed, finding that the claim only recites “conventional camera components to effectuate the resulting ‘enhanced’ image” and as claimed, “perform only their basic functions and are set forth at a high degree of generality.” This was confirmed in the specification, which states “the great need for a generic solution” to the high cost of making digital cameras produce high-resolution images. Therefore, noted the CAFC, Claim 1 simply describes a generic environment in which to implement an abstract idea.
Yu further argued that the claims provide a specific solution to photographs with low resolution and non-vivid coloring due to limited pixel counts and depth and supported this contention with its specification by pointing to its particular configuration of lenses and image sensors. Citing ChargePoint, however, the CAFC reasoned that even a specification containing a high degree of technical details can conclude with abstract claims. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019). Here, the court found that the solution claimed in Claim 1 is merely the abstract idea of enhancing one photograph with another. For example, even though the specification describes the advantages of using a particular four-lens, four-image-sensor configuration where three sensors are color-specific and one is black-and-white, Claim 1 only requires a two-lens, two-image-sensor configuration where no sensors are color-specific.
Claim 1 Holds No Inventive Concept
Under the second step, the CAFC held that Claim 1 does not include any sufficient inventive concept to transform the claimed abstract idea into a patentable invention. Yu argued that the prosecution history of the ‘289 patent paired with its subsequent allowance “over multiple prior art references” demonstrates the novelty of the invention. Citing Two-Way Media, the CAFC noted that claim novelty (even if it existed here) does not automatically confer patent eligibility by itself, as novelty and eligibility are separate inquiries:
“The main problem that [Yu] cannot overcome is that the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d at 1338 (Fed. Cir. 2017). Therefore, it would be inappropriate to confer patent eligibility under the second step of the framework. The CAFC also gave no credence to Yu’s procedural arguments, which stated that the district court erred in: 1) considering the undisputed fact that the practice of using one photograph to enhance another was well-known; 2) ruling on the technology at issue without first listening to expert testimony; and 3) disregarding Yu’s allegations of patent eligibility. The CAFC found that the district court’s consideration of the undisputed practice to be in line with precedent, and the district court was within the scope of its power to determine patent eligibility at the 12(b)(6) motion to dismiss stage without expert testimony. The CAFC also found that the district court did not err in deciding that the claims were directed to patent-ineligible subject matter after reviewing the intrinsic record.
Newman Finds Majority Opinion Inconsistent and Unpredictable
In her dissent, Judge Newman accused the majority of enlarging 35 U.S.C. § 101 to “deny access to patenting.” She disagreed with the finding that Claim 1 of the ‘289 patent is abstract, noting that the claimed camera is “a mechanical and electronic device of defined structure and mechanism. . . not an abstract idea.” The purpose of 35 U.S.C. § 101, she argued, is to distinguish the definition of patent-eligible subject matter from that of copyright-eligible subject matter. She supported this contention by citing the US Supreme Court’s decision in Diamond v. Diehr, which states that 35 U.S.C. § 101 covers patent-eligible subject matter, while the conditions related to novelty are covered separately under 35 U.S.C. § 102. 450 U.S. 175 (1981).
Furthermore, Judge Newman argued that according to the Patent Act of 1793, the “abstract idea” concept relating to patent eligibility is founded in the distinction between general scientific principle and specific application of that principle. Thus, the novelty of an invention is a separate determination from whether the invention falls within a category of statutory subject matter, and § 101 ineligibility “does not arise simply because a device embodies minor and predictable differences from the prior art, as the majority holds.” Citing Diamond v. Chakrabarty, she argued that Congressional intent established that statutory subject matter under § 101 includes “anything under the sun that is made by man.” 447 U.S. 303, 309 (1980). Therefore the ‘289 patent’s claims, which warranted substantive patentability review under § 102 or § 103, never received proper review after being improperly eliminated under § 101.
In closing, Judge Newman reiterated her view that the majority’s holding goes against the public’s interest in a stable patent system:
In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. 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.
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