Patent Claims for Digital Camera Are Not Patent Eligible
In two related actions in the U.S. District Court for the Northern District of California brought by Yanbin Yu and Zhongxuan Zhang (patentee), Apple Inc. and Samsung Electronics Co., Ltd. were sued for infringement of U.S. Patent No. 6,611,289, entitled "Digital Cameras Using Multiple Sensors with Multiple Lenses". The dispute is over use of dual-lens cameras in cell phones. Yu alleged that the dual-lens cameras in Apple and Samsung cell phones infringe the '289 patent.
Apple moved to dismiss for patent ineligibility under 35 U.S.C. § 101, and Samsung joined the motion. In Defendants' view, the asserted claims cannot be patented because they "are directed to the abstract idea of creating an image by using one image to enhance another image," without any saving inventive concept. The Court agreed and dismissed the complaints.
The '289 Patent
The '289 patent issued August 26, 2003, and is directed to improving digital photos that were said to lack resolution and dynamic color range of traditional film images. The patent claims an invention of a digital camera capable of producing high resolution images with better colors and details in a greater range through an arrangement of multiple image sensors, lenses, and a processor to produce high quality and film-like true color digital images.
Claim 1 is representative and recites:
1. An improved digital camera comprising:
a first and 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.
Patent Ineligibility under Section 101
For the merits of the Section 101 issue, the scope of patentable subject matter includes "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. But, of course, abstract ideas are specific exceptions to § 101's broad patent-eligibility principles. According to Alice, Courts must distinguish between patents that claim the building blocks' of human ingenuity and those that integrate the building blocks into something more, because overbroad patent protection would risk disproportionately tying up the use of the underlying ideas.
Applying the two-step analysis of Alice, the District Court first determined whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea.
Claim 1 recites a digital camera, comprising "[1] a first and a second image sensor closely positioned with respect to a common plane . . . [2] two lenses . . . [3] said first image sensor producing a first image and said second image sensor producing a second image . . . [4] an analog-to-digital converting circuitry coupled to said first and said second image sensor . . . [5] an image memory . . . and [6] a digital image processor . . . producing a resultant digital image from said first digital image enhanced with said second digital image."
The Court concluded that this plain language makes clear that claim 1 is drawn to the abstract idea of taking two pictures and using those pictures to enhance each other in some way. The Court stated that since the earliest years of the photographic medium, those having skill in the art have used multiple exposures, or the combining of multiple images, to enhance images.
From a patent attorney's viewpoint, however, if the issue is that it has been known for some time to use multiple exposures, surely that issue would be better addressed under 35 U.S.C. § 102 or 35 U.S.C. § 103 as a prior art issue, and not as a patent eligibility issue. But I digress.
Next, the Court noted that the claims here are defined only in terms of their functions. For support of this statement, the Court noted that the '289 patent does not require special hardware or software, but instead, describes that "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 photosensitive chips with multimillion photocells."
This is an odd statement by the Court, however, since the claim explicitly recites structure of the camera (e.g., a first and second image sensor closely positioned with respect to a common plane, . . . two lenses, each being mounted in front of one of said two image sensors), so the claim in fact is not "only" defined in terms of function.
The patentee attempted to equate Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), to the present case. Thales upheld a patent that dealt with an arrangement of sensors, and Yu contends the result should be the same here because the '289 patent similarly instructs a "particular configuration" of sensors. The Court, however, found that Thales is distinguishable because its patent-in-suit stated why and how the "particular configuration" of sensors contributed to an advancement over the prior art. In contrast, the only configuration to which "benefits and advantages" are attributed in the specification in the '289 patent is the mere use of multiple lenses and sensors.
The Court noted that the '289 patent expressly eschews any special hardware or software in favor of a "generic solution," and other components in the claim are described at a high level and lack detail (the analog-to-digital circuitry is described simply as "digitiz[ing] the output signals"; the image processor is described functionally as "[u]sing a set of digital image processes embedded in a digital signal processing chip, images . . . are processed . . . and subsequently produce high quality and film-like true color digital images.").
Thus, it would appear that the Court found the claim directed to an abstract idea due to lack of a detailed description having a technical effect. This is generally a European requirement or standard, and is not a requirement in the U.S. The claim clearly recites structure or a configuration of tangible components, and it would seem that the claim should have been found to have satisfied step 1.
Since the Court found the patent to be directed to a patent-ineligible concept under step 1, the Court turned to the second step in Alice to look for an "'inventive concept'—i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself."
The Court found that there were no allegations that the asserted combination and arrangement of "well-understood, routine and conventional" digital camera components goes beyond the abstract idea of using multiple images to enhance one image. The Court stated that once the abstract idea is removed from the claim, all that is left here is the "conventional technology" of a digital camera, such as image sensors, lenses, circuitry, memory, and a processor being used in conventional ways.
Thus, the Court found that because the '289 patent is directed to an abstract idea and does not add an inventive concept, the patent was directed to ineligible patent subject matter and the complaints were dismissed. Since the motion was decided at this early stage, the Court dismissed the complaints with leave to file amended complaints with more detail.
Yu v. Apple Inc. (N.D. Cal. 2019)
Order Re Motion to Dismiss by District Judge Donato
