Case: 20-1760 Document: 57 Page: 1 Filed: 07/12/2021
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`Appeal Nos. 20-1760, -1803
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`YANBIN YU, ZHONGXUAN ZHANG,
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`v.
`APPLE INC.
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`Plaintiffs-Appellants,
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`Defendant-Appellee.
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`Appeal from the United States District Court,
`Northern District of California in Case No. 3:18-cv-06181-JD,
`Judge James Donato
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`YANBIN YU, ZHONGXUAN ZHANG,
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`Plaintiffs-Appellants,
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`v.
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
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`Defendants-Appellees.
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`Appeal from the United States District Court,
`Northern District of California in Case No. 3:18-cv-06339-JD,
`Judge James Donato
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`PETITION FOR REHEARING EN BANC OF PLAINTIFFS-
`APPELLANTS YANBIN YU AND ZHONGXUAN ZHANG
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`Appeal Nos. 20-1760, -1803
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`YANBIN YU, ZHONGXUAN ZHANG,
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`v.
`APPLE INC.
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`Plaintiffs-Appellants,
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`Defendant-Appellee.
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`Appeal from the United States District Court,
`Northern District of California in Case No. 3:18-cv-06181-JD,
`Judge James Donato
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`YANBIN YU, ZHONGXUAN ZHANG,
`
`Plaintiffs-Appellants,
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`v.
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
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`Defendants-Appellees.
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`Appeal from the United States District Court,
`Northern District of California in Case No. 3:18-cv-06339-JD,
`Judge James Donato
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`PETITION FOR REHEARING EN BANC OF PLAINTIFFS-
`APPELLANTS YANBIN YU AND ZHONGXUAN ZHANG
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`Case: 20-1760 Document: 57 Page: 2 Filed: 07/12/2021
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`Dated: July 12, 2021
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`DANIEL JOHNSON JR. (SBN 57409)
`ROBERT G. LITTS (SBN 205984)
`DAN JOHNSON LAW GROUP, LLP
`1350 Old Bayshore Highway, Suite 520
`Burlingame, CA 94010
`(415) 604-4500
`dan@danjohnsonlawgroup.com
`robert@danjohnsonlawgroup.com
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`Counsel for Plaintiffs-Appellants
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`Case: 20-1760 Document: 57 Page: 3 Filed: 07/12/2021
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`CERTIFICATE OF INTEREST
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`Counsel for Appellants Yanbin Yu and Zhongxuan Zhang certify the
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`following:
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`1.
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`The full names of the parties represented by me are:
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`Yanbin Yu and Zhongxuan Zhang
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`2.
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`The names of the real parties in interest represented by me are:
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`Yanbin Yu and Zhongxuan Zhang
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`3.
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`All parent corporations and publicly held companies that own 10% or
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`more of stock in the parties represented by me are:
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`None
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`4.
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`The names of all law firms and the partners or associates that
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`appeared for the party now represented by me in the trial court or agency or are
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`expected to appear in this court (and who have not or will not enter an appearance
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`in this case) are:
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`Dan Johnson Law Group, LLP: Nathan W. McCutcheon, Mario
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`Moore
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`5.
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`The title and number of any case known to counsel to be pending in
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`this or any other court or agency that will directly affect or be directly affected by
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`this court’s decision in the pending appeal:
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`- i -
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`Case: 20-1760 Document: 57 Page: 4 Filed: 07/12/2021
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`The patent at issue in this appeal was also the subject of a pair of inter
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`partes review proceedings before the Patent Trial and Appeal Board
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`(“PTAB”) of the United States Patent and Trademark Office
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`(“USPTO”): Apple Inc. v. Yanbin Yu, et al., IPR2019-01258; Samsung
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`Electronics Co., Ltd., et al. v. Yanbin Yu, et al., IPR2020-00492. A
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`decision in those proceedings was issued by the PTAB on January 5,
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`2021, and that decision is presently on appeal to this Court in
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`consolidate Case Nos. 2021-1723, 2021-1724, and 2021-1766.
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`6.
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`All information required by Fed. R. App. P. 26.1(b) and (c) that
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`identifies organizational victims in criminal cases and debtors and trustees in
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`/s/ Daniel Johnson Jr.
`Daniel Johnson Jr.
