throbber
Case: 20-1760 Document: 63 Page: 1 Filed: 08/12/2021
`20-1760, -1803
`United States Court of Appeals
`for the Federal Circuit
`
`YANBIN YU, ZHONGXUAN ZHANG,
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`Plaintiffs-Appellants,
`– v. –
`APPLE INC.,
`Defendant-Appellee.
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`––––––––––––––––––––––––––––––
`YANBIN YU, ZHONGXUAN ZHANG,
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`Plaintiffs-Appellants,
`– v. –
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Defendants-Appellees.
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`On Appeal from the United States District Court, Northern District
`of California, in Case Nos. 3:18-cv-06181-JD, 3:18-cv-06339-JD,
`Judge James Donato
`
`
`
`DEFENDANTS-APPELLEES RESPONSE TO
`PETITION FOR REHEARING EN BANC
`PHILLIP E. MORTON
`HEIDI L. KEEFE
`COOLEY LLP
`LOWELL D. MEAD
`DEEPA KANNAPPAN
`1299 Pennsylvania Avenue, NW,
`COOLEY LLP
`Suite 700
`3175 Hanover Street
`Washington, DC 20004
`Palo Alto, California 94304
`(202) 842-7800
`(650) 843-5000
`pmorton@cooley.com
`hkeefe@cooley.com
`lmead@cooley.com
`dkannappan@cooley.com
`
`Counsel for Defendant-Appellee Apple Inc.
`(For Continuation of Appearances See Inside Cover)
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`COUNSEL PRESS, LLC
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` (888) 277-3259
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`

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`Case: 20-1760 Document: 63 Page: 2 Filed: 08/12/2021
`
`DOUGLAS HALLWARD-DRIEMEIER
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue NW
`Washington, DC 20006
`(202) 508-4600
`douglas.hallward-
`driemeier@ropesgray.com
`
`
`JAMES R. BATCHELDER
`DAVID S. CHUN
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, California 94303
`(650) 617-4000
`james.batchelder@ropesgray.com
`david.chun@ropesgray.com
`
`STEVEN PEPE
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, New York 10036
`(212) 596-9000
`steven.pepe@ropesgray.com
`
`SCOTT S. TAYLOR
`ROPES & GRAY LLP
`800 Boylston Avenue
`Boston, Massachusetts 02199
`(617) 951-7000
`scott.taylor@ropesgray.com
`
`
`Counsel for Defendants-Appellees Samsung Electronics Co. Ltd.
`and Samsung Electronics America, Inc.
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`
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`

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`Case: 20-1760 Document: 63 Page: 3 Filed: 08/12/2021
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`
`
`CLAIM LANGUAGE
`
`Claim 1 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 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.
`Claim 2 recites:
`
`2. The improved digital camera as recited in claim 1, wherein said first
`image sensor sensitive to said full region of visible color spectrum.
`
`
`Claim 4 recites:
`
`4. The improved digital camera as recited in claim 1, wherein said analog-
`to-digital converting circuitry comprises two individual analog-to-digital
`converters, each integrated with one of said first and second image sensors
`so that said first and second digital images are digitized independently and
`in parallel to increase signal throughput rate.
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`

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`Case: 20-1760 Document: 63 Page: 4 Filed: 08/12/2021
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`
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`CERTIFICATE OF INTEREST
`
`Counsel for Appellee, Apple Inc. certifies the following:
`
`1. The full name of every party or amicus represented by me is:
`
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`Apple Inc.
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`2. The name of the real party in interest (Please only include any real party
`in interest NOT identified in Question 3. below) represented by me:
`
`
`None.
`3. All parent corporations and any publicly held companies that own
`10 percent or more of the stock of the party or amicus curiae represented
`by me are:
`
`
`None.
`
`
`4. The names of all law firms and the partners or associates that appeared
`for the party or amicus now represented by me in the trial court or agency
`or are expected to appear in this court are:
`
`
`COOLEY LLP: Heidi L. Keefe, Phillip E. Morton, Lowell D. Mead,
`Priya Viswanath, Dena Chen, Alexandra Leeper
`
`5. The title and number of any case known to counsel to be pending in this
`or any other court or agency that will directly affect or be directly
`affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47. 4(a)(5) and 47.5(b).
`
`Apple Inc. v. Yu, et al., IPR2019-02158 (USPTO PTAB);
`Samsung Electronics Co., Ltd. et al. v. Yu, et al., IPR2020-00492
`(USPTO PTAB); Apple Inc. v. Yu, et al., No. 21-1723 (Fed. Cir.).
`
`6. All information required by Fed. R. App. P. 26.1(b) (organizational
`victims in criminal cases) and 26.1(c) (bankruptcy case debtors and
`trustees). Fed. Cir. R. 47.4(a)(6):
`
`

