Case: 20-1760 Document: 55 Page: 1 Filed: 06/11/2021
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`YANBIN YU, ZHONGXUAN ZHANG,
`Plaintiffs-Appellants
`
`v.
`
`APPLE INC.,
`Defendant-Appellee
`______________________
`
`2020-1760
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in No. 3:18-cv-06181-JD,
`Judge James Donato.
`
`
`-------------------------------------------------
`
`YANBIN YU, ZHONGXUAN ZHANG,
`Plaintiffs-Appellants
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Defendants-Appellees
`______________________
`
`2020-1803
`______________________
`
`
`

`

`Case: 20-1760 Document: 55 Page: 2 Filed: 06/11/2021
`
`2
`
`YU v. APPLE INC.
`
`Appeal from the United States District Court for the
`Northern District of California in No. 3:18-cv-06339-JD,
`Judge James Donato.
`______________________
`
`Decided: June 11, 2021
`______________________
`
`ROBERT G. LITTS, Dan Johnson Law Group, LLP,
`Burlingame, CA, argued for plaintiffs-appellants. Also rep-
`resented by DANIEL JOHNSON, JR.
`
` HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
`for all defendants-appellees. Defendant-appellee Apple
`Inc. also represented by DEEPA KANNAPPAN, LOWELL D.
`MEAD, PRIYA B. VISWANATH; PHILLIP EDWARD MORTON,
`Washington, DC.
`
` DOUGLAS HALLWARD-DRIEMEIER, Ropes & Gray LLP,
`Washington, DC, for defendants-appellees Samsung Elec-
`tronics Co., Ltd., Samsung Electronics America, Inc. Also
`represented by JAMES RICHARD BATCHELDER, DAVID S.
`CHUN, East Palo Alto, CA; STEVEN PEPE, New York, NY;
`SCOTT S. TAYLOR, Boston, MA.
` ______________________
`
`Before NEWMAN, PROST*, and TARANTO, Circuit Judges.
`Opinion for the court filed by Circuit Judge PROST.
`Dissenting opinion filed by Circuit Judge NEWMAN.
`PROST, Circuit Judge.
`Yanbin Yu and Zhongxuan Zhang (collectively, “Yu”)
`sued Apple and Samsung (collectively, “Defendants”),
`
`* Circuit Judge Sharon Prost vacated the position of
`Chief Judge on May 21, 2021.
`
`

`

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`YU v. APPLE INC.
`
`3
`
`alleging that Defendants infringed claims 1, 2, and 4 of
`U.S. Patent No. 6,611,289 (“the ’289 patent”). The district
`court granted Defendants’ motion to dismiss on the basis
`that the asserted claims were invalid under 35 U.S.C.
`§ 101. Yu appeals. Because the district court did not err,
`we affirm.
`
`BACKGROUND
`The ’289 patent is titled “Digital Cameras Using Mul-
`tiple Sensors with Multiple Lenses.” Claim 1 is repre-
`sentative1 and recites:
`1. An improved digital camera comprising:
`a first and a second image sensor closely positioned
`with respect to a common plane, said second image
`sensor sensitive to a full region of visible color spec-
`trum;
`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 im-
`age;
`an analog-to-digital converting circuitry coupled to
`said first and said second image sensor and digitiz-
`ing said first and said second intensity images to
`produce correspondingly a first digital image and a
`second digital image;
`
`
`1 The district court treated claim 1 as representative
`for purposes of its eligibility analysis. Neither party dis-
`putes that treatment on appeal, and Yu does not separately
`argue the eligibility of dependent claims 2 or 4. We there-
`fore treat claim 1 as representative for purposes of our eli-
`gibility analysis. See Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350, 1352 (Fed. Cir. 2016).
`
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`4
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`YU v. APPLE INC.
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`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 en-
`hanced with said second digital image.
`Defendants filed a Rule 12(b)(6) motion to dismiss,
`which the district court granted with prejudice after con-
`cluding that each asserted claim was patent ineligible un-
`der § 101. The district court held that the asserted claims
`were directed to “the abstract idea of taking two pictures
`and using those pictures to enhance each other in some
`way.” Yu v. Apple Inc., Nos. 18-cv-6181, 18-cv-6339,
`2020 WL 1429773, at *3 (N.D. Cal. Mar. 24, 2020) (“Dis-
`trict Court Opinion”). The court explained that “photogra-
`phers ha[ve] been using multiple pictures to enhance each
`other for over a century.” Id. at *4. The district court fur-
`ther concluded that the asserted claims lack an inventive
`concept, noting “the complete absence of any facts showing
`that the[] [claimed] elements were not well-known, routine,
`and conventional.” Id. at *6.
`The district court entered judgment. Yu timely ap-
`pealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`We review a district court’s grant of a Rule 12(b)(6) mo-
`tion under the law of the regional circuit. Simio, LLC v.
`FlexSim Software Prods., Inc., 983 F.3d 1353, 1358
`(Fed. Cir. 2020). Under Ninth Circuit law, we review such
`dismissals de novo, construing all allegations of material
`fact in the light most favorable to the nonmoving party.
`Yagman v. Garcetti, 852 F.3d 859, 863 (9th Cir. 2017). And
`we review de novo a district court’s determination of patent
`
`

