The Federal Circuit’s recent precedential decision in Yu v. Apple reflects an important data point in the Court’s § 101 jurisprudence as it applies to patents claiming computer-implemented inventions. ___ F.3d ___, 2021 WL 2385520 (Fed. Cir. June 11, 2021). In Yu, a divided Federal Circuit panel affirmed the Northern District of California’s grant of Apple’s and Samsung’s Rule 12(b)(6) motions to dismiss on ineligibility grounds, where the asserted claims were directed to a tangible, physical invention: a digital camera. One might view Yu as merely the latest extension of the Supreme Court’s Alice decision. There, the Court found patent-ineligible claims drawn to a “tangible system,” i.e., system claims reciting including generic computer components to perform the abstract idea described in the method claims. See Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014). However, Yu also can be seen as a sharp contrast with many previous post-Alice cases considering claims comparable to those in Yu. As a result, both patentees and companies facing infringement suits in the smartphone, software, or other computer-related fields should give a fresh look at the eligibility of any asserted claims that include conventional computer elements, in light of Yu.
Yu involves alleged infringement of claims 1, 2, and 4 of U.S. Patent No. 6,611,289. The district court treated claim 1 of the ’289 patent as representative for its eligibility analysis. The claim recites:
- 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.
’289 patent at claim 1 (emphasis added).
Although claim 1 recites concrete, tangible hardware components, the majority still found it directed to an abstract idea, focusing on the functional language concluding the claim: “We agree with the district court that claim 1 is 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.” Yu, 2021 WL 2385520 at *2. The majority found significant that the claim’s physical elements were “[o]nly conventional camera components . . . two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor. Indeed, it is undisputed that these components were well-known and conventional.” Id. The claim’s final, functional element did not save the patent from abstractness because “the idea and practice of using multiple pictures to enhance each other has been known by photographers for over a century” and “[o]nly conventional camera components are recited to effectuate the resulting ‘enhanced’ image . . . And, as claimed, these conventional components perform only their basic functions . . . .” Id. Judge Newman dissented, writing: “[t]his camera is a mechanical and electronic device of defined structure and mechanism” such that the decision outstepped the bounds of § 101. Id. at *5.
Yu thus seemingly reflects a shift from previous decisions from the Federal Circuit and the Northern District of California, which had suggested that claims reciting a physical device—like the digital camera in Yu—should not be considered directed to an abstract idea. In Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1257 (Fed. Cir. 2017), the Federal Circuit found patent-eligible claims drawn to a computer memory system comprising a main memory, a bus, and a cache, all of which were programmable to determine the type of memory stored in the cache. The majority rejected the argument that those claims were directed to “a desired result or outcome in the context of generic computer components and functionality.” 867 F.3d at 1260. Instead, the Court found the claims were “directed to a technological improvement: an enhanced computer memory system” and were therefore patent-eligible. Id. at 1259. Similarly, the Northern District of California in Synchronoss Techs., Inc. v. Dropbox Inc., 226 F. Supp. 3d 1000 (N.D. Cal. 2016) explained claims describing “a new telephone, a new server, or a new physical combination of the two” are not abstract, but “claims that describe a system and methods in ‘purely functional terms’ without ‘any technical details for the tangible components’ are abstract.” 226 F. Supp. 3d at 1006 (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016)).
Unsurprisingly, Yu is already making waves in other cases. Four days after the decision, ALJ Elliot at the U.S. International Trade Commission reconsidered his prior denial of a summary determination motion, in which the respondent had argued the asserted claims were ineligible as abstract ideas, finding now that he should defer resolution of the motion until the conclusion of the evidentiary hearing in that investigation. Certain Digital Video-Capable Devices and Components Thereof, Inv. No. 337-TA-1224, Order No. 30 (June 15, 2021).
Patentees and companies facing infringement suits in computer-related fields such as smartphones or software would be well-served by being cognizant of Yu and the Federal Circuit’s new direction for future § 101 jurisprudence. In particular, patentees should ensure their claims capture any true technological inventions described in their specifications. For example, even in Yu, the Court suggested the patent’s specification may have contained a patent-eligible invention—“a four-lens, four-image sensor configuration . . . [including] a black-and-white sensor”—but Yu’s broad, asserted claims did not capture any such invention. 2021 WL 2385520 at *3. Likewise, defendants ought to look carefully at potential § 101 challenges, even where the asserted claims are drawn to a concrete, tangible device, such as a camera, mobile phone, or computer.