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`bankruptcy cases:
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`None
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`Dated: July 12, 2021
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`- ii -
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`Case: 20-1760 Document: 57 Page: 5 Filed: 07/12/2021
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`TABLE OF CONTENTS
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`Page(s)
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`STATEMENT OF COUNSEL .................................................................................. 1
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`PRELIMINARY STATEMENT ............................................................................... 3
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`ARGUMENT ............................................................................................................. 9
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`I.
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`II.
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`THE MAJORITY FAILED TO ACCOUNT FOR THE SPECIFIC
`REQUIREMENTS OF CLAIM 1 WHEN ARTICULATING THE
`“FOCUS” OF THE CLAIM ................................................................ 11
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`THE MAJORITY IMPROPERLY DISCOUNTED THE CLAIMED
`COMBINATION OF LIMITATIONS ............................................... 12
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`III. THE MAJORITY IMPROPERLY MADE NEW AND ERRONEOUS
`FINDINGS OF FACT AGAINST APPELLANTS ............................ 16
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`IV. THE MAJORITY FAILED TO ADDRESS THE ISSUE OF
`PREEMPTION .................................................................................... 18
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`CONCLUSION AND STATEMENT OF RELIEF SOUGHT ............................... 19
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`ADDENDUM
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`CERTIFICATE OF SERVICE
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`CERTIFICATE OF COMPLIANCE
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`- iii -
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`Case: 20-1760 Document: 57 Page: 6 Filed: 07/12/2021
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Alice Corp. Pty. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .............................................................................. 1, 9, 10, 18
`Amdocs (Israel) Limited v. Openet Telecom, Inc.,
`841 F.3d 1288 (2016) ...................................................................................... 2, 18
`Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016) ................................................................ 2, 13, 17
`Diamond v. Diehr,
`450 U.S. 175 (1981) ........................................................................................ 2, 13
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`566 U.S. 66 (2012) ............................................................................................ 2, 9
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016) ...................................................................... 2, 11
`SAP Am., Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018) .......................................................................... 15
`Thales Visionix Inc. v. United States,
`850 F.3d 1343 (Fed. Cir. 2017) ...................................................................... 2, 12
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017) .......................................................................... 15
`Visual Memory LLC v. NVIDIA Corp.,
`867 F.3d 1253 (Fed. Cir. 2017) ...................................................................... 2, 17
`Statutes
`35 U.S.C. § 101 .................................................................................................passim
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`- iv -
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`Case: 20-1760 Document: 57 Page: 7 Filed: 07/12/2021
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`STATEMENT OF COUNSEL
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`Based on my professional judgment, I believe this appeal requires an answer
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`to one or more precedent-setting questions of exceptional importance:
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`1) Whether the specific requirements recited in the language of a claim
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`can be disregarded in determining the “focus” of the claim under step
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`one of the Alice/Mayo test for patent-eligibility.
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`2) Whether a claimed combination of non-abstract (e.g., structural)
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`limitations that has not been shown to exist in the prior art can be
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`found to be “generic” and “conventional.”
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`3) Whether a court can make adverse findings of fact against the non-
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`moving party at the pleadings stage that are inconsistent with the
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`patent specification, the file history, and/or plausible allegations in the
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`complaint.
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`4) Whether a claim that presents no danger of preempting an “abstract
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`idea,” either generally or in a particular field of use or technological
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`environment, can be found ineligible for patent protection under 35
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`U.S.C. § 101.
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`Based on my professional judgment, I believe the decision of the panel is contrary
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`to at least the following decisions of the Supreme Court of the United States and
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`precedents of this Court: Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014);
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`1
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`Case: 20-1760 Document: 57 Page: 8 Filed: 07/12/2021
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`Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); McRO,
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`Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Visual
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`Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017); Thales Visionix
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`Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); Diamond v. Diehr, 450 U.S.
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`175 (1981); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
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`1341 (Fed. Cir. 2016); and, Amdocs (Israel) Limited v. Openet Telecom, Inc., 841
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`F.3d 1288 (2016).
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`
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`Dated: July 12, 2021
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`/s/ Daniel Johnson Jr.
`Daniel Johnson Jr.
