Federal Circuit Affirms §101 Ineligibility of Digital Camera
The U.S. Court of Appeals for the Federal Circuit issued a decision in Yu v. Apple Inc. on June 11, 2021, affirming the Northern District of California’s grant of a motion to dismiss for failure to state a claim upon which relief can be granted. The basis for the motion was that the asserted claims of the patent at issue, U.S. Patent No. 6,611,289 (the ‘289 patent), were found to be directed to an abstract idea and therefore ineligible for patenting under 35 U.S.C. § 101. The split decision rendered by the Federal Circuit panel further articulates the challenges for both applicants and practitioners in determining if an invention is subject matter eligible under current patent practice.
Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”) filed suit against Apple and Samsung (collectively, “Defendants”) in the Northern District of California, alleging infringement by Defendants on parts of the ‘289 patent, titled “Digital Cameras Using Multiple Sensors with Multiple Lenses.” Defendants filed a motion to dismiss on the ground that the asserted claims of the ‘289 patent were subject matter ineligible under § 101. The district court granted the motion, concluding that the asserted claims are directed to the abstract idea of enhancing a set of pictures using the pictures themselves, and that the asserted claims lacked an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter. In response, Yu appealed to the Federal Circuit.
In analyzing whether the asserted claims were patent-eligible subject matter, the Federal Circuit employed the two-step Mayo-Alice framework, which is the standard mechanism for assessing subject matter eligibility. Beginning with step one, the Federal Circuit agreed with the Northern District’s assessment that the asserted claims are directed to the abstract idea of enhancing a set of pictures using the pictures themselves. Arguing against this conclusion, Yu contended that the asserted claims are directed to an application of the abstract idea—thus containing an inventive concept—and therefore can be classified as eligible under § 101. The Federal Circuit rejected this contention and concluded that the use of conventional camera components with a known picture enhancement technique as claimed do little more than create a generic domain for carrying out the abstract idea, thus rendering the asserted claims as being directed to patent-ineligible subject matter.
The Federal Circuit then turned to step two of the Mayo-Alice framework which consists of a search for an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter. Agreeing with the Northern District, the Federal Circuit concluded that the asserted claims are highly general and comprise only conventional camera components used to carry out the abstract idea, and therefore lack a sufficient inventive concept to fulfill patent-eligible subject matter. Culminating in a 2-1 decision, the Federal Circuit affirmed the Northern District’s decision to grant a motion to dismiss on the ground that the asserted claims of the ‘289 patent were subject matter ineligible under § 101.
Judge Pauline Newman wrote the dissenting opinion, finding that the Federal Circuit erred in their assessment of the asserted claims of the ‘289 patent. Quite directly, Newman stated that the digital camera of the ‘289 patent “is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” Newman also criticized the Federal Circuit’s conclusion of the invention being an abstract idea due to its use of conventional camera components, explaining that such a conclusion is not relevant to § 101 and is a violation of the distinction between § 101 and the novelty requirements of § 102 set in 1981 by the Supreme Court in Diamond v. Diehr. In concluding remarks, Newman spoke broadly about the current state of subject matter eligibility under § 101, saying that “inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce” and that “all fields are affected” by the uncertainties.
Aftermath and Teachings for Current Patent Practice
Yu v. Apple Inc. is one of many cases decided by the Federal Circuit in recent years dealing with subject matter eligibility under § 101. Taken on its own, the case could be viewed as largely inconsequential in the grand scheme of patent practice. But when considered along with decisions in other Federal Circuit cases, the “inconsistency and unpredictability,” in the words of Newman, is readily apparent. This has left applicants and practitioners struggling to distinguish between eligible and non-eligible subject matter, particularly for biological and computer-implemented technologies.
With no clear resolution in sight, some argue that it may be time for the Supreme Court to revisit the topic of subject matter eligibility for the first time since their landmark 2014 decision in Alice Corp v. CLS Bank International. Recent activity with another Federal Circuit case appears to indicate that the Supreme Court is willing to do just that. A petition filed in Dec. 2020 asks the Supreme Court to review American Axle & Mfg. v. Neapco Holdings LLC, a 2019 case dealing with subject matter eligibility under § 101 in a similar light as Yu v. Apple Inc. Only time will tell if the Supreme Court decides to act on this case, or another, to help end the uncertainties in subject matter eligibility under § 101 currently affecting the U.S. patent system.
In the meantime, applicants and practitioners can utilize the teachings of Federal Circuit cases when developing patent strategies, of which Yu v. Apple Inc. has several. First, it is important to claim as many structural features or functional aspects of the invention as possible. This makes it more difficult for the claimed subject matter to be declared as representing a patent-ineligible category under § 101. Second, applicants should strive to explicitly claim all, or at least most, of the disclosed embodiments of the invention when filing a patent application. As was made abundantly clear in Yu v. Apple Inc., disclosing but not explicitly claiming a particular embodiment may prove costly in future challenges to the would-be patent’s legitimacy and range of coverage. The expense of defending from such a challenge could dwarf the extra fees required to claim additional embodiments of the invention when filing a patent application. Lastly, applicants should exercise caution when identifying in the specification exactly what the invention is and what makes it novel over the prior art. During examination, claims are given their broadest reasonable interpretation in light of the specification. This means that features or limitations recited in the claims may be interpreted with respect to the text of the specification. A potential consequence of this practice is that statements in the specification restricting the invention to having certain features or limitations may limit coverage of the claims and make them more susceptible to challenges from other parties.