`

`Case: 20-1760 Document: 63 Page: 5 Filed: 08/12/2021
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`
`
`None.
`
`
`Dated: August 12, 2021
`
`
`
`
`/s/ Heidi L. Keefe
`Heidi L. Keefe
`COOLEY LLP
`
`
`
`
`
`

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`Case: 20-1760 Document: 63 Page: 6 Filed: 08/12/2021
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`
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`CERTIFICATE OF INTEREST
`
`Counsel for Appellees Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. certify the following:
`
`1. The full name of every party or amicus represented by me is:
`
`Samsung Electronics Co., Ltd.
`Samsung Electronics America, Inc.
`
`2. The name of the real party in interest (Please only include any real party
`in interest NOT identified in Question 3. below) represented by me:
`
`
`None.
`None.
`3. All parent corporations and any publicly held companies that own
`10 percent or more of the stock of the party or amicus curiae represented
`by me are:
`
`
`None.
`Samsung Electronics Co., Ltd.
`
`4. The names of all law firms and the partners or associates that appeared
`for the party or amicus now represented by me in the trial court or agency
`or are expected to appear in this court are:
`
`
`ROPES & GRAY LLP: Douglas H. Hallward-Driemeier; James
`Batchelder, Steven Pepe, David Chun, Scott Taylor
`
`5. The title and number of any case known to counsel to be pending in this
`or any other court or agency that will directly affect or be directly
`affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47. 4(a)(5) and 47.5(b).
`
`Apple Inc. v. Yu, et al., IPR2019-02158 (USPTO PTAB);
`
`

`

`
`
`
`
`Case: 20-1760 Document: 63 Page: 7 Filed: 08/12/2021
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`Samsung Electronics Co., Ltd. et al. v. Yu, et al., IPR2020-00492
`(USPTO PTAB); Apple Inc. v. Yu, et al., No. 21-1723 (Fed. Cir.)
`
`6. All information required by Fed. R. App. P. 26.1(b) (organizational
`victims in criminal cases) and 26.1(c) (bankruptcy case debtors and
`trustees). Fed. Cir. R. 47.4(a)(6):
`
`None.
`
`Dated: August 12, 2021
`
`/s/ Douglas Hallward-Driemeier
`ROPES & GRAY LLP
`
`
`
`

`

`Case: 20-1760 Document: 63 Page: 8 Filed: 08/12/2021
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION ........................................................................................... 1 
`ARGUMENT ................................................................................................... 2 
`I.
`THE MAJORITY’S OPINION DOES NOT RAISE ISSUES OF
`EXCEPTIONAL IMPORTANCE ........................................................ 2 
`II. APPELLANTS IDENTIFY NO ERROR IN THE MAJORITY’S
`OPINION ............................................................................................... 6 
`A.
`The Majority Properly Determined the Claims’ “Focus” at
`Alice Step 1 .................................................................................. 6 
`The Court Properly Accounted for the “Combination” of
`Claim Elements at Alice Step 2. .................................................. 8 
`C. Appellants Did Not Raise Any Plausible Factual
`Allegations Sufficient to Confer Eligibility. ............................... 9 
`The Claimed Invention Raises Serious Preemption
`Concerns .................................................................................... 13 
`III. CONCLUSION ................................................................................... 14 
`
`
`B.
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`D.
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`-i-
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`