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`2
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`Case: 20-1760 Document: 57 Page: 9 Filed: 07/12/2021
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`PRELIMINARY STATEMENT
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`The panel majority upheld the district court’s dismissals—at the pleadings
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`stage—of the two cases in this consolidated appeal on the ground that the
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`following claim is ineligible for patent protection under 35 U.S.C. § 101:
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`1. An improved digital camera comprising:
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` a
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` 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 spectrum;
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`two lenses, each being mounted in front of one of said two image
`sensors;
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`said first image sensor producing a first image and said second
`image sensor producing a second image;
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`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;
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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
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` a
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` 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.
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`Majority at 3-4. It is unprecedented for a claim drawn with to a machine of such
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`precisely defined structure to be invalidated under Section 101. As Judge Newman
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`correctly stated in her dissent, “[t]his camera is a mechanical and electronic device
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`3
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`Case: 20-1760 Document: 57 Page: 10 Filed: 07/12/2021
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`of defined structure and mechanism; it is not an ‘abstract idea.’ ” Dissent at 2.
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`This claim plainly recites patent-eligible subject matter.
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`The patent at issue in this appeal, U.S. Patent No. 6,611,289 (“’289 Patent”),
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`was filed on January 15, 1999, more than twenty years ago.1 Appx14. Existing
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`digital cameras at that time typically used a single image sensor to capture a scene.
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`Appx24[1:26-30]. An image sensor is a photosensitive device that can react to
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`light reflected from the scene and translate the strength of that reaction into a
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`numerical equivalent. Appx24[1:30-32]. If a mosaic of filters (e.g., red, green,
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`and blue filters) is superimposed over the image sensor, the reaction of the image
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`sensor can be measured for those different regions of the color spectrum, and those
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`measurements can be combined and evaluated by software to determine the
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`specific color at each location in the picture, thus creating a full color image.
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`Appx15[Fig.1]; Appx24[1:32-36; 1:50-57].
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`Although less prevalent, cameras having multiple image sensors also existed
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`at the time of the ’289 Patent’s filing. Appx25[4:47-61]. Instead of using just a
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`single image sensor with a superimposed mosaic filter, these multi-sensor cameras
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`used three separate image sensors and a prism that split the light reflected from a
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`scene into three distinct bands (e.g., red, green, and blue bands), such that each
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`1 For context, the first Apple accused product, the iPhone 7 Plus, became available in September
`2016 (Appx251[¶24]), and the first Samsung accused product, the Galaxy Note 8, became
`available in September 2017 (Appx282[¶27]).
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`image sensor would react to light from only one band to create a component image.
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`Appx25[4:53-61]. The three component images, each being from one of the three
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`image sensors, could then be combined to reproduce the original colors of the
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`scene. Appx16[Fig.2]; Appx25[4:34-53].
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`Both single-sensor and multi-sensor digital cameras that were available at
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`the time of the ’289 Patent’s filing suffered from problems associated with the
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`technological limitations of then-existing image sensors. Appx24[1:40-49; 1:66-
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`2:3; 2:8-22]. These problems included low image resolution, low dynamic range,
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`low signal-to-noise ratio (“SNR”), inaccurate color reproduction, and low image
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`quality. Appx24[1:40-49; 1:66-2:3; 2:8-22]. The ’289 Patent solved these
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`problems by adding an additional image sensor that is “sensitive to a full region of
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`visible color spectrum” and using that additional sensor to capture information that
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`is used to enhance the image(s) captured by the other sensor(s). Appx25-26[4:62-
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`5:40]; Appx27[7:36-46]; Appx28[9:4-40]. The ’289 patent also made the image
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`sensors “closely positioned with respect to a common plane” so that they could
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`capture images of the same scene without the use of the prism of prior multi-sensor
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`cameras. Appx26[5:58-6:26]; Appx27[8:30-32].
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`Thus, the ’289 Patent did not merely state the concept of image enhancement
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`and add the words “apply it,” nor did it merely apply image enhancement to an
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`existing digital camera architecture. Rather, it created a completely new digital
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`Case: 20-1760 Document: 57 Page: 12 Filed: 07/12/2021
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`camera architecture that could be used in a specific way to provide a technological
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`solution to technological problems associated with prior digital cameras. The
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`improved digital camera of the ’289 Patent could produce higher-quality images
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`while using both smaller image sensors (having higher yield, higher sensitivity,
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`less cross-talking, and lower clocking rate) and smaller optical lenses compared
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`with prior digital cameras. Appx24[2:36-65]; Appx27[7:3-7]; Appx28[10:13-16].
