Lessons of Yu v. Apple: The Law of § 101 Patent-Eligibility Is Chaos

Here is a case that both demonstrates the dysfunction of U.S. patent law with respect to eligible subject matter under  35 U.S.C. § 101, and offers lessons for practitioners wishing to buttress the patent-eligibility of their claims. In Yu v. Apple, Inc., NO. 2020-1760 (Fed. Cir. June 11, 2021)(precedential) a split Federal Circuit panel affirmed a district court’s holding of ineligibility of claims directed to “an improved digital camera.” Judge Prost authored the court’s opinion, joined by Judge Taranto. Judge Newman dissented.

Independent claim 1 of U.S. Patent No. 6,611,289 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.

Majority Opinion

In granting a Rule 12(b)(6) motion to dismiss, “[t]he district court held that the asserted claims were directed  to  ‘the  abstract  idea  of  taking  two  pictures  and  using  those  pictures  to  enhance  each  other  in  some  way.’” According to the district court, the claims were directed to photography techniques employing one picture to enhance another that had been in use “for over a century.” The majority considering step one of the Alice/Mayo test, agreed that the ’289 patent claims were directed to this abstract idea.

The court rejected the patent owner’s contention that the claims were directed to an application of the abstract idea rather than the abstract idea itself. The claims recited “only conventional camera components” that were claimed to “perform only their basic functions.” The patent owner argued that the claims solved specific problems such as enhancing resolution and showing more vivid colors, but claim 1 only recited the abstract idea of taking one image and enhancing it with another. The patent owner further argued “that the asserted advance in the claims is the particular configuration of lenses and image sensors.” But this argument was undercut by the fact that the specification always described the same configuration as achieving benefits, whereas claim 1 was not limited to that configuration.

Turning to step two of the patent-eligibility test, the majority first rejected the patent owner’s argument that allowance over prior art demonstrated patent-eligibility. It is well-established that novelty “is insufficient by itself to confer eligibility.” Further, merely claiming a hardware configuration did not confer eligibility where “the claimed hardware configuration itself is not in advance and does not itself produce the asserted advance of enhancement of one image by another, which, as explained, is an abstract idea.” (Emphasis in original.)

Finally, the court rejected the patent owner’s argument that “the district court erred at the pleading stage in making certain adverse findings of fact and failing to accept certain allegations in the complaint.” Deciding patent-eligibility at the pleading stage is appropriate, and can be done without expert testimony, where the intrinsic record is dispositive, as it was here.

Dissent

In dissent, Judge Newman emphasized that “claim 1 is for a digital camera having a designated structure and mechanism that performs specified functions.” According to Judge Newman, even if claim 1 were not otherwise patentable (presumably she met with respect to prior art), “that does not convert a mechanical/electronic device into an abstract idea.” Judge Newman then spent most of her opinion discussing the history of § 101 patent-eligibility law, concluding that claim 1 was “easily” patent-eligible.

Some will strongly agree and some will strongly disagree with the respective opinions in this case. However, I suspect all will agree with at least the following two sentences from Judge Newman’s opinion:

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. 

Lessons for Practice

Before commenting on the dysfunction that this case exemplifies in § 101 patent-eligibility law, I want to note one lesson for practitioners. The majority disagreed with Judge Newman that claim 1 of the ’289 patent was patent-eligible even though it recited an arrangement of hardware components. One lesson from this case is to limit claimed embodiments to the actual arrangement of hardware components that provide a disclosed and claimed technical solution. Drafting a specification to discuss the advantages of a particular technical arrangement, as the patentee apparently did here, is a good idea; going a step beyond and explicitly claiming such arrangements is also a good idea.

Now to the dysfunction. Soon after the Supreme Court decided Alice in 2014, Judge Wu in the Central District of California found claims automatically performing lip and facial expression synchronization for animated characters ineligible in McRO, Inc. v. Codemasters Inc. Two years later, in 2016, the Federal Circuit reversed, finding the McRO claims patent-eligible. This is just one example of § 101 whiplash. In isolation, it may not mean much, but we have now had years of, at best, patent-eligibility being determined under a “we know it when we see it” test, and at worst, not being able to know when we do or do not see a patent-eligible claim. The present case is one where on a first reading the claims they have appeared patent eligible, surprising some when they were found to be ineligible. On the other hand, the Federal Circuit has decided cases, such as this one authored by Judge Newman, in which even claims seeming to be directed to business methods are held patent-eligible.

Even if a legislative solution is possible, Congress seems unlikely to act in the foreseeable future, and the courts, and the USPTO can only do so much. The chaos continues.