by Dennis Crouch
It appears that we have not yet seen the most invasive nature of contemporary patent eligibility doctrine. Case in point: Yu v. Apple Inc. (Fed. Cir. June 11, 2021) [Yu vs Apple].
Yanbin Yu and Zhongxuan Zhang are the inventors and owners of U.S. Patent No. 6,611,289 (‘Digital cameras using multiple sensors with multiple lenses’). The pair sued Apple and Samsung for patent infringement, but the district court dismissed the cases for failure-to-state-a-claim. In particular, the court found the claims directed toward an abstract idea and thus invalid under 35 U.S.C. § 101. On appeal, the Federal Circuit issued a 2-1 decision affirming with Judge Prost and Taranto in the majority and Judge Newman in dissent.
The asserted claims are directed to a digital camera having multiple analog image sensors with lenses mounted on the image sensors. The claims also include analog-to-digital circuitry to digitize images from each camera so that they can be stored in memory. The claims then require creation of a “resultant digital image” based upon images from the two different cameras. Note, the patent application was filed back in 1999; issued in 2003; and has now expired.
On appeal, the Federal Circuit affirmed that the claims at issue are merely directed to the following abstract idea:
“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.”
The problem, according to the majority, is that claims “merely invoke generic processes and machinery.” (Quoting Smart Sys.) In some ways, the patent’s specification also suggests an abstraction — especially the following line: “there is a great need for a generic solution that makes digital cameras capable of producing high resolution images without enormously incurring the cost of photo-sensitive chips with multimillion photocells.” ‘289 Patent. But, I would suggest reading the specification for an understanding that this is a technological solution.
The appellate panel suggests that the specification probably does include a patent eligible invention in the form of “a four-lens, four-image-sensor [including] a black-and-white sensor.” But, the claims at issue do not require four sensors or the B/W sensor.
In dissent, Judge Newman explains:
This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’ . . . [C]laim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images. The camera of the ’289 patent 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.
Slip Op. Newman’s dissent also walks into the bigger picture of Section 101 jurisprudence:
In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. 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.
The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received.
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.
= = = = =
1. An improved digital camera comprising:
a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
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 digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.
2. The improved digital camera as recited in claim 1, wherein said first image sensor sensitive to said full region of visible color spectrum.
4. The improved digital camera as recited in claim 1, wherein said analog-to-digital converting circuitry comprises two individual analog-to-digital converters, each integrated with one of said first and second image sensors so that said first and second digital images are digitized independently and in parallel to increase signal throughput rate.
Everyone (well, excepting infringers, of course) want to end the 101 / eligibility uncertainty?
Well wouldja’ just lookie here: Turns out the solution’s been staring us all in the face since Alice itself:
Simply define “abstract.”
There. Problem solved.
Now back to 102, 103, and 112.
I think this is a solution literally everyone except Justice Thomas can get behind.
As long as the proper authority for ANY defining is followed.
That is, no legislating from the bench.
At this point, I’d be fine with a clear definition, even from the bench, that Congress is then free to adopt (or more realistically, decline to amend).
No, I am not fine with legislating from the bench in patent law.
The authority to write patent law was given to only branch.
As an attorney you should be ethically offended by what the Court is doing.
Have we not learned from politics, not to put our trust in anybody who asserts that, for any given intractable and emotional problem, there is in fact a very simple solution? Why? Because there never is such a simple solution.
As here. Any definition will be exploited by talented and zealous lawyers. there will inevitably be “creep” and within a year or two the definition will no longer be fit for purpose. Worse, it will lock in deleterious development of the law of eligibility.
This is precisely why Europe declines to write any lock-in definition of “technical”. One wants a patent law that is “future-proof”, capable of Darwinian evolution, not ossified, with the past locked in.
What constitutes “abstract” is changing, faster than ever before..
“ As here. Any definition will be exploited by talented and zealous lawyers.”
So your ‘answer’ is to leave the scrivining to those who grasp patent law worse, AND leave it like a nose of wax?
Have you ever heard of the legal phrase Void for Vagueness?
Also – you again seek to have your inputs to US law, while showcasing a supreme lack of care for the precepts of our law.
Why do you insist on being so rude?