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`The ’289 Patent discloses both a two-sensor embodiment and a four-sensor
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`embodiment of its improved digital camera. The four-sensor embodiment
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`operates by: (1) capturing four separate images (e.g., red, green, blue, and black-
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`and-white (“B/W”) images) of the same scene using four separate image sensors,
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`three of which have color filters (e.g., fully red, fully green, and fully blue filters),
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`and an additional fourth sensor that does not have a color filter; (2) enhancing the
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`red image using the B/W image; (3) enhancing the green image using the B/W
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`image; (4) enhancing the blue image using the B/W image; and (5) combining the
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`enhanced red, enhanced green, and enhanced blue images to create a full color
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`image. Appx22[Fig.7]; Appx23[Fig.8]; Appx28[9:4-40; 10:7-17]. Importantly,
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`image combination (which was performed in prior multi-sensor cameras) is not
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`image enhancement; these are separate steps, with image enhancement being
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`performed before image combination in the disclosed four-sensor embodiment.
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`The image enhancement described in the patent with respect to Fig. 7 is dynamic
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`Case: 20-1760 Document: 57 Page: 13 Filed: 07/12/2021
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`range expansion, and the patent also identifies noise removal and color correction
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`as other examples of image enhancement that can be performed in accordance with
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`the invention. Appx22[Fig.7]; Appx28[9:4-40; 10:7-16].
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`The two-sensor embodiment replaces the three image sensors having color
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`filters of the four-sensor embodiment with a single image sensor that is used to
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`capture a B/W image of the scene, but retains the additional sensor that does not
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`have a color filter. Appx27[7:36-46]. The two-sensor embodiment operates by:
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`(1) capturing two separate images (e.g., first and second B/W images) of the same
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`scene using the two separate image sensors; and (2) enhancing the first B/W image
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`using the second B/W image. Appx27[7:40-43]. Thus, whereas the four-sensor
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`embodiment performs three image enhancement steps to form component images
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`(e.g., enhanced red, enhanced green, and enhanced blue images) followed by an
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`image combination step, the two-sensor embodiment performs one image
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`enhancement step and eliminates the image combination step. But otherwise, the
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`patent teaches that two-sensor embodiment functions the same as the four-sensor
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`embodiment, stating that while “[t]he following description is based on the [four-
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`sensor] embodiment illustrated in FIG. 3, those skilled in the art can appreciate that
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`the description is equally applied to the [two-sensor] black-and-white digital
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`cameras.” Appx27[7:43-46].
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`Case: 20-1760 Document: 57 Page: 14 Filed: 07/12/2021
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`Both the two-sensor embodiment and the four-sensor embodiment disclosed
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`in the ’289 Patent are implementations of claim 1, since the claim only specifies
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`that the second image sensor must be “sensitive to a full region of visible color
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`spectrum,” but does not include any restrictions on the first image sensor. Thus,
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`the first image sensor of claim 1 can be a B/W image sensor of the two-sensor
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`embodiment, a color image sensor (e.g., a red sensor, a green sensor, or a blue
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`sensor) of the four-sensor embodiment, or any other type of image sensor.
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`Essentially, the two-sensor embodiment practices claim 1 once, whereas the four-
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`sensor embodiment practices claim 1 three times (once for each of its three image
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`enhancement steps). Since the advantages of the invention disclosed in the patent
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`specification arise from the image enhancement step, and not the image
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`combination step, those advantages apply equally to both the four-sensor
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`embodiment and the two-sensor embodiment. Appx28[10:13-16].
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`The advances of the claimed invention over the prior art include: (1) the
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`inclusion of an additional image sensor (i.e., the “second image sensor”) that is
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`“sensitive to a full region of visible color spectrum”; (2) the positioning of multiple
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`image sensors (i.e., the “first image sensor” and the “second image sensor”) so that
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`they are “closely positioned with respect to a common plane”, allowing them to
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`capture images of the same scene (without using the prism of prior multi-sensor
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`cameras); and (3) the use of the second image sensor to capture a digital image that
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`8
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`Case: 20-1760 Document: 57 Page: 15 Filed: 07/12/2021
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`is used to enhance a digital image captured by the first image sensor. Neither the
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`claimed digital camera architecture using an additional image sensor that is
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`“sensitive to a full region of visible color spectrum,” nor the claimed use of that
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`digital camera architecture to produce a resultant digital image, has been shown to
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`exist in the prior art, regardless of whether the invention is implemented in a four-
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`sensor or a two-sensor configuration.