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`Case: 20-1760 Document: 63 Page: 9 Filed: 08/12/2021
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`TABLE OF AUTHORITIES
`
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`Page(s)
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`Cases
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ............................................................................ passim
`Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
`788 F.3d 1371 (Fed. Cir. 2015) .................................................................. 13
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S.Ct. 2107 (2013) ................................................................................... 4
`Berkheimer v. HP, Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) .................................................................. 12
`Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`935 F.3d 1341 (Fed. Cir. 2019) .................................................................... 6
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 983
`(2020) ................................................................................................. 5, 9, 11
`Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd.,
`955 F.3d 1317 (Fed. Cir. 2020) .................................................................... 7
`iLife Techs., Inc. v. Nintendo of Am., Inc.,
`839 F. Appx. 534 (Fed. Cir. 2021) ............................................................... 6
`Olaplex, Inc. v. L’Oréal USA, Inc.,
`__ F. Appx. __, No. 2020-1382, 2021 WL 1811722 (Fed. Cir.
`May 6, 2021) ............................................................................................... 10
`Omega Patents, LLC v. CalAmp Corp.,
`920 F.3d 1337 (Fed. Cir. 2019) .................................................................. 11
`PersonalWeb Techs. LLC v. Google LLC, et al.,
`No. 2020-1543, slip op. (Fed. Cir. Aug. 12, 2021) ............................... 7, 11
`Sensormatic Elecs., LLC v. Wyze Labs, Inc.,
`__ F. Appx. __, No. 2020-2320, 2021 WL 2944838 (Fed. Cir.
`July 14, 2021) ............................................................................................... 6
`-ii-
`
`
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`
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`

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`Case: 20-1760 Document: 63 Page: 10 Filed: 08/12/2021
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Simio, LLC v. Flexsim Software Prods., Inc.,
`983 F.3d 1353 (Fed. Cir. 2020) .................................................................... 4
`Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
`873 F.3d 1364 (Fed. Cir. 2017) .................................................................... 7
`In re TLI Commc’ns Patent Litig.,
`823 F.3d 607 (Fed. Cir. 2016) ............................................................. 5, 8, 9
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017) .................................................................. 12
`Statutes
`35 U.S.C. § 101 ........................................................................................ passim
`
`
`
`
`
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`-iii-
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`

`

`Case: 20-1760 Document: 63 Page: 11 Filed: 08/12/2021
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`
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`INTRODUCTION
`There is no basis here for rehearing en banc. The majority opinion
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`properly applied the Alice test and the Court’s longstanding precedent in
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`holding representative claim 1 ineligible. The opinion does not change the law,
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`raise “fresh uncertainties,” or increase “instability” in § 101 jurisprudence. See
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`Dissent at 7. It is, rather, Appellants that seek to revert § 101 law to a pre-Alice
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`world where every claim reciting a “mechanical and electronic device of
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`defined structure and mechanism” would be patent-eligible. Pet. at 3-4
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`(quoting Dissent at 2). But the Supreme Court in Alice rejected that
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`proposition. Op. at 7 n.2 (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
`
`U.S. 208, 224 (2014)).
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`The majority’s well-reasoned opinion faithfully applies this Court’s
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`precedent. Appellants admitted that every component recited in representative
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`claim 1 is a “generic and conventional” part of a digital camera. Op. at 6
`
`(quoting Reply Br. at 12). Appellants also did not dispute that the idea of using
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`multiple pictures to enhance each other has been well-known and practiced for
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`over a century. Op. at 6. In the wake of Alice, this Court has consistently
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`invalidated claims, like those here, in which the recited structure/mechanism is
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`merely a “generic environment in which to carry out the abstract idea.” Id.
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`
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`

