Federal Circuit Affirms Ineligibility Of Patent Claiming Methods For Manufacturing Automotive Components
On October 3, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the patent-ineligibility judgment of the United States District Court for the District of Delaware. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, __ F.3d __ (Fed. Cir. Oct. 3, 2019). The CAFC ruled that the district court properly granted summary judgment that a patent directed to methods for manufacturing propshafts with liners capable of simultaneously damping two modes of vibrations was patent-ineligible under 35 U.S.C. § 101.
American Axle & Manufacturing, Inc. (AAM) owns U.S. Patent No. 7,774,911 (the ’911 patent), which claims methods of manufacturing a damped propshaft including “tuning” a liner to be capable of simultaneously damping two modes of vibration. Propshafts are metal tubes most often used in automobile drivelines to deliver rotational power from an engine to a distant part of the automobile. As the engine runs, the propshaft is subjected to bending, torsion, and/or shell modes of vibration that cause it to bend, twist, and/or compress, respectively, causing significant noise. Liners are installed inside propshafts to reduce the noise.
In 2015, AAM sued Neapco Holdings LLC and Neapco Drivelines, LLC for infringement of the ’911 patent. The parties filed cross-motions for summary judgment regarding the eligibility of the asserted claims under Section 101. The district court entered judgment that the asserted claims are patent-ineligible under Section 101. The CAFC affirmed.
Applying the well-established Alice Step One test (see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)), the CAFC majority found that the asserted claims “simply stat[e] a law of nature while adding the words ‘apply it.’” Analogizing to the Supreme Court’s Parker v. Flook decision, 437 U.S. 584 (1978), the CAFC found that the asserted claims are directed to Hooke’s law—a natural law that mathematically relates the mass and/or stiffness of an object to the frequency with which that object vibrates—in a particular context, but without any physical structure for achieving the claimed result of tuning the liner to simultaneously dampen two different vibration modes. And, although AAM’s briefing in district court and on appeal identified specific ways of tuning that AAM discovered, the majority found such facts were irrelevant to the ineligibility analysis because the asserted claims did not actually claim those specific ways.
Under Alice Step Two, the CAFC found that the asserted claims do not recite an inventive concept, rejecting AAM’s arguments that the claims are inventive because liners had not previously been tuned to simultaneously dampen two different vibration modes. The CAFC found that AAM’s claimed advance is in fact “simply controlling various known characteristics of the liner,” such as the mass and thickness of the liner, in a “conventional . . . trial and error process” to achieve the claimed result.
Judge Moore dissented, arguing that the majority had reduced the Alice inquiry down to whether the asserted claims are directed to a law of nature and ignoring evidence on the record of numerous inventive concepts recited in the asserted claims. Judge Moore also reasoned that the majority’s concern with the asserted claims’ lack of physical structure for achieving the claimed result was not a section 101 eligibility issue, but a section 112 enablement issue.
This decision reflects the continuing trend toward finding results-oriented claims—claims that specify a result, but not how to achieve it—as subject matter ineligible to be patented.