Tuesday, June 15, 2021

Judge Newman's dissent in Yu v. Apple

Judge Newman's dissent begins:

The invention described and claimed in U.S. Patent No. 6,611,289 (“the ’289 patent”) is a digital camera having two lenses mounted in front of separate image sensors, with analog to digital conversion circuitry, a memory that stores the images, and a digital processor that enhances the images. This camera is a mechanical and electronic device of defined structure and mechanism; it is not an “abstract idea.” Observation of the claims makes clear that they are for a specific digital camera: (...)

This is a 101 case:

The majority states that this digital camera is ineligible for consideration for patenting because “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.” Maj. Op. at 5. I repeat: claim 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 (...)

In contravention of this explicit distinction between Section 101 and Section 102, the majority now holds that the ’289 camera is an abstract idea because the camera’s components were well-known and conventional and perform only their basic functions. That is not the realm of Section 101 eligibility. The Supreme Court disposed of this position in Diehr:

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.”

Diehr, 450 U.S. at 189–90 (quoting In re Bergy, 596 F.2d 952, 961 (C.C.P.A. 1979), vacated as moot, Diamond v. Chakrabarty, 444 U.S. 1028 (1980)). I stress this history, for the principle that the majority today invokes was long ago discarded. A device that uses known components does not thereby become an abstract idea, and is not on that ground ineligible for access to patenting.
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.

I respectfully dissent.


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