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American Axle & Manufacturing, Inc. v. Neapco Holdings LLC

Claims For Mechanical “Tuning,” But Not Reciting Techniques, Patent-Ineligible as Covering Natural Law

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, __ F.3d __, 2019 WL 4865832 (Fed. Cir. Oct. 3, 2019) (DYK, Moore (dissenting), Taranto) (D. Del.: Stark) (4 of 5 stars)

Fed Cir affirms summary judgment of subject-matter ineligibility under § 101. AAM’s patent relates to a method for manufacturing a propeller shaft (“propshaft”) with liners tuned to attenuate vibration. At step one of the Mayo/Alice test, the opinion reasons that AAM’s claims are directed to a natural law, specifically “Hooke’s law” (though potentially other laws, too), addressing the relationship an object’s mass (or stiffness) and the frequency with which that object will oscillate. “[T]he claims’ instruction to tune a liner essentially amounts to the sort of directed prohibited by the Supreme Court in Mayo—i.e., ‘simply stating a law of nature while adding the words “apply it.”’” Op. at 11. That the act of actually tuning a liner may be complex was not contradictory because details on performing that act were not claimed in the patent. “While AAM may have discovered patentable refinements of [the process for tuning], . . . neither the specifics of any novel computer modeling nor experimental modal analysis are disclosed in the patent, much less included in the claims themselves, and these unclaimed features cannot function to remove [the claims] from the realm of ineligible subject matter.” Id. at 15. The opinion discusses cases including Flook, 437 U.S. 584 (1978), and Diehr, 450 U.S. 175 (1981), and reasons that, for inventions employing laws of nature, patent-eligible claims may not encompass all possible solutions for achieving a desired result. It disagrees with the dissent’s characterization of the issue as one of enablement.

At Mayo/Alice step two, the opinion finds no inventive concept sufficient to confer patent eligibility. Even if the use of liners for tuning were previously unknown, the claimed advance was “simply controlling various known characteristics of the liner” to achieve the tuning goals. “[This] direction to engage in a conventional, unbounded trial-and-error [tuning] process does not make a patent eligible invention, even if the desired result to which that process is directed would be new and unconventional.” Op. at 21–22.

Dissent: Judge Moore criticizes the majority for “expand[ing] § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority,” and raises questions about the majority’s “disregard for the second part of the Alice/Mayo test, its fact finding on appeal, and its repeated mischaracterization of the record[.]” Op. at 1–2. In her view the majority’s concerns are better treated as concerns with enablement. While disagreeing that AAM’s claims are directed to a natural law, her opinion mostly analyzes Mayo/Alice step two and urges that the non-conventionality of AAM’s approach should have secured patent eligibility.

KEYWORDS: SUBJECT MATTER ELIGIBILITY; NATURAL LAW; ENABLEMENT