In a June 11, 2021 decision, Yu v. Apple Inc., a
Federal Circuit panel issued a precedential decision, with a
dissent, upholding the invalidation of patent claims to a digital
camera on a motion to dismiss. The claims were deemed unpatentable
under § 101 of the Patent Act because they were directed to
"the abstract idea of taking two pictures (which may be at
different exposures) and using one picture to enhance the other in
some way."1 As demonstrated by the divergence of
viewpoints between the majority and dissent, the Yu decision may
raise more questions than answers about the application of §
101 to determining patent eligibility.
Section 101 of the Patent Act provides eligibility requirements
for patents, setting forth that patents may be granted on "any
new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement
thereof."2 In the Alice v. CLS Bank
decision, the Supreme Court spelled out the test used to