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`Case: 20-1760 Document: 63 Page: 12 Filed: 08/12/2021
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`
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`Appellants do not demonstrate any error by the Court, let alone any error
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`requiring en banc rehearing. In fact, Appellants’ petition does not cite any
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`argument in their merits briefing, nor any well-pleaded allegation in their
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`complaints, that was allegedly misapprehended or overlooked. Instead, the
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`petition raises new arguments that seek to conflate the two-sensor configuration
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`recited in the claims at issue with a “four sensor” camera embodiment disclosed
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`in the specification but not in those claims. These new arguments are waived
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`as untimely and, even if considered, would not change the result. The majority
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`correctly appreciated the fundamental “mismatch” between the specification’s
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`four-sensor embodiment, which uses three color-specific sensors (e.g., red,
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`green, and blue) and a full-spectrum black-and-white sensor, versus claim 1,
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`which “requires only a two-lens, two-image-sensor configuration in which
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`none of the image sensors must be color.” Op. at 8. The claims at issue are
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`much broader, and this “breadth” dooms their eligibility. Id.
`
`I.
`
`ARGUMENT
`THE MAJORITY’S OPINION DOES NOT RAISE ISSUES OF
`EXCEPTIONAL IMPORTANCE
`Appellants’ purported “precedent-setting questions of exceptional
`
`importance” (Pet. at 1) do not identify any area of uncertainty in the law and
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`distort the record in an improper attempt to reargue the merits.
`
`2
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`

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`Case: 20-1760 Document: 63 Page: 13 Filed: 08/12/2021
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`First, as discussed below, the majority properly considered all “specific
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`requirements” recited in claim 1 when it determined that the claim’s “focus”
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`and “character as a whole” was directed to an abstract idea (see Section II.A,
`
`infra). Pet. at 1.
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`Next, the question of “[w]hether a court can make adverse findings of
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`fact against the non-moving party at the pleadings stage that are inconsistent
`
`with the patent specification, the file history, and/or plausible allegations in the
`
`complaint” is not in dispute (the answer is no). No such impropriety happened
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`here, and Appellants do not meaningfully attempt to demonstrate otherwise.
`
`See Section II.C, infra.
`
`Similarly, Appellants’ question “[w]hether a claim that presents no
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`danger of preempting an ‘abstract idea,’ either generally or in a particular field
`
`of use or technological environment, can be found ineligible for patent
`
`protection under 35 U.S.C. § 101” ignores established law holding that
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`complete preemption is not required, and erroneously presupposes that claim 1
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`presents no danger of preemption, which is incorrect. See Section II.D, infra.
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`Indeed, Appellants proclaimed in their original complaints that their claim “is
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`not limited to performing any particular type of image enhancement” and
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`3
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`

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`Case: 20-1760 Document: 63 Page: 14 Filed: 08/12/2021
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`
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`preempts “virtually all dual-lens cameras on the market today.” Appx50
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`(¶¶ 11-12), Appx74 (¶¶ 13-14) (emphasis added).
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`Appellants’
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`final enumerated question—“[w]hether a claimed
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`combination of non-abstract (e.g., structural) limitations that has not been
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`shown to exist in the prior art can be found to be ‘generic’ and
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`‘conventional’”—relies on the flawed premise that a claim requiring “a
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`mechanical and electronic device of defined structure and mechanism” cannot
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`be directed to an abstract idea. Pet. at 3-4 (citing Dissent at 2). Following from
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`this premise, Appellants erroneously contend that every claim to a novel
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`“combination of structural limitations (i.e., a machine)” should be “patent-
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`eligible in its own right under the express language of Section 101.” Pet. at 15;
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`cf. Dissent at 4-7 (canvassing pre-Alice law to suggest that claim 1 should be
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`patent-eligible because it recites a “mechanical/electronic device”). But the
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`Supreme Court has instructed that “[g]roundbreaking, innovative, or even
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`brilliant discovery does not by itself satisfy the § 101 inquiry,” Ass’n for
`
`Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2117 (2013),
`
`and reaffirmed in Alice that not every claim requiring a “tangible system (in
`
`§ 101 terms, a ‘machine’)” is patent-eligible, Op. at 7 n.2 (quoting Alice, 573
`
`U.S. at 224). See also e.g., Simio, LLC v. Flexsim Software Prods., Inc., 983
`
`4
`
`

