By Chaim Levitz

For several years, the issue of patent subject matter eligibility has been a particular challenge for obtaining a United States Patent for claims directed to certain types of biological materials, medical diagnostics, computer-implemented inventions, and business methods. However, claims directed to devices were assumed to be safe from such challenges, as such inventions by definition, do not involve subject matter that might be deemed patent ineligible such as abstract concepts or natural materials. However, in the recent case of Yu v. Apple (hereinafter Yu) a panel of the United States Court of Appeals for the Federal Circuit (CAFC) indicated in a 2-1 opinion that the patent eligibility of even device claims might not be taken for granted any longer.

In Yu, Apple and Samsung were accused of infringing claims 1, 2, and 4 of U.S. Patent No. 6,611,289 (the ‘289 patent), which claim an “improved digital camera.” In a seemingly contradictory decision, the court held the ‘289 patent is directed to an abstract idea, and therefore patent ineligible. To reach this surprising conclusion, the court used the by-now standard two-step Alice/Mayo framework for determining patent eligibility. Briefly, in step one the court determines whether a claim is directed to patent ineligible subject matter, and if so, in step two the court determines whether the claim recites an inventive concept sufficient to transform the patent ineligible subject matter into a patent eligible claim.

In step one of its analysis, the court determined the claims at issue to be directed to a patent ineligible abstract idea.  Although one might think it self-evident that a claim that recites a digital camera is patent eligible, the court in Yu held that the subject claims are “directed to a result or effect that itself is [an] abstract idea and merely invoke[s] generic process and machinery” rather than “a specific means or method that improve the relevant technology” (emphasis added). The court found support for this conclusion in Yu’s specification, which stated that there is a “great need for a generic solution that makes digital cameras capable of producing high resolution images without [high] costs.” From this statement the court concluded that the claimed digital camera is simply a generic environment in which to carry out the abstract idea. 

With respect to step two of the Alice/Mayo test, the court concluded that the claims are written at a high level of generality and merely invoke well-understood, routine, and conventional components to apply the abstract idea of processing and producing high resolution images. Therefore, the claim was found not to include an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. 

Yu argued that the claimed “hardware configuration is vital to performing the claimed image enhancement” and “therefore, the claimed combination of limitations is non-conventional.” However, this was deemed insufficient because conventional components that are key to an advance that is considered abstract, are not enough of an inventive step to transform the abstract idea into a patent-eligible claim. In this regard it should be noted that the court indicted that a non-conventional configuration of elements to achieve the deemed abstract advance would have been sufficient to for the claim to be patent-eligible.  In particular, although the claims at issue recite a camera with two image sensors, the specification also describes a camera with four image sensors, a then-unconventional configuration.  According to the court, a claim reciting four sensors would therefore have been deemed patent-eligible. 

As noted, Yu was not a unanimous decision. In her dissenting opinion Judge Newman emphasized what had seemed to be clear: the claims at issue are directed to a “digital camera having 2 lenses…” In other words, a camera which is a mechanical and electronic device having a defined structure and therefore not an abstract idea. Moreover, Judge Newman noted that a statement of purpose or advantage of an invention in the specification should not convert a patent eligible device to an ineligible abstract idea. 

Only time will tell if Yu is the first signal that the CAFC is preparing to further expand its patentable subject matter restrictions or is just an outlier decision.  However, in the meantime, Yu demonstrates that is important to carefully consider how an invention is described in the specification.  In particular, it will be advantageous to focus on the non-conventional aspects of any device configuration, even if the device is composed of generic components. And lastly, while a patentee would always prefer the broadest claim possible, claiming fall-back positions (such as Yu might have done with his four-sensor camera) can make the difference in patent validity.

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