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`The majority’s decision would not only invalidate the claims at issue here,
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`which are plainly drawn to a patent-eligible improved digital camera, but also
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`drastically expand the exclusionary principle under Section 101 for laws of nature,
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`natural phenomena, and abstract ideas far beyond any prior decisions of either this
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`Court or the Supreme Court. As Judge Newman warned in her dissent, “[t]he fresh
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`uncertainties engendered by the majority’s revision of Section 101 are contrary to
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`the statute and the weight of precedent, and contrary to the public’s interest in a
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`stable and effective patent incentive.”
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`ARGUMENT
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`In its decisions in Alice Corp. Pty., 573 U.S. 208 and Mayo Collaborative
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`Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the Supreme Court set forth
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`“a framework for distinguishing patents that claim laws of nature, natural
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`phenomena, and abstract ideas from those that claim patent-eligible applications of
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`those concepts.” Alice, 573 U.S. at 217. At step one of this two-step framework—
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`9
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`Case: 20-1760 Document: 57 Page: 16 Filed: 07/12/2021
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`referred to herein as the Alice/Mayo test—the court must “determine whether the
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`claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573
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`U.S. at 217. If yes, the court must proceed to step two, which requires the court to
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`“search for an ‘ ‘inventive concept’ ’—i.e., an element or combination of elements
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`that is ‘sufficient to ensure that the patent in practice amounts to significantly more
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`than a patent upon the [ineligible concept] itself.’ ” Alice, 573 U.S. at 217-18
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`(quoting Mayo, 566 U.S. at 72–73).
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`In finding claim 1 of the ’289 Patent ineligible for patent protection under
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`Section 101, the majority improperly turned the Alice/Mayo test for patent-
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`eligibility on its head. They took a claim that recites a patent-eligible machine (the
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`claimed digital camera architecture) and improperly searched for “something
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`more” (the “enhanced with” limitation) to transform that machine into an “abstract
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`idea.” The majority’s approach is manifestly wrong, but was particularly improper
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`in this case since the claimed machine here has not been shown to exist in the prior
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`art and therefore, based upon the record on appeal, could stand on its own as a
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`patentable invention.
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`To reach their erroneous conclusion of patent-ineligibility, the majority
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`committed errors at every stage of the Alice/Mayo test. They compounded these
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`errors by impermissibly ignoring plausible allegations in the pleadings supporting
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`patent-eligibility, and improperly making new findings of fact—at the pleadings
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`10
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`Case: 20-1760 Document: 57 Page: 17 Filed: 07/12/2021
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`stage—that are not only adverse to Appellants, but also plainly incorrect in view of
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`the evidence of record. When the Alice/Mayo test is applied properly in
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`accordance with the precedent of this Court and the Supreme Court, and in view of
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`both the pleadings and a proper understanding the full evidence of record, it is
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`apparent that the claims at issue here are patent-eligible under Section 101.
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`I.
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`THE MAJORITY FAILED TO ACCOUNT FOR THE SPECIFIC
`REQUIREMENTS OF CLAIM 1 WHEN ARTICULATING THE
`“FOCUS” OF THE CLAIM
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`This Court has repeatedly warned that when articulating the “focus” of
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`claims at step one of the Alice/Mayo test, “courts ‘must be careful to avoid
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`oversimplifying the claims’ by looking at them generally and failing to account for
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`the specific requirements of the claims.” McRO, Inc., 837 F.3d at 1313 (quoting In
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`re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Despite
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`this warning, the majority “agree[d] with the district court that claim 1 is directed
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`to the abstract idea of taking two pictures (which may be at different exposures)
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`and using one picture to enhance the other in some way.” This characterization of
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`claim 1 is completely untethered from the language of the claim, as it not only
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`excludes all of the first five limitations in their entirely, but also rewrites the
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`“enhanced with” language to sound as broad as possible.