`

`Case: 20-1760 Document: 63 Page: 15 Filed: 08/12/2021
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`
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`F.3d 1353, 1364 (Fed. Cir. 2020) (even assuming limitations are novel, that
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`“does not avoid the problem of abstractness” because alleged novelty “is not
`
`enough—standing alone—to confer patent eligibility”); In re TLI Commc’ns
`
`Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot every claim that
`
`recites concrete, tangible components escapes the reach of the abstract-idea
`
`inquiry.”).
`
`Appellants’ positions are thus predicated on frustrations with what the
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`law is relative to what they wish it were. But as this Court has explained and
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`the majority correctly followed, Alice requires invalidation where “[w]hat is
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`claimed is simply a generic environment in which to carry out the abstract
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`idea.” Op. at 6. The claims in In re TLI, for example—a case ignored by
`
`Appellants and the dissent—recited a “telephone unit” and “digital pick up
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`unit” for capturing images as part of a “mobile telephone system,” but were
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`nevertheless ineligible. In re TLI, 823 F.3d at 611-15. See also, e.g.,
`
`ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019),
`
`cert. denied, 140 S. Ct. 983 (2020) (ineligible claims recited an apparatus
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`containing “transceiver,” “controller,” and “control device”); Chamberlain
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`Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1345 (Fed. Cir. 2019)
`
`(ineligible claims recited a “movable barrier operator” containing “controller,”
`
`5
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`

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`Case: 20-1760 Document: 63 Page: 16 Filed: 08/12/2021
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`
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`“interface,” and “wireless data transmitter” structures); iLife Techs., Inc. v.
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`Nintendo of Am., Inc., 839 F. Appx. 534, 535-36 (Fed. Cir. 2021) (invalidating
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`claim reciting “a physical system that incorporates sensors”). “What matters,
`
`according to the [Supreme] Court, is the reality behind the machine or system
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`language, whether or not it simply clothes abstract concepts.” Sensormatic
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`Elecs., LLC v. Wyze Labs, Inc., __ F. Appx. __, No. 2020-2320, 2021 WL
`
`2944838, at *1-3 (Fed. Cir. July 14, 2021) (invalidating claims reciting a
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`system with “wireless input capture devices”).
`
`II. APPELLANTS IDENTIFY NO ERROR IN THE MAJORITY’S
`OPINION
`To the extent that Appellants identify purported “instability” in § 101
`
`jurisprudence (Dissent at 7), it is not exacerbated by the majority’s opinion and
`
`would not be resolved by rehearing en banc in this particular case. There is no
`
`error in the majority’s analysis under the facts or the law, which was a faithful
`
`and straightforward application of Alice.
`
`A. The Majority Properly Determined the Claims’ “Focus” at
`Alice Step 1
`Appellants assert that the majority did not discuss every claim limitation
`
`in evaluating the “focus” of claim 1 as an abstract idea at Alice step one (Pet.
`
`at 11-12), but a proper step one inquiry looks to the claim’s “character as a
`
`6
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`

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`Case: 20-1760 Document: 63 Page: 17 Filed: 08/12/2021
`
`
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`whole.” Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317,
`
`1326-27 (Fed. Cir. 2020) (citation omitted); PersonalWeb Techs. LLC v.
`
`Google LLC, et al., No. 2020-1543, slip op. at 13-14 (Fed. Cir. Aug. 12, 2021).
`
`There is no requirement that a discussion of that analysis mention each and
`
`every claim limitation. Here, the Court properly evaluated the “focus” of the
`
`claim, accounting for all of the “structural” elements. Op. at 5-6 (discussing
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`claim elements). Considered as a whole, the claims are directed to achieving a
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`desired functional result of capturing two images and producing a digital image
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`from one image “enhanced” with the other—i.e., the abstract idea of taking two
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`pictures and using one to enhance the other. The focus of the claimed invention
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`is not any improvement to any underlying digital camera technology.
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`This is thus a classic instance of claims “directed to a result or effect that
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`itself is the abstract idea and merely invoke[s] generic processes and
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`machinery” rather than “a specific means or method that improves the relevant
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`technology.” Op. at 5 (quoting Smart Sys. Innovations, LLC v. Chi. Transit
`
`Auth., 873 F.3d 1364, 1371 (Fed. Cir. 2017)). The claims fail to specify how
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`to achieve the desired result of an “enhanced” image with any underlying
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`algorithm, circuitry, or code. This Court’s precedent therefore dictated the
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`outcome, where Appellants admitted that every component recited in the claims
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`7
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`