OK
An invention is abstract if its utility is realized within a human mind.
Thanks, I’ll be here all week.
Marty,
You keep on wanting to use words without understanding the legal context (terrain) that you are in.
All utility in the patent sense must be “realizable” in the human mind.
You being here “all week” does reflect a stand-up comedian, but that is not a good thing for you.
I suggest that instead of “here,” you go someplace to learn the terrain of patent law.
On the image enhancement case, what I’m thinking is that with my left eye shut, I am seeing in front of me with my right eye an image of a screen. But if I now open my left eye, the image is enhanced. How about that, eh? Who knew?
Did you “gist” the claim, or forget to take the claim elements as a whole?
What a m o r o n i c comment Max.
Just disgusting. Humans building machines that can do what people do–probably the hardest thing that humans have every done. And l i t t le w a n k i e s constantly, gee, a person can do it so it must be easy.
M o r o n i c. Science illiterate stuff right out of a teenage movie. M o r o n i c.
Opinions may differ, Night, over the precise degree of moronicism in my comment. More important is the degree of relevance it has, to the issue whether enhancing an image digitally is a concept that can ever seriously be seen as “inventive”.
digital is not human.
One sentence sets you on your arse, MaxDrei.
… did Malcolm steal Night Writer’s login info?
Please delete your comment Max and rethink your miserable life.
Credit to you, Night, for asking nicely but, sorry, I’m disinclined to delete my comment. See, it provoked a fair comment from anon. Not many of my comments achieve that.
If you truly are “disgusted” why not click on the report button and report me to Dennis?
So no substantive response from Max.
There was, but the filter snagged it. Perhaps Dennis will release it for publication during the course of the day.
“See, it provoked a fair comment from anon. Not many of my comments achieve that.”
What planet are you on, MaxDrei?
Nearly all of my comments in response to your inanities (and throwing C R P against the wall to see what sticks) are fair comments.
The issue is that you never seem to grasp them, and are repeating your inanities over and over and over.
Do you know how disrespectful it is to ignore the corrections provided to you?
Respectfully Max, this is a surprising — and frankly disappointing — comment from someone with so much experience in the field.
Not necessarily… It follows the USPTO’s own analysis guidance and arguably shows that the claim is directed to an abstract mental process. Or, in the PTO’s parlance:
“The claim recites the limitations of receiving two images and producing a resultant image from one enhanced with the other. The producing limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic hardware components. That is, other than reciting “image sensor(s)”, “lenses”, “analog-to-digital converting circuitry”, “image memory”, and a “processor”, nothing in the claim precludes the producing step from being practically performed in the human mind. For example, but for the generic hardware components, the claim encompasses a human receiving an image from their left eye and right eye (which are “closely positioned with respect to a common plane” and with at least one eye “sensitive to a full region of visible color spectrum”), and combining the images to provide a stereoscopic view with depth information. This limitation is a mental process.”
See, e.g., USPTO’s Example 37, claim 3 (link to uspto.gov).
Broadest REASONABLE interpretation requires the claims be read in light of the specification.
You appear to want to read them in a vacuum.
Pro, I see myself as the “King has no clothes” little boy in the crowd, asking the awkward questions. The more provocative I am, the more responses I get, and the more I learn about what patent people in the USA really think.
As here. See what a range of responses my comment drew out. From where you stand, you say you are “disappointed”. Of course you are. I can understand that. From where i stand, the world looks different.
Careful now Max; for it may be that it is the little boy who has no clothes. 🙂
“ Pro, I see myself as the “King has no clothes” little boy in the crowd, asking the awkward questions. ”
I literally guffawed when I read that.
You sir, are no child calling out the King has no clothes. You sir are a sycophant shill of the EPO Uber Alles.
For all of your “I learn,” you DO NOT LEARN. You have been led to the well of wisdom countless times. So much so, that the carcasses of horses so led there have created a fetid wall that you would rather bask in that stench than drink from the well.
If SCOTUS fails to reverse the CAFC in either American Axle or this case, then I do not see how Congress will be able to avoid overruling Alice via legislation much longer.
The exception is truly swallowing up all of patent law.
