Federal Circuit Spars over Bounds of Abstractness Inquiry in Affirming Ineligibility of Camera Patent

June 17, 2021

The Federal Circuit has triggered another debate over the proper scope of patent eligibility law. On June 11, a panel majority issued a precedential decision affirming the Alice invalidation of a digital camera patent asserted by inventors Yanbin Yu and Zhongxuan Zhang against Apple and Samsung, ruling that the patent was merely implementing the abstract idea of “taking two pictures . . . and using one picture to enhance the other in some way” using generic components rather than claiming a technological improvement. However, Circuit Judge Pauline Newman dissented, arguing that the majority’s decision improperly erodes the boundaries between patent eligibility and novelty/obviousness—and that the majority was wrong to apply Alice to what amounted to a mechanical invention.


The District Court Takes Two Trips Down the Alice Rabbit Hole

The district court would twice address the eligibility of the asserted 6,611,289 patent over the course of the litigation below, which the plaintiffs filed in October 2018 in the Northern District of California—alleging infringement by Apple (3:18-cv-06181) and Samsung (3:18-cv-06339) through the provision of smartphones with dual-camera systems. The defendants first moved for dismissal under Alice in January 2019, filing a joint motion the following month after the court related the cases. Apple and Samsung argued that the patent is invalid as directed to the abstract idea of “creating an image by using one image to enhance another image, just like the mental process that a human brain performs when it uses the image from the left eye fused with the image from the right eye to produce a single, clear image”. They further asserted that the patent failed at the second step of Alice, stating that “[e]verything else in the claims is old, conventional technology”.

In July 2019, District Judge James Donato granted the motion, ruling that the asserted claims are directed to the abstract idea of “taking two pictures and using those pictures to enhance each other in some way”. However, he compared the subject matter not to human vision but to photography: “Since the earliest years of the photographic medium, those having skill in the art have used multiple exposures, or the combining of multiple images, to enhance images. Judge Donato further noted that the claims are defined “only in terms of their functions”. As for their alleged “inventive concept”, Judge Donato found none, holding that without the abstract idea, “all that is left here is the ‘conventional technology’ of a digital camera, such as image sensors, lenses, circuitry, memory and a processor being used in conventional ways”. Further weighing against eligibility was the claims’ “scope of potential preemption”, held Judge Donato, though he concluded by denying the motion with leave for Yu and Zhang to amend their complaint. The plaintiffs did so later that month, arguing in part that claim 1 is not abstract because it contains “camera architecture elements” (as later characterized by the court).

However, Judge Donato rejected that argument in his ruling on the defendants’ ensuing set of dismissal motions, countering that “the presence of ‘concrete, tangible components’ . . . did not disturb the conclusion” that the claim was directed to an abstract idea. Indeed, Judge Donato doubled down on his original abstractness ruling, underscoring that representative claim 1 describes “a digital camera with basic digital camera parts, performing their basic functions”, apart from language describing the combination of digital images for enhancement by “a generic ‘digital image processor’ . . . That is an abstract idea”. Furthermore, Judge Donato disagreed that the claims solved a specific technological problem, ruling that “[t]he ‘essentially result-focused functional character of claim language’ amply establishes” otherwise (citing American Axle & Manufacturing v. Neapco Holdings, a significant ruling discussed below), noting that “[n]o particular or special equipment is required”. Additionally, Judge Donato rebuffed the plaintiffs’ assertion that an inventive concept is provided by the inclusion of one full-color spectrum sensor and the requirement that the sensors be closely positioned, holding that they had not shown that any of these features were unconventional.


A Federal Circuit Majority Affirms the Patent’s Invalidation

Ruling on appeal, a Federal Circuit panel majority “agree[d] 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” (2020-1760, 2020-1803). The majority then proceeded to rebut the inventors’ argument that the claims were instead directed to a patent-eligible application of this idea, which was “undercut” by the “claim’s remaining limitations”: “Only conventional camera components are recited to effectuate the resulting ‘enhanced’ image—two image sensors, two lenses, an analog-to-digital converting circuitry, an image memory, and a digital image processor”. These components are undisputedly “well-known and conventional” and are used to “perform only their basic functions”, the majority found. As a result, “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea”.

The majority also rejected the patent owner’s arguments that the certain arrangement of lenses and image sensors described in the specification demonstrated a technological improvement. Rather, the majority countered that the “mismatch” between this grouping and a simpler version actually found in the claim language “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”.