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`Case: 20-1760 Document: 63 Page: 18 Filed: 08/12/2021
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`
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`is “generic and conventional” and did not dispute that the components “perform
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`only their basic functions.” Op. at 6.1 “What is claimed is simply a generic
`
`environment in which to carry out the abstract idea.” Id. (citing In re TLI, 823
`
`F.3d at 611).
`
`B.
`
`The Court Properly Accounted for the “Combination” of
`Claim Elements at Alice Step 2.
`Similar reasoning disposes of Appellants’ argument that the Court
`
`“discounted” the “claimed combination of limitations.” Pet. at 12-15. The
`
`majority explained that claim 1 does not pass muster under Alice step two
`
`because “the claimed hardware configuration itself is not an advance and does
`
`not itself produce the asserted advance of enhancement of one image by
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`another, which, as explained, is an abstract idea.” Op. at 10 (emphasis in
`
`original). As the majority appreciated, claim 1 fails to recite an inventive
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`concept that bridges the gaping chasm from the recited components to the
`
`
`1 Appellants also briefly mention that the two image sensors in claim 1 are
`“closely positioned with respect to a common plane” (Pet. at 8, 12) but do not
`demonstrate how this feature might provide a patent-eligible advance—and it
`does not. Close positioning of image sensors on a common plane too was
`generic and conventional, as exemplified by the prior art cited during
`prosecution of the ’289 patent. See Appellees’ Br. at 40-42 (citing Appx117,
`Appx123-135 at Appx124, Appx128, Appx132 (1:11-2:34), Appx133 (4:40-
`51)).
`
`8
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`

`

`Case: 20-1760 Document: 63 Page: 19 Filed: 08/12/2021
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`
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`desired result of producing an “enhanced” image. As Appellants concede, both
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`sensors in claim 1 can be identical black-and-white sensors. Pet. at 8; Op. at 8.
`
`Appellants criticize the majority for observing that the images produced by the
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`sensors “may be at different exposures,” Pet. at 11, but this point only
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`reinforces the majority’s opinion. The claim does not impose any requirements
`
`on exposure duration, image resolution, quantity of pixels, physical material
`
`quality, or anything else that would be necessary to achieve “enhanced” image
`
`quality. The majority was thus correct to conclude that “[t]he claimed
`
`configuration does not add sufficient substance to the underlying abstract idea
`
`of enhancement—the generic hardware limitations of claim 1 merely serve as
`
`‘a conduit for the abstract idea.’” Op. at 10. Stated differently, just as saying
`
`“do it on a computer” (Alice), “do it in a mobile phone” (In re TLI), or “do it in
`
`a charging station” (ChargePoint) does not confer patent eligibility on a claim
`
`directed to an abstract idea, neither does “do it in a two-lens digital camera.”
`
`C. Appellants Did Not Raise Any Plausible Factual Allegations
`Sufficient to Confer Eligibility.
`The majority properly reviewed de novo the question of eligibility under
`
`§ 101, and correctly concluded that there is a fundamental “mismatch” between
`
`the “breadth” of claim 1 and the narrow four-sensor embodiment cited by
`
`Appellants. Op. at 4-5, 7-8. This is not a new or erroneous “finding of fact”
`
`9
`
`