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`YU v. APPLE INC.
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`5
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`ineligibility under § 101. Visual Memory LLC v. NVIDIA
`Corp., 867 F.3d 1253, 1257 (Fed. Cir. 2017).
`In analyzing whether claims are patent eligible under
`§ 101, we employ the two-step Mayo/Alice framework. Al-
`ice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014); Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
`70–73 (2012). First, we determine whether a patent claim
`is directed to an unpatentable law of nature, natural phe-
`nomenon, or abstract idea. Alice, 573 U.S. at 217. If so, we
`then determine whether the claim nonetheless includes an
`“inventive concept” sufficient to “‘transform the nature of
`the claim’ into a patent-eligible application.” Id. (quoting
`Mayo, 566 U.S. at 72, 78).
`
`I
`We begin our analysis with step one. We agree with
`the district court that claim 1 is directed to the abstract
`idea of taking two pictures (which may be at different ex-
`posures) and using one picture to enhance the other in
`some way. See District Court Opinion, 2020 WL 1429773,
`at *3, *6.
`“We have approached the Step 1 directed to inquiry by
`asking what the patent asserts to be the focus of the
`claimed advance over the prior art. In conducting that in-
`quiry, we must focus on the language of the [a]sserted
`[c]laims themselves, considered in light of the specifica-
`tion.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292
`(Fed. Cir. 2020) (cleaned up). Given the claim language
`and the specification, we conclude that claim 1 is “directed
`to a result or effect that itself is the abstract idea and
`merely invoke[s] generic processes and machinery” rather
`than “a specific means or method that improves the rele-
`vant technology.” Smart Sys. Innovations, LLC v. Chi.
`Transit Authority, 873 F.3d 1364, 1371 (Fed. Cir. 2017).
`At the outset, we note that claim 1 results in “produc-
`ing a resultant digital image from said first digital image
`
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`6
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`YU v. APPLE INC.
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`enhanced with said second digital image.” Yu does not dis-
`pute that, as the district court observed, the idea and prac-
`tice of using multiple pictures to enhance each other has
`been known by photographers for over a century. See Dis-
`trict Court Opinion, 2020 WL 1429773, at *4. Rather, Yu
`contends that claim 1 is directed to a patent-eligible appli-
`cation of this idea as opposed to just the idea itself.
`The claim’s remaining limitations undercut Yu’s con-
`tention. Only conventional camera components are recited
`to effectuate the resulting “enhanced” image—two image
`sensors, two lenses, an analog-to-digital converting cir-
`cuitry, an image memory, and a digital image processor.
`Indeed, it is undisputed that these components were well-
`known and conventional. See, e.g., Reply Br. 12 (“It is true
`that the individual digital camera components recited in
`the claims are themselves generic and conventional.” (em-
`phasis omitted)). And, as claimed, these conventional com-
`ponents perform only their basic functions (e.g., “said first
`image sensor producing a first image,” “said second image
`sensor producing a second image,” “an analog-to-digital
`converting circuitry [for] digitizing . . . images,” “an image
`memory . . . for storing said first digital image and said sec-
`ond digital image”) and are set forth at a high degree of
`generality. This is consistent with the specification’s iden-
`tification of the “great need for a generic solution that
`makes digital cameras capable of producing high resolution
`images without [high] cost.” ’289 patent col. 2 ll. 3–6 (em-
`phasis added). What is claimed is simply a generic envi-
`ronment in which to carry out the abstract idea. See In re
`TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed Cir.
`2016) (“[T]he recited physical components merely provide
`a generic environment in which to carry out the abstract
`idea of classifying and storing digital images in an orga-
`nized manner.”).
`
`

