YU V. APPLE INC., FEDERAL CIRCUIT 2021 (SOFTWARE PATENTS)

Two image sensors, two lenses, analog-to-digital converting circuitry, an image memory, and a digital image processor were not enough hardware. The claims were still found to be too abstract here.

There has been a lot of uncertainty in the field of Software Patents since the Supreme Court’s decision in Alice v. CLS.  The Supreme Court struck down a software patent covering a financial method involving hedging.  Roughly speaking, the Supreme Court invalidated a software patent in which conventional steps were computerized as being “not statutory;” i.e., not meeting the requirements of patent statute 35 U.S.C. 101.  The Federal Circuit and other courts have struggled to interpret this decision and apply it to software patents and business method patents.

In this decision, that uncertainty has been extended dramatically to an invention that involves A Lot of hardware, not just software.

Yu and Zhang sued Apple and Samsung alleging infringement of their U.S. Patent No. 6,611,289 for Digital Cameras Using Multiple Sensors with Multiple Lenses.  The patent relates to a digital camera having multiple analog image sensors with lenses mounted on the image sensors.  Analog-to-digital circuitry digitizes images from each camera and the images are stored in memory. An image processor creates a resultant digital image using images from the two lenses.

Claim 1 is representative and 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 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.

That sounds like a lot of hardware, doesn’t it?  Lenses, sensors, converters, an image processor.  How can it be considered to be too abstract?

Defendants filed a Rule 12(b)(6) motion to dismiss, which the district court granted after concluding that each asserted claim was patent ineligible under 35 U.S.C. § 101. The 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.”

In analyzing whether claims are patent eligible under 35 U.S.C. § 101, the Federal Circuit employed the two-step Mayo/Alice framework.  First, they determine whether a patent claim is directed to an unpatentable law of nature, natural phenomenon, or abstract idea. If so, they then determine whether the claim nonetheless includes an “inventive concept” sufficient to “‘transform the nature of the claim’ into a patent–eligible application.”

In step 1, the Federal Circuit agreed 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.

The problem, according to the Federal Circuit, is that only conventional camera components are recited in the claim–two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor.  It was undisputed that these components were well known and conventional.  According to the Federal Circuit, what was claimed is simply a generic environment in which to carry out the abstract idea.

Turning to step two, the Federal Circuit concluded that claim 1 does not include an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible invention. Because claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea, claim 1 fails at step two.

Yu argued that the digital camera architecture was unconventional because the asserted claims were allowed  over multiple prior art references.  Unfortunately, according to the Federal Circuit, even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility.

Judge Newman dissented and stated that observation of the claims makes clear that that they are for a specific digital camera.  According to Judge Newman, claim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images.  The camera of the ’289 patent may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.

Judge Newman noted how much instability is being caused by these Alice cases, and how this case further expands this instability: “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. The case before us enlarges this instability in all fields, for the court holds 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.