The asserted patent claimed a digital camera comprising, in relevant part: "a digital image processor . . . producing a resultant digital image from said first digital image enhanced with said second digital image."
The district court granted defendant's Rule 12(b)(6) motion to dismiss on the basis that the asserted claims were invalid under § 101.
Applying the two-step Mayo/Alice framework, the Federal Circuit affirmed. At step one, the court found the claim was directed to the abstract idea of taking two pictures and using one picture to enhance the other. The claimed advancement of the patent was the image that resulted from using one picture to enhance the other—an idea that had been known by "photographers for over a century." Further, the court rejected plaintiff's argument that the claim was "directed to a patent-eligible improvement in digital camera functionality," because the claim only recited "conventional camera components" to create the enhanced image.
At step two, the court found the claim did not include an inventive concept. Instead, it reiterated that the claim merely invoked "conventional components to apply the abstract idea." Further, the fact that the claim was allowed over multiple prior art references is insufficient by itself to confer eligibility.
In dissent, Judge Newman found that the majority conflated subject-matter eligibility with the novelty and non-obviousness requirements of patentability. She expressed concern that the opinion will enlarge § 101 adjudication; even if the patent does "not ultimately satisfy all the substantive requirements of patentability," it "does not convert a mechanical/electronic device into an abstract idea."
Read the full decision here.
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