`

`Case: 20-1760 Document: 63 Page: 20 Filed: 08/12/2021
`
`
`
`against Appellants. Pet. at 16-18. The majority further concluded that the
`
`district court did not err in rejecting certain allegations in Appellants’
`
`complaints. Op. at 11 (recognizing that “a court need not accept as true
`
`allegations that contradict” the claims and the specification). Appellants’
`
`petition does not cite any factual allegations in their district court complaints
`
`that were allegedly overlooked by the Court—let alone any well-pleaded
`
`allegations grounded in the claim language that plausibly demonstrate an
`
`inventive concept—because none exist. If the majority materially disregarded
`
`an allegation that justified rehearing, Appellants’ petition should have
`
`demonstrated that basis. Olaplex, Inc. v. L’Oréal USA, Inc., __ F. Appx. __,
`
`No. 2020-1382, 2021 WL 1811722, at *10 (Fed. Cir. May 6, 2021) (“Judges
`
`are not like pigs, hunting for truffles buried in the record.”) (citation omitted).
`
`Appellants’ petition ignores the claims, instead resting a host of new
`
`arguments on the specification’s four-sensor embodiment. Pet. at 4-9, 17-18.
`
`These arguments fail both on the merits and procedurally. Procedurally,
`
`Appellants did not argue in their merits briefing that claim 1 is eligible because
`
`it allegedly implements and is limited to the four-sensor embodiment and
`
`thereby obtains all of that embodiment’s purported benefits; nor did Appellants
`
`raise their arguments purportedly distinguishing “image combination” from
`
`10
`
`

`

`Case: 20-1760 Document: 63 Page: 21 Filed: 08/12/2021
`
`
`
`“image enhancement.” Appellants therefore waived these arguments. Omega
`
`Patents, LLC v. CalAmp Corp., 920 F.3d 1337, 1343 (Fed. Cir. 2019) (where
`
`appellant’s “opening brief . . . failed to present a developed argument” the
`
`argument is waived).
`
`On the merits, Appellants’ new arguments regarding the four-sensor
`
`embodiment miss the mark because—like the arguments Appellants raised at
`
`the district court—they rely on the specification, not the language of the
`
`asserted claims. The Ҥ 101 inquiry must focus on the language of the Asserted
`
`Claims themselves, and the specification cannot be used to import details from
`
`the specification if those details are not claimed.” ChargePoint, 920 F.3d at
`
`769. Appellants devote several pages to new discussion of specification
`
`embodiments, but nothing in that discussion demonstrates that claim 1 contains
`
`any patent-eligible invention. PersonalWeb, slip op. at 16 (affirming that
`
`alleged “improvements in the specification” did not preclude judgment on the
`
`pleadings). The Court properly recognized the “mismatch” between the
`
`disclosure of the specification and the breadth of claim 1 to conclude that “the
`
`claim—as opposed to something purportedly described in the specification—
`
`is missing an inventive concept.” Op. at 8, 10 (emphasis in original) (quoting
`
`11
`
`

`

`Case: 20-1760 Document: 63 Page: 22 Filed: 08/12/2021
`
`
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1338
`
`(Fed. Cir. 2017)).
`
`Indeed, claim 1 is vastly broader than the four-sensor embodiment in the
`
`specification. In the four-sensor embodiment, three sensors are color-specific
`
`(red, green, blue) and the fourth is black-and-white, and the specification
`
`asserts that the mixing of color-specific sensors together with a black-and-white
`
`sensor purportedly provides certain “benefits and advantages.” See Op. at 7-8
`
`(quoting ’289, 9:23-27, 10:17-25, 2:52-57). Whatever benefits and advantages
`
`might be conferred by such an embodiment, they do not flow from claim 1,
`
`which “requires only a two-lens, two-image-sensor configuration in which
`
`none of the image sensors must be color.” Op. at 8; Pet. at 7-8 (discussing two-
`
`sensor embodiment and admitting that neither sensor in claim 1 needs to be
`
`color-specific).2
`
`
`2 The four-sensor embodiment does correspond with other, unasserted claims
`of the ’289 patent. Claims 6-25 recite four sensors including red, green, blue,
`and full-spectrum sensors. But those claims were never at issue because
`nobody allegedly infringed them. Ineligibility, of course, is determined on a
`claim-by-claim basis. E.g., Berkheimer v. HP, Inc., 881 F.3d 1360, 1370-71
`(Fed. Cir. 2018) (ineligible claims 1-3 and 9 reflected only the abstract idea
`with “conventional” components while claims 4-7 claimed different subject
`matter that allegedly “improves system operating efficiency and reduces
`storage costs”).
`
`12
`
`

