Dissent by Judge Newman highlights the expanding instability in the patent eligibility inquiry under § 101June 30, 2021

On June 11, 2021, in Yu v. Apple Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed a decision by the Northern District of California dismissing a patent infringement case on the grounds that the asserted claims were invalid due to patent ineligibility under 35 U.S.C. § 101. A decision by the Federal Circuit regarding § 101 eligibility should theoretically clarify the standard, however, that may not be true as demonstrated in Judge Newman’s dissent.

Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”) brought an infringement suit against Apple Inc. and Samsung (collectively, “Defendants”), alleging infringement of claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (“the ‘289 patent”). Defendants filed a motion to dismiss arguing that the asserted claims were directed to ineligible subject matter under § 101. The district court granted Defendants’ motion and Yu subsequently appealed. The Federal Circuit went on to affirm the district court’s decision, but Judge Newman dissented.

The ‘289 patent is titled “Digital Cameras Using Multiple Sensors with Multiple Lenses”. The district court held the asserted to be directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.” The district court further held that the asserted claims lacked an inventive concept, writing that there was a “complete absence of any facts showing that the [claimed] elements were not well-known, routine, and conventional.”

On appeal, the Federal Circuit applied the two-step AliceMayo framework to determine whether the claims were patent eligible under § 101. When considering step one of the framework, the Federal Circuit agreed with the district court that that the claims were “directed to the abstract idea of taking two pictures … and using one picture to enhance the other in some way.” However, Yu argued that the representative claim, claim 1, was directed to a patent-eligible application of an idea rather than to the idea itself. The Federal Circuit rejected this argument noting that only conventional camera components are recited and holding that “what is claimed is simply a generic environment in which to carry out the abstract idea.” The Federal Circuit further noted that “[e]ach time the specification of the ‘289 patent suggests that a particular configuration is the asserted advance over the prior art, it does so in a four-lens, four-image-sensor configuration in which three of the sensors are color-specific while the fourth is a black-and-white sensor.” However, the Federal Circuit also noted that representative claim 1 only requires “a two-lens, two-image-sensor configuration in which none of the image sensors must be color.” The Federal Circuit wrote that this discrepancy between the specification and the claims highlights that “the focus of the claimed advance is the abstract idea and not the particular configuration discussed in the specification that allegedly departs from the prior art.” Furthermore, at step two of the AliceMayo framework, the Federal Circuit held that claim 1 does not involve an inventive concept “[b]ecause claim 1 is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea identified above”.

Breaking from the decision, Judge Newman penned a dissent criticizing the majority. Judge Newman noted that the invention claimed in the ‘289 patent is a digital camera and that the camera “is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’” Judge Newman wrote that the majority held that the claimed invention is directed to an abstract idea “because the camera’s components were well-known and conventional and perform only their basic functions.” However, Judge Newman argued that that type of inquiry should not be considered under § 101 eligibility and that the claimed invention deserves to be reviewed for novelty and nonobviousness under §§ 102 and 103. Judge Newman further argued that the “digital camera described and claimed in the ‘289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria.” Judge Newman wrote that while the issue of § 101 eligibility has become increasingly unclear and unstable in recent years, particularly in the areas of biological and computer-implemented technologies, this decision “enlarges this instability in all fields”.

As articulated by Judge Newman in her dissent, this decision by the Federal Circuit potentially broadens the instability and lack of clarity surrounding the § 101 eligibility inquiry to include all areas of innovation rather than only biological or computer-implemented technologies. Based on this decision and others in recent years, the issue of whether components of a claimed invention are well-known, routine, or conventional is seemingly part of the subject matter eligibility inquiry rather than being considered when reviewing novelty or nonobviousness. Some, including Judge Newman, disagree with this framework, which leads to the confusion and lack of clarity. Judge Newman concluded her dissent by writing, “[t]he fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of the precedent, and contrary to the public’s interest in a stable and effective patent incentive.”

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com 

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