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Friday, July 9, 2021 Much of the discussion about the Federal Circuit’s precedential opinion in  Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits that the Federal Circuit’s opinion has more to do with the manner in which the patent was asserted in the complaint and the resulting Fed. R. Civ. P.. 12(b)(6) motion practice than the nature of the patented invention. This opinion does, however, serve as a reminder to patent prosecutors to be careful when drafting claims having broad functionality because the § 101 inquiry does not depend solely on what is recited in preamble.

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