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`YU v. APPLE INC.
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`7
`
`Yu’s contrary arguments are unpersuasive.2 For exam-
`ple, Yu argues that the asserted claims “are directed to a
`patent-eligible improvement in digital camera functional-
`ity” by “providing a specific solution” to problems such as
`“low resolution caused by low pixel counts” and “inability
`to show vivid colors caused by limited pixel depth.” Appel-
`lant’s Br. 36–38; see also id. at 56. But claim 1’s solution
`to those problems is the abstract idea itself—to take one
`image and “enhance” it with another. See ’289 patent
`col. 10 ll. 54–58 (“[A] digital image processor . . . produc[es]
`a resultant digital image from said first digital image en-
`hanced with said second digital image.”).
`Yu further points to portions of the specification to sup-
`port the contention that the asserted advance in the claims
`is the particular configuration of lenses and image sensors.
`But “[e]ven a specification full of technical details about a
`physical invention may nonetheless conclude with claims
`that claim nothing more than the broad law or abstract
`idea underlying the claims.” ChargePoint, Inc. v. Sema-
`Connect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019). Such is
`the case here.
`Each time the specification of the ’289 patent suggests
`that a particular configuration is the asserted advance over
`the prior art, it does so in a four-lens, four-image-sensor
`configuration in which three of the sensors are color-spe-
`cific while the fourth is a black-and-white sensor. See
`’289 patent col. 9 ll. 23–27 (“One of the key features of the
`
`2 We note that Yu’s claimed invention is couched as
`an improved machine (an “improved digital camera”). But
`whether a device is “a tangible system (in § 101 terms, a
`‘machine’)” is not dispositive. See Alice, 573 U.S. at 224; In
`re TLI Commc’ns, 823 F.3d at 611 (“[N]ot every claim that
`recites concrete, tangible components escapes the reach of
`the abstract-idea inquiry.”). As discussed herein, the focus
`of claim 1 is the abstract idea.
`
`

`

`Case: 20-1760 Document: 55 Page: 8 Filed: 06/11/2021
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`8
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`YU v. APPLE INC.
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`present multiple sensors is to use the intensity image from
`B/W sensor 308 to expand the dynamic ranges of images
`from sensors 302, 304 and 306 so as to increase overall dy-
`namic range of the resultant color images.”); see also id.
`at col. 10 ll. 17–25 (“What sets the present invention fun-
`damentally apart from existing technologies is the use of
`the black-and-white intensity image from the image sensor
`with a full transparent filter or no filter at all. The B/W
`image sensor can capture full information including details
`that may be missed by those color image sensors.”). Indeed,
`the portion of the specification describing the “many obvi-
`ous benefits and advantages” of the “unique configuration”
`hinges on that particular four-lens, four-image-sensor con-
`figuration in which three of the sensors are color-specific
`while the fourth is a black-and-white sensor. Id. at col. 2
`ll. 52–57 (“Second each of the image sensors is only respon-
`sible for one color; thereby the expensive process of coating
`a mosaic of selectively transmissive filters superimposed in
`pixel-based registration on one image sensor is eliminated
`and subsequently no micro-lenses process is needed.”). Yet
`representative claim 1 requires only a two-lens, two-image-
`sensor configuration in which none of the image sensors
`must be color.3 In these circumstances, the mismatch be-
`tween the specification statements that Yu points to and
`the breadth of claim 1 underscores that the focus of the
`claimed advance is the abstract idea and not the particular
`configuration discussed in the specification that allegedly
`departs from the prior art.
`
`
`In the ’289 patent, a sensor “sensitive to a full re-
`3
`gion of visible color spectrum” is a black-and-white sensor.
`’289 patent claim 1; see id. at col. 2 ll. 39–49, col. 5 ll. 28–39,
`col. 10 ll. 17–23; Oral Arg. at 2:54–3:20, 19:05–46,
`No. 20-1760,
`http://oralarguments.cafc.uscourts.gov/de-
`fault.aspx?fl=20-1760_03032021.mp3.
`
`

