Intellectual Property Law

New Matter Fall 2021, Volume 46, Edition 3


Rex Hwang

Skiermont Derby LLP

This Quarter’s article focuses on the Federal Circuit’s recent decision in Yu v. Apple Inc.1 In this case, a three-judge Federal Circuit panel once again dove into the "murky morass that is § 101 jurisprudence,"2 only to emerge with yet another split decision relating to patent eligibility.

In Yu, a split Federal Circuit panel upheld the invalidation of a digital camera patent under 35 U.S.C. § 101 because, according to the majority, the patented claims were (1) directed to the abstract idea of taking two pictures and using one to enhance the other, and (2) lacked an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention. In a dissenting opinion, Judge Newman was critical of the outcome because the patented claims covered a physical device having a designated structure and mechanisms that perform specified functions. Accordingly, she concluded that while the claimed invention "may not ultimately satisfy all the substantive requirements of patentability…that does not convert a mechanical/electronic device into an abstract idea."3

Join CLA to access this page

Join Now

Forgot Password

Enter the email associated with you account. You will then receive a link in your inbox to reset your password.

Personal Information

Select Section(s)

CLA Membership is $99 and includes one section. Additional sections are $99 each.