We’re mad as h— and we’re not going to take it anymore![1] American Axle Manufacturing, Inc. v. Neapco Holdings LLC

The U.S. patenting community became disconcerted after the U.S. Court of Appeals for the Federal Circuit decision [‘Federal Circuit’] in the above captioned case. [2] The Federal Circuit has previously found patent ineligible subject matter whenever a patent expressly claimed a natural law or natural phenomenon. However, this decision is noteworthy because the court (i) found ineligible subject matter based upon an implicit natural law and (ii) applied this natural law to the mechanical arts.

U.S. Pat. No. 7,774,911 [’911 patent] discloses a method for attenuating [damping or tuning] vibrations within driveline propeller shafts [prop shafts] with hollow devices known as liners. These liners, positioned concentrically within the shafts, attenuate vibrations transmitted through a vehicle’s shaft assembly. The asserted improvement is liner construction to attenuate two kinds of shaft vibrations simultaneously. In contrast, previously each kind of prop shaft vibration was necessarily attenuated individually by previously existing devices.

American Axle appealed the summary judgement of non-infringement based upon patent subject matter ineligibility.  The Federal Circuit agreed with the district court based upon the patent eligible subject matter test of Alice Corporation v. CLS Bank International,[3] and Mayo Collaborative Services v. Prometheus Laboratories.[4] Under Step 1 of this test, the court resolves whether a claim is directed to an abstract idea, natural law or natural phenomenon. If so, the court then decides whether an element or ordered combination within the claim comprises an inventive concept which adds a significant feature to the otherwise ineligible subject matter.

In this instance, under Step 1 the Federal Circuit concluded that the claims were directed to Hooke’s law, i.e., a natural law that relates vibration frequency to stiffness and mass. The Federal Circuit further observed that under Step 1 that the first independent claim could be achieved by numerous methods, and that the claims merely describe a desired result. In sum, the Federal Circuit concludes that there was application of a natural law without any limitations designated for achieving the damping result.   Under Step 2 of the test, the court found no inventive concept to save the claim from being directed to Hooke’s law. Instead, the remaining steps of the claim amounted to more than conventional pre- and post-solution activity and the inventive description of designing the liner is absent.

The dissent[5] challenged the Federal Circuit majority to explain how Hooke’s formula for spring compression results in patent ineligible subject matter under these circumstances. This dissent also observed that the majority characterized prop shaft tuning as patent ineligible, but that this industrial method has historically been patent eligible. If the Supreme Court grants certiorari will patent subject matter eligibility rise or fall on Hooke’s formula for a unidimensional spring?

© 2021 Adrienne B. Nauman. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress. com.                                      

[1] Howard Beale in “Network.”

[2] American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al., 967 F.3d 1285 (Fed. Cir. 2020), petition for cert. filed Docket No. 20-891 (Dec.  28, 2020).

[3]  573 U.S. 208 (2014).

[4] 566 U.S. 66 (2012).

[5]  967 F.3d 1285 (dissent).


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