Alice in 101-derland
In a June 11, 2021 decision, Yu v. Apple Inc., a Federal Circuit panel issued a precedential decision, with a dissent, upholding the invalidation of patent claims to a digital camera on a motion to dismiss. The claims were deemed unpatentable under § 101 of the Patent Act because they were 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.”1 As demonstrated by the divergence of viewpoints between the majority and dissent, the Yu decision may raise more questions than answers about the application of § 101 to determining patent eligibility.
Section 101 of the Patent Act provides eligibility requirements for patents, setting forth that patents may be granted on “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”2 In the Alice v. CLS Bank decision, the Supreme Court spelled out the test used to determine if an “inventive concept” has transformed an otherwise unpatentable abstract idea into patent eligible subject matter. This is commonly referred to as the Alice test, which is comprised of two steps: first, the court determines whether the claims at issue are directed to one of three patent-ineligible concepts: laws of nature, natural phenomena, and abstract ideas. If so, the second step asks whether those claims are “transform[ed]” into a patent-eligible invention by the addition of “something more.”3 In Alice, the Court explained that “[s]imply appending conventional steps, specified at a high level of generality,” to a method “well known in the art” is “not enough to supply the inventive concept” necessary to transform an abstract idea into a patent-eligible invention.4
Application of the Alice test is not always straightforward in practice. In Yu, the panel majority concluded that a claim to a digital camera (shown below) was not patent eligible after determining that there was a “mismatch between the specification statements … and the breadth of claim 1 [that] underscores 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.”5 The majority further decided that the claim “does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention” because the “claimed hardware configuration itself is not an advance and does not itself produce the asserted advance of enhancement of one image by another.”6
The Yu dissent, however, asserted that the majority opinion was a “further enlargement of Section 101 to deny access to patenting, and further obfuscation of the statute.”7 Indeed, the dissent stated that the majority’s opinion was “[i]n contravention of [the] explicit distinction between Section 101 and Section 102” since “the majority now holds that the [patented] camera is an abstract idea because the camera’s components were well-known and conventional and perform only their basic functions,” which “is not the realm of Section 101 eligibility.”8
This case arose after inventor Yanbin Yu sued Apple Inc., alleging that dual-lens cameras in certain Apple cell phones infringed a patent, titled “Digital Cameras Using Multiple Sensors with Multiple Lenses” (the “’289 patent”).9 Claim 1 of the ’289 patent, which was treated as representative for purposes of the eligibility analysis, reads:
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 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 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.
Apple moved to dismiss the lawsuit, arguing that Yu’s patent claims are invalid under § 101 of the Patent Act, thereby preventing a finding of infringement.10 In response, Yu argued that claim 1 of the patent is directed to patent-eligible subject matter: the application of an abstract idea, rather than the idea itself.11 In so arguing, Yu asserted that claim 1 describes a tangible improvement to technology and hardware, thus adding the required “inventive concept” to the abstract idea of using one photo to enhance another.12
The majority agreed with Apple, explaining that Yu’s claim is simply “a generic environment in which to carry out the abstract idea” and that it fails to add the “significantly more” required under Alice.13 The majority said that claim 1 was “recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea,”14 and implied that if Yu’s patent had claimed a “specific means or method that improves the relevant technology” the outcome would have been different.15 The majority found Yu’s counterarguments unpersuasive; in response to Yu’s contention that the technology “provid[es] a specific solution” to problems such as low resolution and dull colors, the court noted that “claim 1’s solution to those problems is the abstract idea itself.”16
But the dissent stated “the digital camera described and claimed in the ‘289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria.”17 As the dissent explained, “[a] statement of purpose or advantage does not convert a device into an abstract idea.”18 Section 101, the dissent noted, “is a general statement of the type of subject matter that is eligible for patent protection ‘subject to the conditions and requirements of this title.’ Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty.”19 According to the dissent, the question of whether a claim is directed to an abstract idea is unrelated to the question of whether the components of a claimed device are new or well-known. The dissent contended that the conflation of these questions will increase the unpredictability of adjudication for patentees.
In affirming the district court’s decision, the Federal Circuit majority set forth the concept that a claim to a mechanical/electronic device, such as the digital camera at issue here, can nonetheless be considered an “abstract idea” under some circumstances. Thus, even for a mechanical/electronic device, a court may need to find an “inventive concept” in the claim to add the requisite “something more” to an abstract idea to satisfy the Alice test. If the additional inventive concept is considered by a court as being “well known and conventional,” the Yu decision suggests that in some circumstances a claim to a mechanical/electronic device can fall outside of the boundaries of patent eligible subject matter under § 101.