Intellectual Property Law
New Matter Fall 2021, Volume 46, Edition 3
Content
- 2021 DC Delegation Report-July 20, 2021
- Fair Use, Art Appropriation, Transformation, Equity Justice and Cultural Equity Under the Constitution: Andy Warhol Foundation V. Goldsmith
- I'M NOT "HUMAN" AFTER ALL: ARTIFICIAL INTELLIGENCE AND THE INVENTORSHIP REQUIREMENT
- Intellectual Property Section
- Ip and Art: An International Perspective
- Letter From the Chair
- Letter From the Editor-in-chief
- Ninth Circuit Report
- Non-enablement of Functional Antibody Claims
- Quarterly International Ip Law Update
- Table of Contents
- The Licensing Corner
- The Race To the Courthouse Just Got a Little Easier For Accused Infringers
- Trade Secrets
- Ttab Decisions and Developments
- Federal Circuit Report
FEDERAL CIRCUIT REPORT
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