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`Claim 1 requires that the images must be digital images (not film images). It
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`requires that the digital images must be captured by different image sensors (not by
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`the same image sensor). It requires that the digital image which is used to enhance
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`the other digital image must be captured by an image sensor that is “sensitive to a
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`full region of visible color spectrum” (and not one that is sensitive to only a portion
`
`of the visible color spectrum, as was the case with prior multi-sensor cameras).
`
`And it requires that the images must be captured by image sensors that are “closely
`
`positioned with respect to a common plane” (so that they capture images of the
`
`same scene in the absence of the prism of prior multi-sensor cameras).
`
`The majority included none of these specific requirements from the claim
`
`language in their characterization of the “focus” of the claim. Instead, the majority
`
`improperly added the superfluous phrases “which may be at different exposures”
`
`and “in some way” to their characterization. Neither of these phrases is included—
`
`or even suggested—in the language of claim 1 itself.
`
`Because the majority adopted a characterization of the “focus” of claim 1
`
`that is improperly overbroad, ignoring the specific requirements of the claim, their
`
`step one inquiry was rendered meaningless. See Thales Visionix Inc., 850 F.3d at
`
`1347 (“We must therefore ensure at step one that we articulate what the claims are
`
`directed to with enough specificity to ensure the step one inquiry is meaningful.”)
`
`II. THE MAJORITY IMPROPERLY DISCOUNTED THE CLAIMED
`COMBINATION OF LIMITATIONS
`
`It has long been established that “a new combination … may be patentable
`
`even though all the constituents of the combination were well known and in
`
`12
`
`
`
`Case: 20-1760 Document: 57 Page: 19 Filed: 07/12/2021
`
`
`
`common use before the combination was made.” Diamond, 450 U.S. at 188; see
`
`also Bascom Glob. Internet Servs., Inc., 827 F.3d at 1350 (“an inventive concept
`
`can be found in the non-conventional and non-generic arrangement of known,
`
`conventional pieces.”). The majority improperly disregarded this fundamental
`
`principle of patent law by relying heavily on the purported lack of novelty of the
`
`individual claim elements, but then improperly discounting the claimed
`
`combination of limitations.
`
`The majority relied heavily on the lack of novelty of the individual digital
`
`camera components recited in claim 1 for purposes of their analyses under both
`
`step one and step two of the Alice/Mayo test. For example, in concluding that
`
`claim 1 is “directed to” an “abstract idea” under step one, the majority found that:
`
`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 relevant technology.”
`
`Majority at 5. Also under step one, the majority found that:
`
`Only conventional camera components are recited to effectuate
`the resulting “enhanced” image—two image sensors, two
`lenses, an analog-to-digital converting circuitry, an image
`memory, and a digital image processor. Indeed, it is undisputed
`that these components were well-known and conventional.
`
`
`13
`
`
`
`Case: 20-1760 Document: 57 Page: 20 Filed: 07/12/2021
`
`
`
`Majority at 6. Based in these findings, the majority concluded that “[w]hat is
`
`claimed is simply a generic environment in which to carry out the abstract idea.”
`
`Id.
`
`that:
`
`Similarly, under step two of the Alice/Mayo test, the majority concluded
`
`Because 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, …
`claim 1 fails at step two ….
`
`Majority at 9. Thus, the lack of novelty of the individual components was the
`
`linchpin of the majority’s conclusions that the claims merely provide a “generic
`
`environment” to carry out an “abstract idea” under step one, and do not include an
`
`“inventive concept” under claim two.
`
`But when addressing the claimed combination of limitations that define the
`
`digital camera architecture, the majority changed their tune, dismissively stating:
`
`But even if claim 1 recites novel subject matter, that fact is
`insufficient by itself to confer eligibility.
`
`Majority at 9. Thus, the majority took that position that the lack of novelty of the
`
`individual digital camera components recited in the limitations can invalidate the
`
`claims under Section 101, but the novelty of the claimed combination of those
`
`components, which together form the digital camera architecture, cannot save
`
`them. The majority cannot have it both ways; either novelty matters, or it does not.
