Yu and the Case of Shifting Tests for Patents
The U.S. Court of Appeals for the Federal Circuit affirmed the invalidation of Yu et al.’s patent on a motion to dismiss in Yanbin Yu v. Apple Inc., No. 2020-1760, 2021 U.S. App. LEXIS 17434 (Fed. Cir. June 11, 2021). U.S. Patent No. 6,611,289 claims digital cameras having multiple image sensors and software for combining the images from those sensors to produce higher quality pictures. The application was filed in 1999, long before the deployment of multiple cameras on smartphones now commonplace throughout the industry. The patent teaches that, through software for combining images, multiple low-cost sensors can produce images of comparable quality to those that would typically require a very expensive, very large sensor.
Summary of Decision
When looking to whether a patent claims the kind of thing eligible for patent protection, the courts have adopted a two-part test. First, they consider whether the claims are directed to something that can’t be patented, like a mental process. Then, the courts ask whether there is more to the claims to transform them into something patentable.
For the first step, the Court held that the claims were “directed to the abstract idea of taking to pictures … and using one picture to enhance the other in some way.” The majority explained that the hardware in the claim was conventional, and the real solution merely took a practice known in photography “for over a century” and imported it into the digital realm. Pointing to the patent’s own description, the Court characterized the hardware recited in the claims as nothing more than a “generic solution.” The Court also contrasted the patent’s description with the claims. The specification described some four-sensor configurations as producing a particularly significant advance in image quality. However, the broadest claims only required two sensors, suggesting that the real improvement did not involve hardware at all.
Turning to the second step, the majority stated there was nothing more in the claims than the generic hardware and abstract software. Straightforwardly implementing a conventional technique from other kinds of photography into digital photography through software was not enough.
Judge Newman wrote a dissent, arguing that the other judges on the panel had misapplied the test. She pointed out the absurdity of calling a claim requiring multiple image sensors, lenses, circuitry, memory, and a processor nothing more than an “abstract idea.” Recognizing that this hardware configuration serves a stated purpose and realizes an identified advantage should not make claims to an electromechanical device any less patentable. Judge Newman also lamented that the loose, subjective analysis employed by the majority was inappropriate for a motion to dismiss, before other, more objective standards for patentability can be addressed.
This patent was drafted before the two-part test destabilized expectations across multiple fields, like software and medical diagnostics. It’s likely that the drafter’s primary concern was that a court might find enough detail had not be provided for someone skilled in the art to make and use the invention. Statements that a solution is “generic” might have signaled that implementation would be easy once the information in the patent’s disclosure was available. Unfortunately, those statements, and mismatch between the description and claims, rendered the patent invalid in this situation. As tests shift, patent practitioners should be updating their strategies to reduce the risk this kind of negative outcome for their clients. At a minimum, care should be taken to ensure the protection sought is commensurate with the supporting description, and commensurate with any characterization of advantages over the prior art.