Last week, a split panel of the U.S. Court of Appeals for the Federal Circuit issued an opinion in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 2018-1763 (Oct. 3, 2019). The ruling affirmed a district court’s grant of summary judgment that an American Axle patent was directed to ineligible subject matter under 35 U.S.C. § 101.
American Axle’s U.S. Patent No. 7,774,911 (“the ’911 patent”) is directed to a method of manufacturing driveline propeller shafts—“propshafts”—with liners to attenuate vibrations that can occur in the use of the propshafts. Propshafts, in their use, are subject to three kinds of vibrations: bending mode, torsion mode, and shell mode. Though propshafts and the use of liners to attenuate vibrations have been known in the art for decades, American Axle argued its discovery that a liner could be made to attenuate two types of vibration—namely, bending mode and shell mode—was new.
The problem, according to the Federal Circuit majority, was that the claims did not recite how to achieve such dual attenuation. Instead, they merely recited a natural law (the physics principle known as Hooke’s law) and directed one skilled in the art to apply it. Neither the claims, nor the written description, the majority held, disclosed to one skilled in the art how the invention could be carried out. For this reason, the majority held the claims of the ’911 patent failed the Supreme Court’s two-part eligibility test from Mayo Collaborative Services v. Prometheus Laboratories, Inc., which evaluates whether the claims are (1) directed to a natural law and, if so, (2) whether they include an inventive concept.
Judge Moore authored a scathing dissent, accusing the majority of improper fact-finding, misrepresentation of the record, and conflation of the enablement requirement of section 112 with the limits on eligibility under section 101. Judge Moore also suggests that the majority’s opinion essentially eliminated the second part of the Mayo test, and thus improperly expanded the universe of patent ineligible subject matter. “The hydra” of § 101, Judge Moore states, “has grown another head.”