Every time the courts re-define a mechanical device as an abstract idea, I struggle with the rationale that is applied to evaluate the claimed subject matter for patent eligibility under s. 101. I am not a computer scientist so the Alice/Bilski notion that a computer programmed to perform a function more quickly than it can be performed by a human sitting at a desk with a pencil and paper is not a technological advance has some appeal. After all, the idea of patents being granted for computerized versions of hoary business practices threatened to overwhelm the PTO. One the other hand, Diehr warned that all inventions can be reduced to underlying principles of nature which, once known make their implementation obvious. Recently, Yu v Apple , Appeal No. 2020-1760 (Fed. Cir., June 11, 2021) exemplifies the dangers of this oversimplification when it is used to render a specialized camera claimed in U.S. Pat. No. 6,611,289 patent-ineligible. This was a split panel decision, with Judge Prost writing for Judge Taranto and Judge Newman dissenting.
Transubstantiation is, of course, a religious doctrine that is the change—though not the appearance—of the bread and wine used in the Eucharist to become Christ’s real presence. I do not intend to discuss religion, but only to provide an example of a big leap of faith. Applying this definition so that the wine and the bread are concrete compositions while the presence of Christ is necessarily an abstract or intangible idea, it becomes apparent that a majority on the Yu panel held that it is appropriate to convert a concrete machine into an abstract idea which, in this case, is defined as its purpose:
“Claim 1. An improved digital camera comprising:
A first and a second image sensor closely positioned with respect to a common plane…
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
digitalizing said first and said intensity images to produce correspondingly a first digital image and a second digital image;
an image memory…for storing [the digital images]; and
a digital image processor…producing a resultant digital image from the first digital image enhanced with said second digital image.”
I have compressed the claim somewhat. The panel agreed with the district court that the claims were directed to “the abstract idea of taking two pictures and using these pictures to enhance each other in some way.” The majority continues its Mayo/Alice Step 1 analysis:
“Given the claim language and the specification, we conclude 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.’”
I have written in earlier posts that whether or not a claimed invention is an improvement over the prior art is now a requirement to get past both steps of the Mayo/Alice test. This “improvement test” has not historically been used in patent eligibility analyses. In other words, the fact that a claim provides no more than an alternative route to the same outcome found in the prior art should not be a factor given weight in determining if the claim is a patent-eligible “machine”. That is the task of s.101. Furthermore, once the claim has been simplified to a broad abstract idea, the majority applies a “generic environment” test to the mechanical components recited in the claim. Although the Yu claim recited very concrete components, such as lenses and sensors, because these components were well-known and conventional, they merely “provide a generic environment in order to carry out the abstract idea” [citing In re TLI Comm. LLC Patent Litigation, 823 Fed. Cir. 607 (Fed. Cir. 2016)]. This is a slippery slope since, if the machine—the camera—does not add up to a technological advance—and the components are, at least, individually described in terms of their “basic functions”, the Mayo/Alice inquiry is over. Almost by definition, there can be no inventive step, and the majority certainly agrees that Step 2 fails to make the abstract idea inventive:
“Here, 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. The claimed configuration does not add sufficient substance to the underlying abstract idea of enhancement—the generic hardware limitations of claim 1 merely serve as a “conduit for the abstract idea.”[citing TLI again.]
Judge Newman’s dissent gets right down to first principles: “This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’… The ‘289 patent specification states that the digital camera achieves superior image definition. A statement of purpose or advantage does not convert a device into an abstract idea…A device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting.” Judge Newman sees the majority’s opinion as “enlarging this instability [of technological development] 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.”
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