I wouldn’t hold my breath for either of these cases. While I think the 101 jurisprudence has gone insane, and 112 would be a much better way to reject these, both American Axle and this case had the same problem – the inventor tried to claim a problem and “solve it”, rather than a way of achieving that solution. You could write either claim without knowing anything about how to solve the problem. Recognizing that a problem exists is not the same as inventing a solution.
“It should not be necessary for this court to point out that a patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.” Application of Sponnoble, 405 F. 2d 578 (CCPA 1969).
The remedy still must be claimed, however. Merely identifying the source of a problem – such as drive shaft vibrations or that images may be noisy – and saying “solve it by any means” does not constitute a patentable invention.
I don’t think “by any means” was actually in the subject claim.
Sure, the class of two modes may have been broad, but they certainly do not include “any means.” For example, there may well be means of applying pickles and peanut butter….
“producing a resultant digital image from said first digital image enhanced with said second digital image”
That purports to cover every way of enhancing an image with a second image, and I can guarantee that I can think of at least one way of doing so that is not enabled by the specification.
was comment was directed to the ‘shaft’ case….
I can dig it. 😉
But that one was just as bad:
“tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”
Or in other words, “I identified a problem – vibrations – so I claim ‘reducing vibrations’.”
Abstract iDan–your comments are typical of the anti-patent judicial activists trying to remove the person of ordinary skill and reality from claim construction.
Try construing the claims from the viewpoint of a person of ordinary skill in view of the specification and you will get a different result.
Never ends with these w a n k i e s.
Gosh, thanks, Night! Clearly, you consider my analysis to be from the perspective of a person of extraordinary skill. I’m blushing here.
“Try construing the claims from the viewpoint of a person of ordinary skill in view of the specification and you will get a different result.”
If a claim has a term in it that needs such interpreting. But one simply cannot IMPORT LIMITATIONS from the specification into a claim in a District Court or IPR, under long established clear case law, as others have noted several times here before, except under 112(f). Nor would most applicants or plaintiffs want such claim scope limitations. They belong in dependent claims.
“That purports to cover every way of enhancing an image with a second image, and I can guarantee that I can think of at least one way of doing so that is not enabled by the specification.”
Why is this a problem with image enhancement, but is not a problem with, say, transmitting or receiving data? Or, to use a mechanical analog, fasteners?
Maybe lack of respect for innovation of the Fifth Kondratiev wave…?
Agreed, Dan. But not so fast there. Was not the Axle claim far more “specific” than “by any means”? I mean, in a flash of inspiration, they invented the concept of “tuning” to solve the driveshaft vibration problem, did they not.
Come on man, credit where credit’s due (these words typed, by the way, just in case it is not 100% clear already, with my tongue firmly thrust into the side of my mouth).
“I mean, in a flash of inspiration, they invented the concept of “tuning” to solve the driveshaft vibration problem, did they not.”
Maybe that’s not the side of your mouth where your tongue is.
It is pretty well understood that it was not the single nature of “tuning,” and the provided cases (Sponnoble, Eibel Process) explicate this.
“it was not the single nature of “tuning,” ”
In English, please?
Dan, anon can speak for himself but what I suspect he is alluding to with his “single” is Applicant’s smoke and mirrors riff on the difference between three different modes of driveshaft vibration and his genius in damping of all three.
The thing is though, it is as old as the hills and has been well-known since forever, that any driveshaft has exactly these three modes of vibration and failure to damp all three renders the shaft unsaleable. it’s always been that way.
Thanks, Max.
Regardless, the claim still identifies the problem, but not the solution: “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”
How is that tuning accomplished? The claim covers every solution, whether or not now invented. Under the current confusion of 101, that does seem to be directed to the abstract idea of a solution rather than an implementation of one.
why would you describe that as smoke and mirrors?
You are showing your lack of appreciation of the underlying technology.
Dan, Applicant (on the EPO family member file) tells the examiner that there is no need in the specification to teach how to “tune” vibrations out of a driveshaft because that much is well-known and conventional. So, I guess we could say that the claim is not directed to a solution. More yet, it is not even directed to a problem to be solved.
Hehe… Awkward…
SCOTUS agrees: Eibel Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45 (1923).
