When the Supreme Court began poking around into the law of patent eligibility just over a decade ago, the invention topics that it considered under the abstract idea exception were limited to types of financial transactions.  The invention of Bilski v. Kappos was directed to hedging and that of Alice v. CLS Bank was directed to escrow.  While both inventions were ostensibly computer implemented, they involved software being applied to just one rather narrow field of endeavor.

The Court's findings of invalidity in both cases are open to criticism both on procedural and substantive grounds, and these decisions could have been held to the facts of their cases or those of cases similar thereto.  But that did not happen.  We have seen a continuous expansion of the scope of what is considered to be "abstract" occur in a way that would make 19th-century imperialists jealous.

Since Bilski and Alice, the Federal Circuit has grown the exception to encompass business methods in general, software in general, and more recently mechanical devices and processes involving such devices.  Notably, an electric car charger was deemed abstract in ChargePoint v. SemaConnect, as was a garage door opener in Chamberlain Group v. Techtronic Industries.  More recently, the controversial decision in American Axle v. Neapco found that a method for tuning driveshaft liners that improved damping capabilities was directed to nothing more than a law of nature and therefore ineligible.  American Axle is up for Supreme Court review, but no one expects that the justices will admit that their subject matter eligibility jurisprudence is a Gordian Knot that requires reformulation by way of a sword.

Which brings us to last week's eligibility decision that came down from the Federal Circuit, this one involving a camera.  Yanbin Yu and Zhongxuan Zhang sued Apple and Samsung for alleged infringement of U.S. Patent No. 6,611,289.  Claim 1 of the '289 patent, which was considered representative of all asserted claims, recites:

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 camera of claim 1 has some fairly specific hardware requirements, such as a pair of closely positioned image sensors, lenses, A-D circuitry, memory, and a digital image processor.  Also, the camera is configured to carry out a fairly broad set of tasks, such as producing a first image and a second image, producing a resultant digital image from said first digital image enhanced with said second digital image.  It is the latter functionality that was the focus of the majority opinion from Judges Prost and Taranto, and the perceived nature of this functionality ultimately doomed the claims.

In Alice, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Last year, the Federal Circuit provided a major clue as to how to think about patent eligibility in practice.  In Dropbox Inc. v. Synchronoss Techs. Inc. the Court wrote that "an inventive concept exists when a claim recites a specific, discrete implementation of the abstract idea where the particular arrangement of elements is a technical improvement over the prior art."  This suggests that in order for a claim that is otherwise directed to an abstract idea to be successful under § 101, it should have three qualities: specificity, a technical solution that it provides, and some degree of novelty.  More particularly, there should be a nexus between these three factors -- specificity, technical character, and novelty should appear in the same claim element or at least be explicitly linked in some fashion in the recitation of the claim.

On a Rule 12(b)(6) motion, the District Court found that claim 1 was invalid under § 101 because the claim was directed to the abstract idea of "taking two pictures and using those pictures to enhance each other in some way."  The District Court also opined that there was a "complete absence of any facts showing that the claimed elements were not well-known, routine, and conventional."  Yu appealed.

Applying part one of the Alice test, the Federal Circuit quickly agreed with the District Court.  The majority noted that this process involves "asking what the patent asserts to be the focus of the claimed advance over the prior art."  On review of the language of claim 1 and Yu's specification, the majority found that the claim 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."

It was undisputed in the District Court that "the idea and practice of using multiple pictures to enhance each other has been known by photographers for over a century."  The majority then took this as given and concluded that the hardware aspects of the claimed camera were generic and conventional.

Yu argued that the specification described the technical advance provided by the claimed hardware configuration.  But the majority was unconvinced, finding that the specification described the benefits and advantages of a more specific hardware configuration (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") than what was claimed.  According to the majority, "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."

Holding claim 1 abstract under part one of Alice, the majority moved on to part two.  Here, it reiterated the points made above regarding the well-understood, routine, conventional nature of the hardware configuration.  Yu argued that this configuration was actually unconventional because the claim was allowed by the USPTO "over multiple prior art references."  The majority was unpersuaded, however, and stated that "even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility."

As an aside, this reasoning illustrates the logical contortions that the current application of § 101 forces one to go through.  Claim 1 was considered to be abstract because some of its features were in the prior art and therefore lacked novelty.  But Yu's argument that the claim as a whole was novel has no weight in the § 101 realm.  This type of Kafkaesque reckoning from the Federal Circuit is not new and dates back to 2014's Ultramercial v. Hulu.

In any event, there is no evidence in this opinion that the majority properly considered the combination of elements in claim 1 as required by Alice.  Consequently, the majority ruled that Yu's claims failed the § 101 requirements and were invalid.

Writing in dissent, Judge Newman kicked off by stating that "[t]his camera is a mechanical and electronic device of defined structure and mechanism; it is not an abstract idea."  Put another way, if you can drop it on your foot, it is not an abstract idea.

Judge Newman criticized the majority for departing from the language of claim 1 when considering its eligibility.  She wrote:

I repeat: claim 1 is 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.  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 also took a dim view of the majority's consideration of prior art under § 101.  In her opinion, Diamond v. Diehr and the legislative history of the 1952 Patent Act make it abundantly clear that there is an "explicit distinction" between §§ 101 and 102, and that the majority's wedging of § 102 factors into a § 101 analysis is improper.  She observed that "[s]ection 101 ineligibility does not arise simply because a device embodies minor and predictable differences from the prior art, as the majority holds."[1]

Instead, Judge Newman found that there is historical support for considering claim specificity in the § 101 inquiry.  She wrote:

[T]his reasoning has solidified the foundations of eligibility, drawing on the fundamental distinction between breadth of general scientific principle, and its embodiment in practical application.  This distinction between a general concept and its specific application is implemented in the Patent Act.

So, it appears that she is willing to consider some incorporation of § 112 considerations into § 101.  This is perhaps in contrast to her colleague, Judge Moore, who coined the term "enablement on steroids" to describe how some panels of the Federal Circuit require that the claims (and not just the specification) enable one to practice the invention.

Judge Newman concluded her dissent with a few pointed thoughts on novelty and non-obviousness being part of the eligibility calculus:

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.

The digital camera described and claimed in the '289 patent is 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 (Fed. Cir. 2021)
Panel:  Circuit Judges Newman, Prost, and Taranto
Opinion by Circuit Judge Prost; dissenting opinion by Circuit Judge Newman

[1] While Judge Newman's interpretation of the law is logical and arguably how it should be interpreted, it is fair to note that Justice Breyer wrote in Mayo v. Prometheus that "the §101 patent-eligibility inquiry and, say, the §102 novelty inquiry might sometimes overlap."  But he did not specify or discuss any further the nature of this overlap.  The blame for the current incursion of prior art concerns into questions of eligibility falls largely on the Federal Circuit.