Whenever the courts redefine a mechanical device as an abstract idea, I struggle with the reasoning that is applied to assess the claimed subject matter for patent eligibility under s. 101. I’m not a computer scientist, so Alice / Bilski’s notion that a computer programmed to perform a function faster than it can be by a human sitting at a desk with pencil and paper does is not a technological advance has some appeal. After all, the idea of patents granted for computerized versions of outdated business practices threatened to overwhelm the PTO. On 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) illustrates the dangers of this oversimplification when used to make a specialized camera claimed in Patent No. 6,611,289 not eligible for the patent. It was a split decision, with Judge Prost writing for Judge Taranto and Judge Newman dissenting.
Transubstantiation is, of course, a religious doctrine which is the change – but not the appearance – of the bread and wine used in the Eucharist to become the actual presence of Christ. I do not intend to discuss religion, but only to give an example of a great leap of faith. Applying this definition so that wine and bread are concrete compositions when the presence of Christ is necessarily an abstract or intangible idea, it becomes evident that a majority of the Yu panel felt that it was appropriate to convert a machine. concrete 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 close 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 conversion circuit coupled to said first and said second image sensor and
digitizing said first and said intensity images to correspondingly produce a first digital image and a second digital image;
an image memory … to store [the digital images]; and
a digital image processor… producing a resulting digital image from the first digital image enhanced with said second digital image.
I have compressed the demand a bit. The panel agreed with the district court that the claims were against “the abstract idea of taking two photos and using those photos to show off one way or another.” The majority continue their Mayo / Alice Step 1 analysis:
“Considering the language of the claim and the specification, we conclude that claim 1” is directed at a result or effect which is itself the abstract idea and simply invokes[s] generic processes and machines “rather than” a specific means or method which improves the relevant technology “.
I have written in previous articles that whether or not a claimed invention is an improvement over the prior art is now a requirement to go beyond both Mayo / Alice test steps. This “improvement test”Has never been used in patent eligibility analyzes. In other words, the fact that a claim offers nothing more than an alternative route to the same result as that found in the prior art should not be a factor taken into account in determining whether the claim is an. “Machine” eligible for patent. This is the task of section 101. Further, once the claim has been simplified into a broad abstract idea, the majority apply a “generic environment” test to the mechanical components cited in the claim. Although the Yu claim cited very concrete components, such as lenses and sensors, because these components were well known and conventional, they only “provide a generic environment in order to realize the abstract idea.” [citing In re TLI Comm. LLC Patent Litigation, 823 Fed. Cir. 607 (Fed. Cir. 2016)]. It is a slippery slope since, if the machine – the camera – does not represent a technological advance – and the components are, at least, described individually according to their “basic functions”, the Mayo / Alice investigation is finished. Almost by definition there can be no inventive step, and the majority certainly agree that step 2 fails to make the abstract idea inventive:
“Here the claims the hardware configuration itself is not a breakthrough and does not itself produce the claimed breakthrough in improving one image by another, which, as explained, is an abstract idea. The claimed configuration does not add enough substance to the underlying abstract idea of improvement – the generic hardware limitations of claim 1 simply serve as a “conduit for the abstract idea”.[citing TLI again.]
Judge Newman’s dissent boils down to first principles: “This camera is a mechanical and electronic device of defined structure and mechanism; this is not an ‘abstract idea’… The specification of the ‘289 patent states that the digital camera provides superior image definition. A statement of intent or benefit does not convert a device into an abstract idea… A device which uses known components does not thereby become an abstract idea and is therefore not ineligible for patent access . Judge Newman considers that the majority opinion “amplifies this instability [of technological development] in all areas, because the court considers that the question of whether the components of a new device are known and conventional affects eligibility under Article 101, without meeting the criteria of patentability of novelty and non-obviousness.
© 2021 Schwegman, Lundberg & Woessner, PA All rights reserved.Revue nationale de droit, volume XI, number 165