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`9
`
`Accordingly, at step one, we agree with the district
`court that claim 1 of the ’289 patent is directed to an ab-
`stract idea.
`
`II
`Turning to step two, we conclude that claim 1 does not
`include an inventive concept sufficient to transform the
`claimed abstract idea into a patent-eligible invention. Be-
`cause claim 1 is recited at a high level of generality and
`merely invokes well-understood, routine, conventional
`components to apply the abstract idea identified above, see,
`e.g., ’289 patent claim 1; id. at col. 2 ll. 3–5; J.A. 117–20,
`claim 1 fails at step two, see, e.g., Alice, 573 U.S. at 225–26;
`Mayo, 566 U.S. at 73; see also, e.g., In re TLI Commc’ns,
`823 F.3d at 615 (concluding patent claims ineligible at step
`two in part because “the recited physical components be-
`have exactly as expected according to their ordinary use”).
`Yu’s contrary arguments again fail. For example, Yu
`argues that “[t]he unconventional nature of the digital
`camera architecture is demonstrated by the prosecution
`history of the ’289 Patent” because the asserted claims
`“were allowed . . . over multiple prior art references.” Ap-
`pellant’s Br. 56. But even if claim 1 recites novel subject
`matter, that fact is insufficient by itself to confer eligibility.
`See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
`(Fed. Cir. 2018); Two-Way Media Ltd. v. Comcast Cable
`Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“El-
`igibility and novelty are separate inquiries.”).
`Yu further argues that the claimed “hardware configu-
`ration is vital to performing the claimed image enhance-
`ment” and that, “[t]herefore, the claimed combination of
`limitations . . . is unconventional.” Appellant’s Br. 59. But
`the conclusion does not follow from the premise. Conven-
`tional computer equipment can be “vital” to an advance
`that is still abstract, but not suffice to avoid ineligibility at
`Alice step two. See, e.g., SAP, 898 F.3d at 1168–70 (ineli-
`gibility holding where abstract, mathematical data
`
`

`

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`10
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`YU v. APPLE INC.
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`manipulation had to be implemented on computers, but
`only conventional computer equipment was required).
`Here, the claimed hardware configuration itself is not an
`advance and does not itself produce the asserted advance
`of enhancement of one image by another, which, as ex-
`plained, is an abstract idea. The claimed configuration
`does not add sufficient substance to the underlying ab-
`stract idea of enhancement—the generic hardware limita-
`tions of claim 1 merely serve as “a conduit for the abstract
`idea.” In re TLI Commc’ns, 823 F.3d at 612. In other
`words, “[t]he main problem that [Yu] cannot overcome is
`that the claim—as opposed to something purportedly de-
`scribed in the specification—is missing an inventive con-
`cept.” Two-Way Media, 874 F.3d at 1338.
`In sum, we see no inventive concept in claim 1 that
`would confer patent eligibility at step two.
`III
`Yu also argues that the district court erred at the
`pleadings stage in making certain adverse findings of fact
`and failing to accept certain allegations in the complaint.
`According to Yu, the district court (1) should not have con-
`sidered the undisputed fact that the practice of using mul-
`tiple pictures to enhance each other was well-known for
`over a century; (2) should not have ruled on the “highly
`complex” technology at issue without first hearing expert
`testimony; and (3) improperly disregarded Yu’s allegations
`of patent eligibility.
`Yu’s arguments are misplaced. First, the district
`court’s recognition at the pleadings stage in the context of
`§ 101 of the century-old practice of using multiple pictures
`to enhance each other concerns a pertinent “fundamen-
`tal . . . concept[] and technological development[] [and
`thus] is well supported by our precedents.” Affinity Labs of
`Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1270
`(Fed. Cir. 2016). Second, patent eligibility can be deter-
`mined at the Rule 12(b)(6) stage without the aid of expert
`
`

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`YU v. APPLE INC.
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`11
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`testimony. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C.,
`818 F.3d 1369, 1373–74 (Fed. Cir. 2016). It was not error
`for the district court to do so here. Last, “[i]n ruling on a
`12(b)(6) motion, a court need not accept as true allegations
`that contradict matters properly subject to judicial notice
`or by exhibit, such as the claims and the patent specifica-
`tion.” Secured Mail Sols. LLC v. Universal Wilde, Inc.,
`873 F.3d 905, 913 (Fed. Cir. 2017) (cleaned up). Here, the
`district court considered the intrinsic record and concluded
`that the claims were directed to patent-ineligible subject
`matter, despite Yu’s allegations to the contrary. This is not
`error.
`
`CONCLUSION
`We have considered Yu’s remaining arguments and
`find them unpersuasive. In view of the foregoing, the judg-
`ment of the United States District Court for the Northern
`District of California is affirmed.
`AFFIRMED
`
`