`
`14
`
`
`
`Case: 20-1760 Document: 57 Page: 21 Filed: 07/12/2021
`
`
`
`Moreover, the majority’s statement that “even if claim 1 recites novel
`
`subject matter, that fact is insufficient to confer eligibility” cannot be true if that
`
`novel subject matter is a combination of structural limitations (i.e., a machine) and
`
`therefore patent-eligible in its own right under the express language of Section 101.
`
`As Judge Newman stated in her dissent, “[a] statement of purpose or advantage
`
`does not convert a device into an abstract idea.” Dissent at 3. The cases relied on
`
`by the majority do not suggest otherwise, as those cases simply held that the
`
`novelty of ineligible subject matter (i.e., laws of nature, natural phenomena, or
`
`abstract ideas), or matter that does not appear in the claim, cannot confer patent-
`
`eligibility; those cases say nothing as to the novelty of a combination of structural
`
`limitations (i.e., a machine) that actually are recited in the claim. See SAP Am.,
`
`Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“The claims here are
`
`ineligible because their innovation is an innovation in ineligible subject matter.”);
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339
`
`(Fed. Cir. 2017) (“While the specification may describe a purported innovative
`
`‘scalable architecture,’ claim 1 of the '187 patent does not.”).
`
`To the extent that there is a difference in meaning between the terms
`
`“unconventional” and “novel,” that difference must favor patent-eligibility, since
`
`something can be unconventional and yet not novel, but the opposite cannot be
`
`true; something that is novel will always be unconventional.
`
`15
`
`
`
`Case: 20-1760 Document: 57 Page: 22 Filed: 07/12/2021
`
`
`
`III. THE MAJORITY IMPROPERLY MADE NEW AND ERRONEOUS
`FINDINGS OF FACT AGAINST APPELLANTS
`
`The majority rejected Appellants’ argument that claim 1 is “directed to a
`
`patent-eligible improvement in digital camera functionality” under step one of the
`
`Alice/Mayo test based on a purported “mismatch between the specification … and
`
`the breath of claim 1 ….” Majority at 8. Specifically, the majority found that:
`
`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-specific while the fourth is
`a black-and-white sensor.
`
` …
`
`
`
`
`Yet representative claim 1 requires only a two-lens, two-image
`sensor configuration in which none of the image sensors must
`be color.
`
`Majority at 8. The majority used this as an additional basis for finding that claim 1
`
`does not include an “inventive concept” under step two, concluding that “[i]n other
`
`words, ‘[t]he main problem that [Yu] cannot overcome is that the claim—as
`
`opposed to something purportedly described in the specification—is missing an
`
`inventive concept.” Majority at 10 (emphasis in original) (quoting Two-Way
`
`Media, 874 F.3d at 1338.). Moreover, the majority also used this finding as a basis
`
`for rejecting the plausible allegations in the pleadings, stating that “a court need
`
`not accept as true allegations that contradict matters properly subject to judicial
`
`16
`
`
`
`Case: 20-1760 Document: 57 Page: 23 Filed: 07/12/2021
`
`
`
`notice or by exhibit, such as the claims and the patent specification.” Majority at
`
`11.
`
`This new finding against Appellants, made at the pleadings stage where all
`
`factual inferences must be drawn in favor of the non-moving party, was
`
`impermissible. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1261
`
`(Fed. Cir. 2017) (“Such an assumption is improper when reviewing a dismissal
`
`under Rule 12(b)(6), where all factual inferences must be drawn in favor of the
`
`non-moving party.”); Bascom, 827 F.3d at 1352 (“As explained above, construed
`
`in favor of BASCOM as they must be in this procedural posture, the claims of the
`
`’606 patent do not preempt the use of the abstract idea of filtering content on the
`
`Internet or on generic computer components performing conventional activities.”)
`
`Aside from the prohibition against making findings against the non-moving
`
`party at the pleadings stage, the majority’s finding is factually erroneous, and
`
`demonstrates the danger of deciding matters at the pleadings stage in patent cases
`
`involving highly complex technologies. As explained above, claim 1 covers both
`
`the two-sensor embodiment and the four-sensor embodiment described in the
`
`specification, and all of the advantages described in the specification apply equally
`
`to both embodiments, since those advantages arise from the image enhancement
`
`step that is performed by both embodiments, and not by the unclaimed image
`
`combination step that is performed o
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