Apple and Samsung Oppose Petition for Rehearing in Digital Camera Patent Appeal

On Thursday, Apple Inc. and Samsung Electronics Co. Ltd. and Samsung Electronics America Inc. argued that rehearing en banc was unwarranted after the inventors of a digital camera patent asked the Federal Circuit to reconsider their case last month. The appeal concerns whether a representative claim of an improved digital camera patent issued in 1999 is patent-eligible subject matter under 35 U.S.C. § 101.

A divided Federal Circuit panel initially found the claim of the U.S. Patent No. 6,611,289 ineligible for patent protection because “the recited structure/mechanism is merely a ‘generic environment in which to carry out the abstract idea.’” The June decision was accompanied by a dissent, wherein Judge Newman reasoned that the ’289 patent specification states that the digital camera described achieves superior image definition, but that description of its advantage “does not convert a device into an abstract idea.”

In their petition for rehearing en banc, plaintiff-appellants Yanbin Yu and Zhongxuan Zhang contended that “it is unprecedented for a claim drawn [from] a machine of such precisely defined structure to be invalidated under Section 101.” The ’289 Patent did not only state the concept of image enhancement, or only apply image enhancement to an existing digital camera architecture, the filing claimed. 

Instead, it reportedly “created a completely new digital camera architecture that could be used in a specific way to provide a technological solution to technological problems associated with prior digital cameras.” As such, Yu and Zhang asserted that the claim at issue is patent eligible and must be reconsidered by the full Federal Circuit.

In this week’s response, Apple and Samsung contended that the plaintiff-appellants have no basis for requesting rehearing. According to the filing, the majority correctly applied the appropriate legal test and longstanding precedent in reaching its decision.

Apple and Samsung assert that Yu and Zhang do not establish any error the court made, let alone an error necessitating en banc rehearing. The plaintiff-appellants also failed to cite any briefing argument or complaint allegation that was wrongly construed or overlooked. Instead, the tech companies claim, the petition raises new merits arguments that “are waived as untimely and, even if considered, would not change the result.”

The plaintiff-appellants are represented by Dan Johnson Law Group LLP, Apple by Cooley LLP, and Samsung by Ropes & Gray LLP.