Creep of Patent Eligibility Goulash

Introduction:

I have written frequently about the morass of “logic” created by the courts regarding the patent eligibility of computer implemented business methods and software.  This logic pertains to whether the software is an “abstract idea” and therefore not eligible for patent protection.  This is a fluid topic.  It has been termed eligibility goulash by a judge of the Court of Appeals for the Federal Circuit (CAFC), the final arbiter of most patent issues.

I have written that that this patent eligibility goulash has expanded beyond computer software and computer implemented business methods.  See Mechanical Engineering Patents and Eligibility Goulash.  The CAFC expanded this confusion of patent eligibility and debate of abstract ideas to digital cameras in the June 2021 decision of Yu v. Apple.  Judge Newman vigorously dissented, believing the majority judges totally misunderstood the issue and the applicability of the Section 101 exception of patent eligibility.

Discussion:

The patent in question pertained to an arrangement of multiple digital cameras used to take simultaneous images of the same object.  The multiple images are digitally combined to create an enhanced image.

The CAFC majority looked at the components used in the camera combination device and determined the components were well known in the technology.  Also combining photo images was also well known.  The majority then (somehow) determined the camera combination was utilizing an abstract idea.  The majority totally confused the issue of novelty (Section 102) with the issue of patent eligible subject matter (Section 101).  Note that this is totally different from the issue of use of computer software to perform a known business or other function.  For example, the primary case that launched this controversy pertained to a computer program used to automatically hedge against an investment risk decision.  Hedging against risk was deemed a well known business method and merely implementing the method using computer software was not a patentable invention.

In Yu v Apple, there was no issue of utilization of computer software to perform a known business practice. Rather, at issue was the arrangement of multiple lens, image sensors, analog to digital converting circuitry, a digital image processor coupled to a memory component that could combine the multiple images to provide a single enhanced image.  As stated by the dissenting judge, the camera subject of the invention “is a mechanical and electronic device of defined structure and mechanism; it is not an “abstract idea”.

In contrast, the majority determined that photo image enhancement was well known and therefore constituted an abstract idea.  The majority stated “the claimed (camera) configuration does not add sufficient substance to the underlying abstract idea of (photo image) enhancement – the generic hardware limitations of claim 1 merely serve as a ‘conduit for the abstract idea’”.

My point is that the dissenting judge was correct.  The majority is confusing the issue of patent novelty with the issue of patent eligible subject matter.  The majority is allowing the “abstract idea” controversy to creep into patentability issues of electro-mechanical devices.  A camera is a device that is certainly eligible for patent protection, provided the camera configuration is also novel and the camera improvement is not obvious.  The majority in the Yu v Apple decision is inexcusably “muddying the waters” of the already confused issue of when are computer software or computer business methods patent eligible subject matter.  (I believe it is well settled that merely utilizing computer functionality to implement a known accounting or business practice is not patentable.)

Note there is a sub-issue tracing through the Yu v Apple decision.  The issue is that the single claim examined by the court was deemed to be written a high level of generality.  However, it was acknowledged that the specification (and drawings) showed detailed examples of novelty and non-generic specificity.  Perhaps the court should have looked at other claims, i.e., claims describing more detail of the digital camera structure.  This may have prevented the majority from going off on the “abstract idea” tangent.

Conclusion:

The issue regarding when is computer software or computer implemented business method patentable is highly nuanced.  See Patenting Computer Software.  Even the judges of the CAFC do not seem to understand the issue of when improvements are eligible for patent protect.  This is unfortunate and only adding confusion. An inventor needs to consult with knowledgeable patent counsel to sort through the issue.  This muddled issue is NOT an excuse not to timely file a provisional application for patent protection.  See DIY Provisional Applications.

 

© David McEwing 2021