`

`Case: 20-1760 Document: 63 Page: 23 Filed: 08/12/2021
`
`
`
`Contrary to Appellants’ argument, a broad abstract claim does not
`
`become patent-eligible merely by “covering” some device that also has
`
`additional unclaimed features (such as additional color-specific sensors). See
`
`Pet. at 17-18. Appellants’ contention that claim 1 “covers” various
`
`configurations of two, four, or more sensors only buttresses the Court’s
`
`observation that the “breadth of claim 1” shows that “the focus of the claimed
`
`advance is the abstract idea and not the particular configuration discussed in
`
`the specification.” Op. at 8.
`
`D. The Claimed Invention Raises Serious Preemption Concerns
`Finally, Appellants’ contention that the Court did not explicitly address
`
`the issue of preemption is also not grounds for rehearing. Pet. at 18-19. Where
`
`“claims are deemed only to disclose patent ineligible subject matter under the
`
`[Alice/]Mayo framework, as they are in this case, preemption concerns are fully
`
`addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
`
`F.3d 1371, 1379 (Fed. Cir. 2015). As explained above, the majority faithfully
`
`and properly applied that two-step Alice/Mayo framework. Appellants’ attempt
`
`to characterize claim 1 as “narrowly circumscribed” by comparing it to an
`
`unclaimed, single-sensor camera system (Pet. at 18), ignores the tenet that “the
`
`absence of complete preemption does not demonstrate patent eligibility” and
`
`13
`
`

`

`Case: 20-1760 Document: 63 Page: 24 Filed: 08/12/2021
`
`
`
`“does not change the conclusion that the claims are directed to patent ineligible
`
`subject matter.” Ariosa, 788 F.3d 1379.
`
`In fact, this case presented precisely the type of preemption concerns that
`
`underlie § 101 jurisprudence. Appellants criticize the Court for observing that
`
`the claims broadly aspire to enhance images “in some way” that is not limited
`
`to any specific enhancement technique. Pet. at 11, 12. However, Appellants
`
`themselves trumpeted in their original complaints that the claimed invention
`
`“is not limited to performing any particular type of image enhancement” and
`
`that “virtually all dual-lens cameras on the market today use the techniques
`
`claimed in the ’289 Patent.” Appx50 (¶¶ 11-12), Appx74 (¶¶ 13-14) (emphasis
`
`added). Although they later amended their complaints to remove those
`
`admissions, they still attempted to preempt a wide variety of different accused
`
`technologies not recited in claim 1, such as digital zoom and “bokeh” effects.
`
`Appx251-256 (¶¶ 25-31), Appx258, Appx279-286 (¶¶22-30), Appx287-288.
`
`III. CONCLUSION
`For the foregoing reasons, Appellees respectfully request that the Court
`
`deny Appellants’ petition.
`
`
`
`
`
`14
`
`

`

`Case: 20-1760 Document: 63 Page: 25 Filed: 08/12/2021
`
`August 12, 2021
`
`COOLEY LLP
`
`
`
`Dated:
`
`
`By: /s/ Heidi L. Keefe
`Heidi L. Keefe
`
`Attorneys for Appellee
`Apple Inc.
`
`Dated:
`
`August 12, 2021
`
`ROPES & GRAY LLP
`
`
`
`By:
` /s/ Douglas Hallward-Driemeier
`Douglas Hallward-Driemeier
`
`Attorneys for Appellees
`Samsung El

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