At the risk of belaboring the painfully obvious, Sponoble and Eibel Process are both obviousness cases. You are quite correct that—if your claims are challenged under §103—you might well prevail by citing Sponoble or Eibel Process and showing evidence that you discovered a non-obvious problem.
However, §103 is not the only section in Title 35 that your claims must satisfy. Dan was talking about §112 grounds of challenge. Dan is quite correct that to satisfy §112, one must claim the solution, not the problem. If one is facing the sort of §112 challenge that Dan is discussing, you are not going to do yourself any favors by citing Sponoble or Eibel Process.
Greg has an excellent point – but one which changes in focus BETWEEN claims and support in the specification.
Like it or not, 101 is in view of the claims.
Thus, the legal concepts amenable to 103 are closer to the mark than those amenable to 112.
Additionally, Greg, they’re misreading Sponoble and Eibel… Those cases didn’t say “patentability only requires identifying a problem”, but rather “a patentable invention may lie in the discovery of the source of a problem even though *the remedy* may be obvious once the source of the problem is identified” (Sponoble) and “The invention… was the discovery of the source not before known, *and the application of the remedy*, for which Eibel was entitled to be rewarded in his patent.” (Eibel).
Identification of the problem may lead one to the remedy, but it’s the remedy that should be claimed, not the problem.
For example, Sponoble discovered that moisture vapor transmission between two chambers of a mixing vial was a problem, but claimed:
“… a one-piece, solid and cylindrical plug of butyl rubber having a coating consisting of silicone, said plug being non-toxic and having an outside diameter slightly larger than the inside diameter of said seat so that said plug is slideably removably positioned snugly within said cylindrical portion of reduced cross-sectional area to isolate said chambers from each other and thereby minimize the moisture vapor transmission between said chambers;”
While the purpose of it appears in the clause at the end, he claimed a specific implementation of a solution, rather than just “a multi-chamber vial structure having reduced moisture vapor transmission between chambers.”
Similarly, Eibel’s patent claimed a specific arrangement that utilized a gravity feed, which then solved the problem he discovered. He didn’t claim simply “an improved Fourdrinier machine that doesn’t suffer from rippling”, and in fact, the problem doesn’t appear in his claim 1 at all:
“1. A Fourdrinier machine having the breast roll end of the papermaking wire maintained at a substantial elevation above the level, whereby the stock is caused to travel by gravity, rapidly in the direction of movement of the wire, and at a speed approximately equal to the speed of the wire, substantially as described.”
So it’s a misstatement to claim that Sponoble and Eibel stand for the idea that one may simply claim a problem and “solve it”.
+1
You are absolutely correct. The recognition of a problem is not the same thing as drafting a claim that embodies a solution to that problem. Recognizing a problem exists is a starting point to get to the solution to the problem. The solution is the claim, and the claim is the solution. Just look at the three-pronged test for long-felt need (for a solution to a problem) and the solution is the focus: (1) whether the need for a solution to the need was persistent and recognized by ordinarily skilled artisans; (2) whether the need for a solution had been satisfied by another before the invention by the applicant; and (3) whether the invention satisfied the need for a solution.
The problem with the way the inventor tried to claim a problem and “solve it” exists:
(a) because the inventor does not understand how claims work
(b) because the attorney drafting the claim does not understand the invention
(c) because the attorney drafting the claim does not understand how to draft a claim embodying the solution to the problem
(d) at least one of the above.
“The problem with the way the inventor tried to claim a problem and “solve it” exists:
(a) because the inventor does not understand how claims work
(b) because the attorney drafting the claim does not understand the invention
(c) because the attorney drafting the claim does not understand how to draft a claim embodying the solution to the problem
(d) at least one of the above.”
(e) Because the law is vague and the expected value of pushing the boundaries of claim drafting is higher than the expected value of just claiming what one is clearly entitled to.
Anon-noyed and Ben, the way I see it, it is the duty of a drafter to claim as wide as the case will plausibly bear. So claim 1 will often be more or less untenable.
But there is a yet higher duty, namely to present a set of fall-back positions within the claim set, of increasing specificity.
Why is this higher duty not recognised or taken seriously, within the USA? Is it down to the vague thought that, if you show a USPTO Examiner a narrower claim, that immediately renders unprosecut-able all claims any wider than that? Like, you know, if you offer the Examiners at the USPTO your little finger they will instantly bite off your entire hand?
