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Yu v. Apple Inc.

United States District Court, N.D. California

July 2, 2019

YANBIN YU, et al., Plaintiffs,
v.
APPLE INC., Defendant. YANBIN YU, et al., Plaintiffs,
v.
SAMSUNG ELECTRONICS CO., LTD, et al. Defendants.

          ORDER RE MOTION TO DISMISS RE: DKT. NO. 43

          JAMES DONATO, UNITED STATES DISTRICT JUDGE

         These cases are related actions brought by the patentees over dual-lens cameras in cell phones. Yanbin Yu and Zhongxuan Zhang (“Yu”) sued Apple Inc. in Case No. 18-cv-06181-JD. Dkt. No. 1 (the Apple complaint is designated “AC”).[1] They filed a substantively similar complaint against Samsung Electronics Co., Ltd. and its subsidiary, Samsung Electronics America, Inc. (together “Samsung”), in Case No. 18-cv-06339-JD. Dkt. No. 1 (the Samsung complaint is designated “SC”). The cases involve one patent owned by Yu: U.S. Patent No. 6, 611, 289, entitled “Digital Cameras Using Multiple Sensors with Multiple Lenses” (the “'289 patent”). AC ¶ 8-12; S.C. ¶ 10-14. Yu alleges that the dual-lens cameras in Apple and Samsung cell phones infringe the '289 patent. AC ¶ 13-25; S.C. ¶ 15-26.

         Apple has moved to dismiss for patent ineligibility under 35 U.S.C. § 101, and Samsung has joined the motion on the basis of Apple's arguments. Dkt. No. 43; Dkt. No. 40 at 5 in Case No. 18-cv-06339. In defendants' view, the asserted claims cannot be patented because they “are directed to the abstract idea of creating an image by using one image to enhance another image, ” without any saving inventive concept. Dkt. No. 43 at 6. In light of “the sources properly considered on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice, ” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018), the AC and S.C. are dismissed under Section 101 and Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014), with leave to amend.

         BACKGROUND

         The '289 patent was issued to Yu on August 26, 2003, and expired January 15, 2019. Dkt. No. 1-1. The patent was directed to improving digital photos, which were said to lack the resolution and dynamic color range of traditional film images. See AC ¶ 10; S.C. ¶ 12; Dkt. No. 1-1 at 1:24-2:22. The inventors described “a great need” to improve the quality of digital photos without “enormously incurring the cost of photosensitive chips with multimillion photocells.” Dkt. No. 1-1 at 2:3-7. To that end, the patent claims an invention of a digital camera “capable of producing high resolution images” with “better colors and details in a greater range.” Id. at 2:4-16. The patent proposes an arrangement of multiple image sensors, lenses and a processor to “produce high quality and film-like true color digital images.” Id. at 2:36-49.

         The parties' briefing focuses on claim 1 as the representative independent claim. Dkt. No. 43 at 8; Dkt. No. 45 at 8; Dkt. No. 46 at 8. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1352 (Fed. Cir. 2016) (approving treatment of claims as representative in Section 101 challenge). Claim 1 recites:

1. An improved digital camera comprising:
a first and second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;
two lenses, each being mounted in front of one of said two image sensors; said first image sensor producing a first image and said second image sensor producing a second image;
an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;
an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and
a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

Dkt. No. 1-1 at 10:38-58. All the remaining asserted claims are dependent on claim 1. Id. at 10:59-11:6.

         The patent expressly eschews any special hardware or software in favor of a “generic solution.” See Id. at 2:3-7. The patent states that different types of sensors may be used as part of the invention. Id. at 4:67-5:4. The lenses in the patent are contrasted to a special process. Id. at 2:56-57 (“[N]o micro-lenses process is needed.”). The analog-to-digital circuitry is described simply as “digitiz[ing] the output signals.” Id. at 5:41-43. The image memory is not detailed. The image processor is described functionally. Id. at 2:44-49 (“Using a set of digital image processes ...


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