TAKEAWAY: In a recent decision invoking § 101, the Federal Circuit concluded an apparatus claim for a digital camera reciting “conventional components” with “a high degree of generality” was directed to an abstract idea and not patent eligible.
In Yu v. Apple Inc., No. 2020-1760 (Fed. Cir. June 11, 2021), the Federal Circuit affirmed the district court’s ruling that claims directed to an “improved digital camera” that uses multiple sensors with multiple lenses were patent ineligible under 35 U.S.C. § 101. The patent owner had sued Apple and Samsung for infringement, whereupon the defendants successfully argued before the district court that the claims were not patent eligible under § 101.
In analyzing the claims de novo, the Federal Circuit employed the two-step Mayo/Alice framework to first determine whether the claims were “directed to” unpatentable subject matter. The Court characterized the second step of the analysis as “determin[ing] whether the claim nonetheless includes an ‘inventive concept’ sufficient to ‘‘transform the nature of the claim’ into a patent-eligible application.”
Under step one, the Federal Circuit found the claims recited conventional camera components that perform their basic functions, e.g., a “first image sensor producing a first image,” a “second image sensor producing a second image,” etc., constituting “a generic environment in which to carry out the abstract idea.” Under step two, the Federal Circuit reasoned that claims were “recited at a high level of generality and merely invoke[] well-understood, routine, conventional components to apply the abstract idea of [using one picture to enhance the other in some way].”
In dissent, Judge Newman argued that the claims encompassed a mechanical and electrical device rather than an abstract idea: “The [claimed] camera [] may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.” The Supreme Court denied certiorari on February 22, 2022.
Judge Newman’s view echoes comments from some, including AIPLA, IPO, and the ABA, that the inquiry of whether claims recite features that are well-known and conventional should fall under the ambit of § 102 and § 103, not § 101. Earlier this year, the USPTO implemented the Deferred Subject Matter Eligibility Response pilot program wherein applicants can address all other patentability grounds, including novelty and inventiveness, before subject matter eligibility under § 101.
This decision is a reminder that examiners and courts may take into consideration the level of detail given to device components and their functionality when interpreting claims under § 101. It would be a good practice to build in discussion of innovative functionality of any components, and make sure that such functionality is included in the claims.