June 11, 2021
Picture This: An Improved Camera is an Abstract Idea
In Yu v. Apple, Inc., [2020-1760, 2020-1803] (June 11, 2021), the Federal Circuit affirmed the district court dismissal pursuant to FRCP Rule 12(b)(6) on the grounds that the asserted claims of U.S. Patent No. 6, 611,289, on Digital Cameras Using Multiple Sensors with Multiple Lenses, were invalid under 35 U.S.C. § 101.
The district court 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.” The district court further concluded that the asserted claims lack an inventive concept, noting the complete absence of any facts showing that the claimed elements were not well-known, routine, and conventional.
The Federal Circuit concluded that given the claim language and the specification, that claim 1 is “directed to 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.”
The Federal Circuit further observed that “[o]nly 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 conventional components perform only their basic functions and are set forth at a high degree of generality.”
The Federal Circuit, perhaps unfairly used the patent drafter’s words to seal the fate of the claims, noting that the specification identified a “great need for a generic solution that makes digital cameras capable of producing high resolution images without [high] cost,” and concluding that “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea.
The Federal Circuit also dispatched the concern that the claim was to an improved machine, noting in a footnote that “whether a device is ‘a tangible system (in § 101 terms, a “machine”)’ is not dispositive. See Alice, 573 U.S. at 224; In re TLI Commc’ns, 823 F.3d at 611 (‘[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.’). As discussed herein, the focus of claim 1 is the abstract idea.”
The Federal Circuit also noted the disparity between the broad scope of the claim, and the particular configuration described in the specification:
In these circumstances, the mismatch between the specification statements that Yu points to and the breadth of claim 1 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.
At Step Two, the Federal Circuit concluded that claim 1 does not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention, because 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. The Federal Circuit rejected Yu’s argument about the unconventional architecture, saying that even if claim 1 recites novel subject matter, that fact is insufficient by itself to confer eligibility.
The Federal Circuit affirmed the judgment of the district court.