In Yu et al v Apple et al (June 2021), the US Court of Appeals for the Federal Circuit affirmed a lower court’s dismissal of a patent infringement lawsuit in favour of Apple and Samsung.

The suit alleged that multi-camera features of Apple and Samsung phones infringed US patent number 6,611,289, but the majority applied the two-step test from Mayo/Alice and agreed with the lower court that claim 1 is ineligible under section 101 because it recites an “abstract idea” without an “inventive concept”. Claim 1 of the ‘289 patent 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 colour 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 analogue-to-digital converting circuitry coupled to said first and said second image sensor and digitising 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 analogue-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.

In the split opinion, the majority held that the digital camera of claim 1 of the ‘289 patent was ineligible for patent protection because, under step 1 of the Mayo/Alice test, “claim 1 is directed to the abstract idea of taking two pictures and using one picture to enhance the other in some way” and “the idea and practice of using multiple pictures to enhance each other has been known by photographers for over a century”.

The majority also held that claim 1 fails to recite an inventive concept under step 2 of the Mayo/Alice test because the recited hardware configuration has “conventional camera components” that “perform only their basic functions”, and is not “an advance” itself.

It was also ruled that the camera “does not itself produce the asserted advance of enhancement of one image by another, which, as explained, is an abstract idea”. In short, the majority held that “the generic hardware limitations of claim 1 merely serve as ‘a conduit for the abstract idea’”.

Abstract dissent

In her dissenting opinion, Judge Pauline Newman argued that the majority improperly injected a novelty evaluation into its section 101 analysis because that approach was expressly rejected by the Supreme Court in Diamond v Diehr (1981), where the court explained: “The question of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter.”

Newman explained that: “Section 101 ineligibility does not arise simply because a device embodies minor and predictable differences from the prior art, as the majority holds.”

In Newman’s view, claim 1 of the ‘289 patent includes patent-eligible subject matter because it recites “a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’”. While claim 1 recites that the digital camera enhances a first image with a second image, Newman asserted that “a statement of purpose or advantage does not convert a device into an abstract idea”.

This is a particularly interesting argument. If the claim had not included the recitation of “producing a resultant digital image from said first digital image enhanced with said second digital image” (or any other statement of purpose), would there have been any question about eligibility?

The resulting claim would recite two image sensors, two lenses, A/D converting circuitry, a memory, and a processor. While that claim would have issues under sections 102 and 103, what would the abstract idea be? So, Newman’s point seems pretty reasonable—further narrowing an eligible claim by adding purpose statements should not be capable of making such a claim ineligible.

Newman expressed concern that the majority’s opinion further obfuscates an area where “inconsistency and unpredictability of adjudication have destabilised technologic development in important fields of commerce”. She also noted that “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”.

Unfortunately for patent owners, applicants, practitioners and US Patent and Trademark Office employees, it seems Newman is correct that this decision will continue to add to the confusion around patent-eligible subject matter. To a certain extent, every invention is based on an abstract idea, so applying the majority’s approach for inventions that include such defined structure or mechanisms will also further limit the scope of eligible subject matter.

The majority’s focus on the lack of an “advance” under step 2 of the Mayo/Alice test is another reminder that describing any improvements to a physical device and/or improvements to the operation of a physical device can help avoid section 101 issues.

To be clear, Newman did not suggest that claim 1 of the ‘289 patent is patentable, but she concluded that the claim “easily fits the standard subject matter eligibility criteria” and warrants substantive review under sections 102 and 103.

Michael Comeau is a partner and patent attorney at US-based IP boutique Fishman Stewart. He can be contacted at: mcomeau@fishstewip.com

Melissa Chapman is a law clerk at Fishman Stewart. She can be contacted at: mchapman@fishstewip.com

Images, from top: Shutterstock / WAYHOME studio, Aleksandra Kovac