Article by Clyde Shuman
A divided panel of the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, has invalidated a patent related to automobile driveshaft technology under 35 U.S.C. § 101 after finding it claimed only a natural law. In American Axle & Manufacturing Inc. v. Neapco Holdings LLC, case number 18-1763, the court affirmed a grant of summary judgment from the District of Delaware that found American Axle & Manufacturing’s (“AAM’s”) method of making driveshafts inserted with liners to reduce noise and vibrations not eligible for patent protection. A lengthy dissent by Judge Moore, about which more later, called the majority holding “troubling.”
By way of background, AAM sued Neapco for patent infringement in December 2015 and the parties cross-moved for summary judgment as to patent eligibility under § 101. On February 27, 2018, the district court granted Neapco’s motion and denied AAM’s cross-motion, holding that the asserted claims of the suit patent were invalid because they claim ineligible subject matter under § 101.
The court concluded that “the Asserted Claims as a whole are directed to laws of nature: Hooke’s law and friction damping,” and 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.”(Hooke’s law is an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates. Friction damping is damping that “occur[s] due to the resistive friction and interaction of two surfaces that press against each other as a source of energy dissipation.”) The court found that the claimed “additional steps consist of well-under-stood, routine, conventional activity already engaged in by the scientific community . . . and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.”
On appeal, the Federal Circuit rejected AAM’s argument that the patent claims were not merely directed to Hooke’s law (i.e., a law of nature), finding that desired results cited by AAM– liners had not previously been used to dampen bending mode—as opposed to shell mode—vibrations –were not claimed in the patent. The Court reiterated that that unclaimed features are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis. In this case, the Court found that elements of the method here that AAM argues take the patent outside the realm of ineligible subject matter were not actually claimed. The Court said,
But even the patent specification recites only a nonexclusive list of variables that can be altered to change the frequencies exhibited by a liner and a solitary example of a tuned liner (though not the process by which that liner was tuned). Most significantly, the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations
The Court noted that the patent did not disclose specifics of any novel computer modelling nor experimental modal analysis, much less include them in the claims themselves, and held “these unclaimed features cannot function to remove claims 1 and 22 from the realm of ineligible subject matter.” Citing Supreme Court precedent, the Federal Circuit said:
[T]he claims [here] patent are directed to the utilization of a natural law (here, Hooke’s law and possibly other natural laws) in a particular context… [T]he claims here do not disclose how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes simultaneously. The claims here simply instruct the reader to tune the liner—a process that, as explained above, merely amounts to an application of a natural law [ ] to a complex system without the benefit of instructions on how to do so.
As to Mayo/Alice step 2, the Court found that the claimed advance was simply controlling various known characteristics of the liner so as to achieve attenuation of two vibration modes simultaneously, which admittedly was well known in the relevant industry. “in the automotive industry [to] test for natural frequencies and damping of propshafts by performing experimental modal analysis.” AAM Op. Br. 8. As explained above, this direction to engage in a conventional, unbounded trial-and-error process does not make a patent eligible invention,
Judge Moore, dissenting, argued that the majority’s ruling improperly focused on whether the patent included enough detail describing how to make or use the invention, i.e., lack of enablement, and not whether it was directed to patent-eligible subject matter.
Highlighting a portion of the majority’s ruling that the claims are patent-ineligible because they are “directed to the utilization of a natural law (here, Hooke’s law and possibly other natural laws),” Judge Moore said: “Section 101 is monstrous enough, it cannot be that now you need not even identify the precise natural law which the claims are purportedly directed to.”
Judge Moore also disagreed that the claims were directed to a natural law, and in any event, the claims contained “many” inventive concepts, satisfying part 2 of the Mayo/Alice test, thus precluding summary judgment, including: “detail[ ] about the structure and positioning of the liner inside the drive shaft”.
Today, the majority concludes that the [ ] patent claims are not eligible because they do not teach a skilled artisan how to tune a liner. The majority holds that they are directed to some unarticulated number of possible natural laws apparently smushed together and thus ineligible under § 101. The majority concludes that the inventive concepts “make no difference.” Section 101 simply should not be this sweeping and this manipulatable. It should not be used to invalidate claims under standards identical to those clearly articulated in other statutory sections, but not argued by the parties. It should not subsume § 112. It should not convert traditional questions of fact (like undue experimentation) into legal ones. The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.