February 10

Patent Eligibility


— Clear As Mud —

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 18-1763 (Fed. Cir. Oct. 3, 2019) (rehearing en banc denied and updated opinion July 2020)

The appellate court for patent cases has just ‘clarified’ a previous opinion in a split en banc decision. As clear as mud, that is. 

“The district court granted Neapco’s motion and held that the asserted claims are ineligible under § 101. We affirm in part and vacate and remand in part.” 

The en banc panel denied review by the full court in a 6-6 vote, which doesn’t bode well for clarity. 

The court appears to be evenly divided on the direction that patent eligibility jurisprudence should go. 

Where is it going?

The court held “…independent claim 22 of the ’911 patent is patent ineligible under section 101 because it simply requires the application of Hooke’s law to tune a propshaft liner to dampen certain vibrations… “  However, because claim 1 also requires a “positioning” step, in addition to tuning step of claim 22, and “…may reflect a broader definition of tuning,” the appellate court vacated the holding of the district court and sent the case back “…to the district court to address the eligibility of claim 1.”

Well, OK, I guess, except Hooke’s law is nowhere to be found in either of the claims, really. 

The argument made in the lower court was that it was well known how to tune and position a liner in the prior art. It was basically physics and an application of Hooke’s Law.  

If so, the claims would be anticipated or obvious over the prior art. Why is patent eligibility under Section 101 even being considered when the argument made sounds more like a 102/103 rejection? 

Here’s the appellate court’s rationale…

“To determine what a claim is “directed to” at step one, we look to the “focus of the claimed advance.” [See the impressive list of precedents…]

See, e.g., Trading Techs Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).2 A claim to a method of manufacturing can be directed to a natural law. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 224 (2014) (“The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point. There is no dispute that a computer is a tangible system (in § 101 terms, a ‘machine’) . . . .”); O’Reilly v.

Morse, 56 U.S. (15 How.) 62, 113 (1853) (“Neither could the man who first discovered that steam might, by a proper arrangement of machinery, be used as a motive power to grind corn or spin cotton, claim the right to the exclusive use of steam as a motive power for the purpose of producing such effects.”); ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 983 (2020) (“[A]s the Supreme Court indicated in Alice, whether a device is ‘a tangible system (in § 101 terms, a “machine”)’ is not dispositive.” (quoting Alice, 573 U.S. at 224)).”

OK. So, no help there. 

Even though it is a method of manufacturing a driveshaft, the claim is not safe if the method is directed to a natural law by looking at what the focus of the claimed advance is. 

“Claim 22 explicitly provides for “tuning a mass and a stiffness of at least one liner.” ’911 patent, col. 11, l. 31. Under the district court’s construction, “tuning a mass and a stiffness of at least one liner” in claim 22 means “controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies.” J.A. 15, 1047. Thus, claim 22 requires use of a natural law of relating frequency to mass and stiffness— i.e., Hooke’s law. Claim 22 confers patent coverage if the attenuation goal is achieved by one skilled in the art using any method, including any method implemented by computer modeling and trial and error. That claim 22 here merely describes a desired result is evident from the face of the claim.”

Ahhh! I’ve got it! The claim is not patent eligible because it does nothing more than claim tuning of a liner according to Hooke’s Law by merely describing a desired result. The claim is drafted in a way that prevents someone from tuning a drive shaft if the desired result is achieved. 

So, certainly, the appellate court must have evidence that there are multiple ways of achieving the result besides those disclosed in the patent application. Right?  And those other ways must be known in the art. Right?

Not so much.

The appellate court delves into physics and engineering based on deposition testimony and expert testimony. The party challenging the patent simplified everything to an argument of merely applying Hooke’s Law, while the party defending the patent rightly pointed out that tuning to more than one vibrational state is far more than applying Hooke’s Law, and the patent claims a new way of tuning that is an improvement over the state of the art.

The appellate court wasn’t buying this argument, stating: “…neither established processes nor ‘improved’ processes for implementing the underlying natural laws are claimed…” in claim 22 of the patent. “What is missing is any physical structure or steps for achieving the claimed result.” The bottom line of the court is the following:

As “reflected repeatedly in our cases,” to avoid ineligibility, a claim must “ha[ve] the specificity required to transform [the] claim from one claiming only a result to one claiming a way of achieving it.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.


