A new Federal Circuit decision further expands the patent ineligibility defense of 35 U.S.C. §101 which, in the wake of the U.S. Supreme Court’s 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, became the defense de jure against infringement claims involving software-related inventions.
Mechanical and electromechanical inventions appeared safe from its reach—until now. A blistering dissent, coupled with a statement from a House politician promptly lambasting the majority’s decision, highlight division within the Federal Circuit and are a rallying point for patent law reformers.
Three categories of invention, namely, “abstract ideas, laws of nature and natural phenomena (including products of nature),” remain ineligible for patent protection according to case law interpreting Section 101.
In American Axle & Mfg. Inc. v. Neapco Holdings LLC, decided on Oct. 3, the U.S. Court of Appeals for the Federal Circuit applied the “law of nature” ineligibility category and allowed the ineligibility defense to invade the realm of mechanical patents.
U.S. Patent No. 7,774,911 discloses a method of “attenuating vibration in a driveline having a shaft assembly that transmits torque between first and second driveline components.” The ‘911 patent discusses three types of vibration affecting a prop shaft:
- Bending mode vibration,
- Torsion mode vibration, and
- Shell mode vibration.
The ‘911 patent defines two types of vibration attenuation, namely “resistive attenuation,” and “reactive attenuation.”
The claims of the patent recite a method of manufacturing a shaft assembly of a driveline system, including the steps of inserting at least one liner into a shaft member, and positioning that “at least one liner” within the shaft member, such that the liner “attenuate[s] at least two types of vibration” (claim 1) or functions as both a “tuned resistive absorber for attenuating shell mode vibrations” and “a tuned reactive absorber for attenuating bending mode vibrations” (claim 22).
District Court Proceedings and the Federal Circuit Majority Opinion
In December 2015, American Axle & Mfg. Inc. (AAM) sued Neapco Holdings LLC and Neapco Drivelines LLC (collectively, Neapco) in the U.S. District Court for the District of Delaware, alleging infringement of the ‘911 patent. Neapco raised a Section 101 ineligibility defense, and both parties cross-moved for summary judgment on that defense.
The district court granted Neapco’s motion, finding that the asserted claims were “directed to laws of nature: Hooke’s law and friction damping.”
The district court held that the claims’ direction to tune a liner to attenuate to different vibration modes amounted to merely “instruct[ing] one to apply Hooke’s law to achieve the desired result of attenuating certain vibration modes and frequencies’ without ‘provid[ing] [a] particular means of how to craft the liner and propshaft in order to do so.’”
A three-judge panel of the Federal Circuit heard and affirmed AAM’s appeal of the district court’s judgment in a two–one decision.
The majority’s analysis first echoed the district court by stating, “the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc trial-and-error process of changing the characteristics of a liner until a desired result is achieved.”
The majority found fault with what it perceived as a lack of detail in the asserted claims. It commented that the solution producing the desired results of damping bending mode vibration was not claimed in the patent.
The majority also found that the claims did not define any “inventive concept.” In reaching that conclusion, it employed reasoning similar to that which it expressed in the first step of its analysis.
Criticism of Majority Opinion; Contending With American Axle
Dissenting, Judge Kimberly A. Moore cast thunderbolts from all directions in expressing her sharp disagreement with the entirety of the majority’s analysis. She lamented, “I am deeply troubled by the majority’s disregard for the second part of the [Alice] test, its fact finding on appeal and its repeated misrepresentation of the record, in each instance to the patentee’s detriment; all when we are to be applying the summary judgment standard no less.”
The very next day more criticism ensued, this time from Rep. Doug Collins (R-Ga.), who is involved with patent law reform efforts, and who released a statement blasting the decision.
Until patent reform efforts succeed, or the panel decision in American Axle is vacated or reversed in further appellate proceedings (American Axle filed a petition for rehearing with the Federal Circuit Nov. 18), owners of patents on even mechanically-oriented inventions must now consider the possibility of a Section 101 defense, as well as traditional defenses, if they at all contemplate asserting such patents in litigation.
Patent owners in litigation must be very cautious in considering whether and to what extent to designate any claims as “representative claims” for purposes of any Section 101 analysis.
To the extent that a mechanically-oriented invention involves an equation or law of physics to express the novelty of the invention, take care in drafting the patent application detailing the tangible aspects of the invention that represent an improvement over the prior art, and claiming the invention in a way that does not appear to involve a trial-and-error application of that law or equation.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Michael Cicero is a member of Taylor English’s Intellectual Property Department and focuses his practice on patent prosecution and preparation of opinions. His work also extends to trademark prosecution and copyright matters.