Reciting camera hardware does not save a claim whose advance is using one image to enhance another

2021-06-11Fed. Cir.

Yu v. Apple Inc., Nos. 2020-1760, 2020-1803 (Fed. Cir. June 11, 2021) (precedential) (Prost, J., joined by Taranto, J.; Newman, J., dissenting), affirming dismissals under Rule 12(b)(6) by the United States District Court for the Northern District of California, Nos. 3:18-cv-06181-JD and 3:18-cv-06339-JD (Donato, J.)

United States Patent No. 6,611,289 was asserted by Yanbin Yu and Zhongxuan Zhang against Apple and Samsung. Representative claim 1 recites an improved digital camera comprising two image sensors closely positioned with respect to a common plane, the second sensitive to a full region of the visible color spectrum, two lenses, analog-to-digital converting circuitry, an image memory, and a digital image processor producing a resultant digital image from the first digital image enhanced with the second. The district court dismissed with prejudice under Section 101 of Title 35 of the United States Code, and the Federal Circuit affirmed. At step one claim 1 is directed to the abstract idea of taking two pictures and using one picture to enhance the other in some way, with only conventional components recited to effectuate the enhanced image. The specification's claimed advance, a four-sensor configuration with one black-and-white sensor, was not in claim 1, which requires two sensors neither of which must be color, and that mismatch confirmed that the focus of the claim was the abstract idea. At step two, conventional equipment can be vital to an advance that is still abstract, and the generic hardware limitations serve as a conduit for the abstract idea. Judge Newman dissented, writing that the camera is a mechanical and electronic device of defined structure and mechanism and not an abstract idea.

What it changesThis is the decision to cite when an engineering team believes a device claim is safe because it recites sensors, lenses and a processor. The claim fell because the processor limitation stated a result, an image enhanced with another image, and nothing in the claim said how. For artificial intelligence in cameras, vehicles, instruments and wearables, the claim should recite the processing that produces the improvement at the level the specification describes it: which signals are combined, in what order, under what condition, and what the model consumes and emits. The second lesson is the mismatch finding. The specification's four-sensor configuration was the actual advance, and claiming a broader two-sensor arrangement cost the patentee the argument. Independent claims drafted for breadth should be paired with a dependent chain that reaches the specific configuration the specification calls the invention, so that at least one claim survives a step one challenge. The case was decided on the pleadings, and the court held that expert testimony was not required.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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