Patent Case Summaries - June 2021 #2

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Yu, et al. v. Apple Inc., et al., Nos. 2020-1760, -1803 (Fed. Cir. (N.D. Cal.) June 11, 2021). Opinion by Prost, joined by Taranto. Dissenting opinion by Newman.

In a lawsuit involving a patent for an improved digital camera, the district court dismissed the case after concluding that each asserted claim is patent ineligible under 35 U.S.C. § 101. The district court ruled 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 court also ruled that the claims lack an inventive concept, noting that the claimed elements were “well-known, routine, and conventional.”

On appeal, the Federal Circuit affirmed. Applying the two-step Mayo/Alice framework, the Federal Circuit first ruled that representative 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.” The court explained that “only conventional camera components are recited,” and the components “were well known and conventional,” “perform only their basic functions,” and “are set forth at a high degree of generality.”

Turning to step two, the Federal Circuit agreed with the district court that claim 1 “does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention.” The court repeated that “claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components.” Thus, the asserted claims were patent ineligible.

Judge Newman dissented. She explained that the claimed camera “is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” She noted that the claimed camera “may or may not ultimately satisfy all the substantive requirements of patentability,” but “that does not convert a mechanical/electronic device into an abstract idea.” Judge Newman quoted the Supreme Court’s 1981 ruling in Diamond v. Diehr that the question of “whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter.” She explained that here the majority engendered “fresh uncertainties” in the law by holding 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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