`

`Case: 20-1760 Document: 55 Page: 12 Filed: 06/11/2021
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`YANBIN YU, ZHONGXUAN ZHANG,
`Plaintiffs-Appellants
`
`v.
`
`APPLE INC.,
`Defendant-Appellee
`______________________
`
`2020-1760
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in No. 3:18-cv-06181-JD,
`Judge James Donato.
`
`
`-------------------------------------------------
`
`YANBIN YU, ZHONGXUAN ZHANG,
`Plaintiffs-Appellants
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Defendants-Appellees
`______________________
`
`2020-1803
`______________________
`
`
`

`

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`
`2
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`YU v. APPLE INC.
`
`Appeal from the United States District Court for the
`Northern District of California in No. 3:18-cv-06339-JD,
`Judge James Donato.
`______________________
`
`NEWMAN, Circuit Judge, dissenting.
`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 an-
`alog to digital conversion circuitry, a memory that stores
`the images, and a digital processor that enhances the im-
`ages. 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:
`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 spec-
`trum;
`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 im-
`age;
`an analog-to-digital converting circuitry coupled to
`said first and said second image sensor and digitiz-
`ing 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
`
`

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`YU v. APPLE INC.
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`3
`
`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 en-
`hanced with said second digital image.
`2. The improved digital camera as recited in claim
`1, wherein said first image sensor sensitive to said
`full region of visible color spectrum.
`4. The improved digital camera as recited in claim
`1, wherein said analog-to-digital converting cir-
`cuitry comprises two individual analog-to-digital
`converters, each integrated with one of said first
`and second image sensors so that said first and sec-
`ond digital images are digitized independently and
`in parallel to increase signal throughput rate.
`The ’289 patent specification states that the digital camera
`described therein achieves superior image definition. A
`statement of purpose or advantage does not convert a de-
`vice into an abstract idea. From the court’s further en-
`largement of Section 101 to deny access to patenting, and
`further obfuscation of the statute, I respectfully dissent.
`DISCUSSION
`The majority states that this digital camera is ineligi-
`ble for consideration for patenting because “claim 1 is di-
`rected to the abstract idea of taking two pictures (which
`may be at different exposures) and using one picture to en-
`hance the other in some way.” Maj. Op. at 5. I repeat:
`claim 1 is for a digital camera having a designated struc-
`ture and mechanism that perform specified functions;
`claim 1 is not for the general idea of enhancing camera im-
`ages. The camera of the ’289 patent may or may not ulti-
`mately satisfy all the substantive requirements of
`patentability, for this is an active field of technology. How-
`ever, that does not convert a mechanical/electronic device
`into an abstract idea.
`
`

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`4
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`YU v. APPLE INC.
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`Section 101 states the general classes of pa-
`tentable subject matter
`The purpose of Section 101 is to define the subject mat-
`ter of patents as distinguished from the subject matter of
`copyright—for both arise from the same clause of the Con-
`stitution. Section 101’s words first appeared in the Patent
`Act of 1793, where the Act defined the subject matter of
`patents as “any new and useful art, machine, manufacture
`or composition of matter, or any new and useful improve-
`ment on any art, machine, manufacture or composition of
`matter.” Patent Act of 1793, ch. 11, § 1; 1 Stat. 318 (1793).
`Thomas Jefferson’s words remain in today’s statute; see 35
`U.S.C. § 101 (defining patentable subject matter as “any
`new and useful process, machine, manufacture, or compo-
`sition of matter, or any new and useful improvement
`thereof.”).
`The issues here debated have long been settled. The
`Court in Diamond v. Diehr, 450 U.S. 175 (1981), discussed
`the codification of Section 101 in Title 35, and summarized:
`The Senate Report stated: “Section 101 sets forth
`the subject matter that can be patented, ‘subject to
`the conditions and requirements of this title.’ The
`conditions under which a patent may be obtained
`follow, and Section 102 covers the conditions relat-
`ing to novelty.”
`Id. at 190 (emphasis in Diehr) (quoting S. Rep. No. 82-1979,
`at 5 (1952), reprinted in 1952 U.S.C.C.A.N. 2399). In con-
`travention of this explicit distinction between Section 101
`and Section 102, the majority now holds that the ’289 cam-
`era 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 eligi-
`bility. The Supreme Court disposed of this position in
`Diehr:
`
`

