Federal Circuit Report

• Jurisdiction: United States,Federal
• Author: Rex Hwang
• Publication year: 2021
• Citation: Vol. 46 No. 3

FEDERAL CIRCUIT REPORT

Rex Hwang

Skiermont Derby LLP

This Quarter's article focuses on the Federal Circuit's recent decision in Yu v. Apple Inc.¹ In this case, a three-judge Federal Circuit panel once again dove into the "murky morass that is § 101 jurisprudence,"² only to emerge with yet another split decision relating to patent eligibility.

In Yu, a split Federal Circuit panel upheld the invalidation of a digital camera patent under 35 U.S.C. § 101 because, according to the majority, the patented claims were (1) directed to the abstract idea of taking two pictures and using one to enhance the other, and (2) lacked an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention. In a dissenting opinion, Judge Newman was critical of the outcome because the patented claims covered a physical device having a designated structure and mechanisms that perform specified functions. Accordingly, she concluded that while the claimed invention "may not ultimately satisfy all the substantive requirements of patentability...that does not convert a mechanical/electronic device into an abstract idea."³

Yu's precedential decision arguably extends uncertainty to all technical fields under Section 101, and may therefore be a good candidate for further review by the entire Federal Circuit.

BACKGROUND⁴

Yanbin Yu and Zhongxuan Zhang (collectively, "Yu") sued Apple and Samsung (collectively, "Defendants") in the Northern District of California alleging that Defendants infringed U.S. Patent No. 6,611,289 ("the '289 patent"). The '289 patent covers a digital camera invention. Claim 1 of the '289 patent was used as the representative claim for all relevant proceedings, and it recites:

An improved digital camera comprising:

a first and a second 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.

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At the outset of the case, Defendants filed a Rule 12(b)(6) motion to dismiss arguing that the '289 patent claims were patent ineligible under Section 101. The district court granted the motion with prejudice. The district court concluded that the asserted claims were simply directed to "the abstract idea...