“Why is this higher duty not recognised or taken seriously, within the USA”
It very much is. Leastwise in my practice.
Newman’s point here – and it is probably understated – is that all of this attempted infusion into the 101 question of any aspects of prior art, conventionality, and the like, is a direct affront to the purpose of the 1952 Act that took a prior paragraph and carved it up to create the sections of 101, 102, 103, and 112.
We’ve been through this mechanism of the Supreme Court before and Congress explicitly pulled back from that.
Every attorney should be upset at this.
…oh, and yes – as Judge Newman point out, this path opens every art unit to the Gordian Knot of “re-capture” of that which Congress set into different sections back into a “Gist/Abstract” sword powered by uncontrolled “prior” considerations.
Correct Anon. I was just dropping by to post much the same. As naked now for all to see, the “abstract idea” test is just the old 2nd circuit patent killer AKA the “gist” or “heart of the invention” test that was explicitly overturned by the ’52 Act. It’s simply not an objective standard. And like the blob, it swallows up all the other patent law. And as history repeats, no patent survives the ‘gist’ test. This is Judge Breyer-ism writ large – as he favors these subjective tests in the name of empowering judicial discretion – to which Breyer-ism believes allows the judge(s) to determine some optimal societal result – and then back fill the reasoning. Breyer wrote an entire book on the subject. You can see this same reasoning in his eBay concurrence, he’s in the efficient infringer camp sorry to say, because he believes this achieves some optimal result – for the greater good of ‘all.’ Bottom line. It’s hubris. And subjective. KSR and ‘common sense.’ Pffft. What kind of evidentiary record for review are you making when ‘common sense’ is the linchpin? You’re not. And of course peak Breyer-ism is declaring the ‘public rights’ doctrine governs the patent right holding of Oil States, and letting that privy court exist. In his world view, so much the better, because we now we have the King and the Courts finding optimal solutions for the greater good. What he doesn’t get, is the massive astroturfing and lobbying efforts, and favor factory he is enabling. I doubt even a visit from the ghost of Justice Story would shake him out of it. Rehnquist kept a lid on this destruction, now it’s the SCOTUS wrecking ball.
Yup iwasthere. Exactly what is happening.
I think too that what I say below is a big part of it as well as this comes from real inventions and real engineers and not judicial “common sense”.
(1) functional claim language –> a family of solutions
(2) family of solutions –> pick a particular solution
(3) particular solution –> implement with a machine
(4) machine that is an embodiment of the invention.
The machine requires space, time, and energy.
This is called the ladders of abstraction.
Information processing requires time, energy, and space to perform.
The conservation of information is an important physical law of the universe.
There are theories about how much time, space, and energy it takes to transform information (and represent.)
And be clear little w a n k i e s that (2) is well defined by a person of ordinary skill in the art.
The set of solutions is something a person that actually works in the field knows distinctly in view of the specification.
The little w a n k i e s will never give up. Just imagine the filth that must go through a mind like Taranto to generate these twisted cases to lessen the patent right.
“(2) is well defined by a person of ordinary skill in the art.”
The flaw in your reasoning is that, in my experience, no examiner determines the level of skill in the art. Skill level determination at the USPTO is an even bigger fraud on the public than Section 101 rejections.
That isn’t a flaw in MY argument. And the way that plays out at the PTO is in the search for prior art. The examiners are searching what others in the field have done using as keywords the functional language. And–boy–the functional language that is used is almost always well-known words from the art or it requires a definition in specification, which does not work out well in Markmen hearings.
So as is typical of your kind on this blog, you have no idea what you are talking about.
So as is typical of your kind (well, you at the very least), you take a criticism of your comment and respond with a personal attack, my pugnacious and thin-skinned colleague.
“The examiners are searching what others in the field have done using as keywords the functional language.”
Which is how they are finding the alleged prior art – the very prior art the examiners are using to ‘implicitly’ determine the level of skill in the art.
I agree with Night Writer – any flaw here (in execution of examination) is NOT a flaw of the legal rubric.
This TOO speaks that focus on ‘patent quality’ should be a focus on ‘patent examination quality.’
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