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August 13, 2021

Federal Circuit Affirms Invalidation of Digital Camera Patent as Ineligible Under § 101

Joseph F. Marinelli, Thomas A. James

On June 11, in Yanbin Yu, Zhongxuan Zhang. v. Apple Inc., the Federal Circuit issued a decision finding that a claim directed to an improved digital camera was patent-ineligible under 35 U.S.C. § 101. This decision follows others from the Federal Circuit in which the court found claims containing mechanical components to be subject matter ineligible, including ChargePoint v. SemaConnect, 920 F.3d 759 (2019), The Chamberlain Group v. Techtronic Industries, 935 F.3d 1341 (2019), and American Axle v. Neapco, 939 F.3d 1355 (2019).

In the Yu case, the Federal Circuit considered the following claim:

  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.

In its eligibility determination, the court employed the two-step Mayo/Alice framework. In step one, the court focused on the function of one of the components of the overall claim—the digital image processor—and found that the claim was directed to the abstract idea of “taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.” Plaintiffs argued the claims were directed to a patent-eligible application of the abstract idea. The court disagreed, noting that “the idea and practice of using multiple pictures to enhance each other has been known by photographers for over a century.”

The court further reasoned that (1) the claim recited only conventional camera components that perform their basic function, (2) the camera components describe a generic environment for carrying out the abstract idea, and (3) the solution described in the specification to problems identified in the prior art was the abstract idea itself. The court refused to give weight to the patent specification’s discussion of benefits and advantages over the prior art of a unique configuration of a four-lens, four-sensor embodiment because the claim was to a digital camera having two lenses and two sensors.

Finding that the claim was directed to an abstract idea, the court turned to step two of the Mayo/Alice testconcluding that the claim did not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention. According to the court, the claimed configuration of two lenses, two sensors, and other mechanical and electrical components was not an advancement of the prior art and did not itself enhance one image by another. Plaintiff Yu argued that his configuration of the camera components was unconventional in nature and that the claim was allowed over a number of prior art references. The court responded by noting that even if a claim is novel, it is not necessarily patent-eligible.

Worth noting, Yu’s patent was found to be ineligible in the pleadings stage on a motion to dismiss before any discovery or expert testimony. The court dismissed Yu’s argument that the court should not find the patent ineligible without first hearing expert testimony.

In her dissent, Judge Newman stated that a statement of purpose or advantage—in this case, achieving a superior image—does not convert a device into an abstract idea. She viewed the claim to be for a digital camera having designated structure and mechanisms that perform specified functions, not for the general idea of enhancing camera images. She stated that the claimed digital camera “easily fits the standard subject matter eligibility criteria.” She criticized the majority’s decision as having enlarged the instability in technologic development created by the current state of section 101 law, stating “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 “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.”

The Federal Circuit’s decision in this case is another in which claims reciting structural limitations were found to be directed to an abstract idea. Even though the claim recited two image sensors arranged in a particular configuration with two lenses, circuitry, memory, and a digital image processor, it appears that because the claim also recited that the function of the digital image processor was to enhance a digital image, the Federal Circuit concluded that the claim is directed to ineligible subject matter. This begs the question—Would the result have been the same if the claim had not recited the function of enhancing a digital image? It’s possible the claim would have survived the pleadings stage and may have had a chance to be evaluated for the requirements of novelty and non-obviousness. In other words, patent drafters may want to carefully consider whether to include functional language in certain claims when doing so would expose the claim to the result reached in Yu v. Apple.

Looking at the broader issue, namely the continued extension of section 101 to claims that mostly recite structural elements, the decision seems to add more nuances to the Mayo/Alice two-step test. With respect to the first step, the decision suggests looking at the ultimate purpose of the claimed device to determine whether it is directed to an abstract idea, setting aside whether the claim includes structural elements. With respect to the second step, the decision emphasizes that if a claim is directed to an abstract idea, then the claim must include an inventive concept that matches the description of the advancement over the prior art in the patent specification. 

Finally, because the court affirmed an invalidity determination at the pleadings stage, the evidence considered was limited to the complaint and the patent. For example, no expert testimony was considered on the question of whether the claimed two-lens, two-sensor configuration was capable of achieving the inventive concept of enhancing one digital image using a second digital image. Rather, the court only considered that each time the patent specification suggested an advancement over the prior art, it was in connection with a four-lens, four-sensor configuration, and the court concluded that a two-lens, two-sensor configuration was not an advancement over the prior art. Had Yu included an expert declaration along with the complaint, or had the case advanced past the pleading stage, then expert testimony regarding the inventive concept might have been given some weight along with the patent specification and the court’s own views regarding the inventive concept.

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    Joseph F. Marinelli

    Partner; Fitch, Even, Tabin & Flannery LLP

    Joseph F. Marinelli is a partner at Fitch, Even, Tabin & Flannery, a national intellectual property law boutique headquartered in Chicago. Joe has over 15 years of experience litigating complex patent, trade secrets, and trademark cases in a variety of industries including semiconductors, consumer electronics, financial products and services, and medical devices. He has honed his trial skills through extensive experience in popular patent venues including the Eastern District of Texas, the Northern District of Illinois, the Northern District of California, and the Western District of Wisconsin.

    Thomas A. James

    Attorney; Fitch, Even, Tabin & Flannery LLP

    Fitch Even attorney Thomas A. James has a diverse IP practice with a particular focus on high-tech patent litigation and licensing. As a member of Fitch Even trial teams, he has litigated high-tech patent cases to trial. Tom also assists clients with the acquisition and monetization of intellectual property rights, prepares and prosecutes patent applications, and advises on a broad range of IP issues.