As for the second step of Alice, the majority echoed the district court’s second ruling in holding that claim 1 lacked an inventive concept because it “is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea identified above”. The majority further rejected the plaintiffs’ counterargument that because the claimed arrangement is “vital” it is “unconventional”, holding instead that “the claimed hardware configuration itself is not an advance and does not itself produce the asserted advance of enhancement of one image by another, which, as explained, is an abstract idea” (emphasis in original).


Judge Newman’s Dissent: A Mechanical Device Is Not “Abstract”

Judge Newman argued in her dissent that the majority was fundamentally mistaken in rejecting the ‘289 patent as abstract: “This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’”. While the claimed camera “may or may not ultimately satisfy all the substantive requirements of patentability”, Judge Newman asserted, “that does not convert a mechanical/electronic device into an abstract idea”.

Furthermore, Judge Newman continued, the majority’s holding that the claim is abstract because “the camera’s components were well-known and conventional and perform only their basic functions” was in “contravention of [the] explicit distinction between Section 101 and Section 102” long ago settled in Diamond v. Diehr. In that case, the Supreme Court held that “[t]he question . . . of whether a particular invention is novel is ‘wholly apart from whether the invention falls into a category of statutory subject matter’”. The principle invoked by the majority “was long ago discarded”, argued Judge Newman, whereas “[a] device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting”.

The key distinction here, explained Judge Newman, is the one “between general principle and specific application”—as often illustrated by O’Reilly v. Morse, in which the Supreme Court rejected Samuel Morse’s claim to electromagnetism itself but upheld the remaining claims of his patent, which were directed to the “structure and details of the invention that he named the telegraph”. This distinction “is implemented in the Patent Act”, Judge Newman underscored: “Determination of patentability of a new device is not a matter of eligibility under Section 101, but of compliance with all the statutory provisions”.

While acknowledging that the Supreme Court has been justified in accounting for new areas of technology in subsequent Section 101 caselaw, Judge Newman argued that its most recent such ruling in Alice “does not produce the majority’s now-effected enlargement of Section 101”. Indeed, Judge Newman warned that the majority’s ruling here threatens to expand the “destabiliz[ation of] technologic development” that has resulted from current Section 101 caselaw far beyond the areas of innovation presently impacted:

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.

Judge Newman then concluded by arguing that the majority erred by failing to consider the patentability of the ‘289 patent’s camera under Sections 102 and 103, ending with one more warning about the potential impact of its decision: “The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.”

Eyes on the Supreme Court: Stakeholders Push for Review of American Axle Decision

The Federal Circuit’s Yu decision is just the latest example of the appellate court splitting over the application of Alice to a mechanical invention. One such case is American Axle & Manufacturing v. Neapco Holdings, another Federal Circuit ruling presently before the Supreme Court that has ignited a heated debate over the bounds of Section 101 jurisprudence. In American Axle, a divided Federal Circuit held that a patent related to a quieter automotive driveshaft was unpatentably directed to a natural law, Hooke’s Law, in contrast to decisions like Diehr that found a mechanical process implementing a natural law to be eligible. The full Federal Circuit was split 6-6 on whether to rehear the panel decision—falling short of the threshold for en banc review. In May, the Supreme Court asked the acting Solicitor General to file a brief in the resulting appeal on behalf of the US government, sparking hope among some stakeholders that the Court may finally take on another Section 101 case. The appeal has attracted amicus briefs from a range of interested parties—most notably one cofiled by Senator Thom Tillis (R-NC), ranking member of the Senate IP Subcommittee; former Federal Circuit Judge Paul Michel, and former USPTO Director David Kappos. Other amici include additional members of the academic community, business trade associations, and the NYIPLA.

However, last October, the Supreme Court denied certiorari for another controversial ruling—the Federal Circuit’s decision in Chamberlain Group v. Techtronic Industries, commonly referred to as the “garage door” case. In that ruling, the Federal Circuit invalidated a patent claiming a smart garage door opener as unpatentably directed to the abstract idea of “wirelessly communicating status information about a system”, but the patent owner had argued in its petition that the court erred by distilling the patent to “a single supposed point of novelty” rather than considering the claims as a whole—allegedly leading courts taking this approach to nullify “concrete and specific” inventions.

The present state of Alice caselaw, particularly as it impacts such mechanical inventions, are among a variety of reasons that Senator Tillis and other members of Congress have expressed a renewed interest in legislative Section 101 reform in recent months. For more on Congressional advocacy on this issue, see RPX’s latest quarterly report.