Digital camera device claims affirmed as patent ineligible under section 101

Yanbin Yu, et al. v. Apple Inc., Samsung Electronics Co., Ltd., et al.

Docket No. 2020-1760 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1760.OPINION.6-11-2021_1789244.pdf)

NEWMAN, PROST, TARANTO

June 11, 2021

Brief Summary:  DC finding that claims to “improved digital camera” are patent ineligibile (101) affirmed (“whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive”).

Summary:  Yu appealed DC grant of Apple and Samsung’s motion to dismiss after finding the asserted claims related to digital cameras to be patent ineligible (section 101).  Representative claim 1 is directed to “[a]n improved digital camera comprising…a first and second image sensor[s]” that produce first and second images, “two lenses” mounted on one of the sensors, “an analog-to-digital converting circuitry coupled to said first and second image sensor[s]” that digitizes the images, “an image memory, coupled to said..circuitry”, and “a digital image processor, coupled to said image memory” that produces an image from the first and second digital images.  The DC “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’” and “lack an inventive concept, noting ‘the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.’”  The FC panel reviewed the DC decision de novo (Ninth Circuit law, Visual Memory (FC 2017)) using “the two-step Mayo/Alice framework” (Alice, US 2014; Mayo, US 2012).  The FC panel 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” (“‘a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery’ rather than ‘a specific means or method that improves the relevant technology’”).  Yu argued “that claim 1 is directed to a patent-eligible application of this idea as opposed to just the idea itself”, but the FC panel disagreed since “[o]nly conventional camera components are recited to effectuate the resulting ‘enhanced’ image” (“perform only their basic functions… set forth at a high degree of generality”) and “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea” (In re TLI, FC 2016) (“claim 1’s solution to those problems is the abstract idea itself-to take one image and ‘enhance’ it with another”).  The FC panel also disagreed with Yu’s argument “that the asserted advance in the claims is the particular configuration of lenses and image sensors”, explaining that “[e]ven a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims” (ChargePoint, FC 2019).  The FC panel also explained in FN2 that while “Yu’s claimed invention is couched as an improved machine (an ‘improved digital camera’)”, “whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive” (Alice, In re TLI (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”)) The FC panel therefore agreed with the DC that the claims are abstract under Alice’s step one.  It also agreed with the DC that under Alice’s step two, explaining that “even if claim 1 recites novel subject matter” (e.g., overcame prior art rejections during prosecution), “that fact is insufficient by itself to confer eligibility” (SAP, FC 2018; Two-Way Media, FC 2017), and “the claimed hardware configuration itself is not an advance”, “does not add sufficient substance to the underlying abstract idea of enhancement”, and “merely serve[s] as ‘a conduit for the abstract idea’” (TLI).  The DC decision was therefore affirmed.  Judge Newman’s dissent argued the claimed “camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’” and “[a] statement of purpose or advantage does not convert a device into an abstract idea.”

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