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`YU v. APPLE INC.
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`5
`
`It has been urged that novelty is an appropriate
`consideration under § 101. Presumably, this argu-
`ment results from the language in § 101 referring
`to any “new and useful” process, machine, etc. Sec-
`tion 101, however, is a general statement of the
`type of subject matter that is eligible for patent pro-
`tection “subject to the conditions and requirements
`of this title.” Specific conditions for patentability
`follow and § 102 covers in detail the conditions re-
`lating to novelty. The question therefore of
`whether a particular invention is novel is “wholly
`apart from whether the invention falls into a cate-
`gory 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.
`The “abstract idea” concept with respect to patent-eli-
`gibility is founded in the distinction between general prin-
`ciple and specific application. An oft-cited illustration is
`O’Reilly v. Morse, 56 U.S. 62 (1853), where the Court re-
`jected Samuel Morse’s claim 8 to the scientific principle he
`called “galvanic current,” or electromagnetism, as used for
`printing at a distance. The Court explained:
`The eighth [claim] is too broad and covers too much
`ground. It is this. ‘I do not propose to limit myself
`to the specific machinery or parts of machinery de-
`scribed in the foregoing specification and claims;
`the essence of my invention being the use of the
`motive power of the electric or galvanic current,
`which I call electro-magnetism, however devel-
`oped, for making or printing intelligible characters,
`signs or letters at any distances, being a new
`
`

`

`Case: 20-1760 Document: 55 Page: 17 Filed: 06/11/2021
`
`6
`
`YU v. APPLE INC.
`
`application of that power, of which I claim to be the
`first inventor or discoverer.’
`Id. However, the Court sustained Morse’s claims to the
`structure and details of the invention that he named the
`telegraph.
`Over the ensuing decades, this reasoning has solidified
`the foundations of eligibility, drawing on the fundamental
`distinction between breadth of general scientific principle,
`and its embodiment in practical application. This distinc-
`tion between a general concept and its specific application
`is implemented in the Patent Act. Determination of pa-
`tentability of a new device is not a matter of eligibility un-
`der Section 101, but of compliance with all the statutory
`provisions.
`Patent-eligible subject matter must meet the substan-
`tive standards of patentability in order to receive a patent,
`but Section 101 ineligibility does not arise simply because
`a device embodies minor and predictable differences from
`the prior art, as the majority holds. Maj. Op. at 5–6. “The
`question . . . of whether a particular invention is novel is
`wholly apart from whether the invention falls into a cate-
`gory of statutory subject matter.” Diehr, 450 U.S. at 190
`(internal quotation marks and citation omitted).
`As technology advanced, the Supreme Court was cog-
`nizant of the importance of technology to the nation’s econ-
`omy and well-being, and resolved significant new issues.
`For example, as the field of biotechnology evolved, the
`Court reiterated that Section 101 embraces any new or
`useful “manufacture” or “composition of matter,” and re-
`minded us that “Congress intended statutory subject mat-
`ter to ‘include anything under the sun that is made by
`man.’” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)
`(quoting S. Rep. No. 82-1979, at 5 (1952), reprinted in 1952
`U.S.C.C.A.N. 2399; and H.R. Rep. No. 82-1923, at 6 (1952)).
`
`

`

`Case: 20-1760 Document: 55 Page: 18 Filed: 06/11/2021
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`YU v. APPLE INC.
`
`7
`
`And as litigation burgeoned in computer-implemented
`technologies, in Alice Corp. Pty. Ltd. v. CLS Bank Interna-
`tional, 573 U.S. 208 (2014), the Court sought to provide
`guidance by proposing a two-step analytical process to dis-
`tinguish abstract idea from specific embodiment. The Alice
`two-step analysis does not produce the majority's now-ef-
`fected enlargement of Section 101.
`In the current state of Section 101 jurisprudence, in-
`consistency and unpredictability of adjudication have de-
`stabilized technologic development in important fields of
`commerce. Although today’s Section 101 uncertainties
`have arisen primarily in the biological and computer-im-
`plemented 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.
`
`