So, fine. Clarity! Right?  The appellate court’s “…holding is limited to the situation where a patent claim on its face and as construed clearly invokes a natural law, and nothing else, to accomplish a desired result.”

But wait…

The court then remands to the district court claim 1 as not being patent ineligible based on a natural law. Claim 1 is shown, in part, below.

“…tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode…,” which has two steps. 

Claim 1 has a “tuning” step similar to the one that got claim 22 in trouble, and it has a “positioning” step. Somehow, this makes a difference in the majority opinion of the court. 

Both the tuning and the positioning steps recite a desired result, but “positioning” is not part of Hooke’s Law. 

So, if there is a law of nature with a name on it, the claim element is patent ineligible, but if the law of nature does not have some known equation, it’s fair game? 

Doesn’t this just come back to whether it is known in the art or not? Shouldn’t we be looking at whether a person having ordinary skill in the art would know of some method of tuning that reads on claim 22 and some method of tuning and positioning that reads on claim 1?

If claims cannot merely recite desired results, without more, then claim 1 should be patent ineligible too. How can claim 22 be patent ineligible but claim 1 be patent eligible?

Whether claim 22 recites or invokes a natural law is debatable.

Hooke’s law of elasticity was discovered by the English scientist Robert Hooke in 1660. It states that, for relatively small deformations of an object, the displacement or size of the deformation is directly proportional to the deforming force or load.

It seems to me that most of the arguments relied upon by the majority opinion are the result of better lawyering preserved in the record rather than any actual recitation of any law of nature in the claims at issue.

Holding claim 22 patent ineligible and claim 1 patent eligible clarifies nothing. 

I agree that these claims are result focused. Of course they are. This might have been brought up as a drafting error under some theory, but that would have been hard to prove. 

In fact, bringing this up as rendering the claims indefinite or unsupported by the written description…  Well, that might have changed the meaning of the claims assigned by the district court during claim construction. 

Patent litigation is complex.

That’s why patent eligibility challenges are all the rage with litigators. You can win on an argument in summary judgment after claim construction is complete. I get it. 

But it is absolutely perplexing the patent office and causing mayhem for clients that have inventions that are not easily recited as mechanical components fitted one piece to the other. 

Sometimes, the only way to get the full breadth of an invention claimed is to draft claims drawn to the result achieved by a process. Characterising the structure of a cake after it is baked is very difficult. Most things in materials engineering and chemistry and biologics are hard to characterize at first. 

Many millions of dollars may have to be spent to understand exactly how something may be physically characterized, and the patent system was established to allow inventors to get a valid patent issued, or at least filed with some expectation of issuance, before raising the funds needed for the work necessary to characterize all the structures and reactions and the like. 

If the courts are going to prevent broadly claiming inventions based on achieving a desired result, which may or may not be argued to be some law of nature, then will product by process limitations no longer be allowed, without something more?

That would truly be a shame. 

So many important inventions are first patented as a product by process based on achieving an unexpected and surprising result from known materials being used in new, inventive processes. These inventions produce a new product, but the nature of the product, like the structure of a cake, cannot be determined before applying for a patent. 

If these inventions are no longer reliably patentable using traditional claiming strategies, due to an ever expanding subject matter ineligibility law, then inventors will have no alternative than to keep these processes secret.

Patents help inventors to raise money and help the public by making the invention public. This allows others to learn about and improve the invention. Eventually, the invention is committed to the public domain. That provides the inventor with a motivation to commercialize the technology during the patent term, benefiting everyone. That’s why patents are part of the U.S. Constitution. 

It is clear that the courts are vexed by patent ineligibility, and litigators are only making matters worse. 

It’s time for Congress to step up and address patent ineligibility. My preference is to better define in law what is and what is not patent eligible.

I believe that patent law should protect inventions defined by product by process recitations in claims. These inventions ought to be patent eligible subject matter, because it benefits us all.


subject matter eligibility

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