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Delaware Court Finds Industrial Invention Unpatentable Under Section 101
03/06/2018On February 27, 2018, the United States District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter. American Axle & Mfg. v. Neapco Drivelines LLC, case no. 15-CV-1168. The decision is particularly interesting because it applies section 101 of the United States patent laws to mechanical inventions, outside of the computer context where recently such defenses have most often been raised.
Section 101 prescribes the categories of inventions and discoveries that can properly be the subject of a patent: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” These categories are limited by judicially-created proscriptions against patenting abstract ideas, natural phenomena, and laws of nature.
American Axle & Manufacturing, Inc. (AAM) had asserted against Neapco Holdings LLC and Neapco Drivelines LLC (Neapco) a patent claiming methods of manufacturing driveline shaft assemblies. Drive shafts can be a source of noise and vibration detectable by vehicle occupants, and even before AAM’s invention it was known in the industry to use shaft liners (made of, e.g., cardboard and elastomers) to dampen a shaft’s vibration. AAM’s patent claims described inserting a liner into a hollow shaft, as was already known. The central limitation of the claims was tuning the liner to better reduce vibrations. For example, one claim recited “tuning a mass and a stiffness of at least one liner,” and another recited “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member.”
The patent claims did not describe how this tuning should be carried out. But Neapco argued, and the Court held, that regardless, this kind of tuning represented an application of Hooke’s law, a principle of physics dating to the seventeenth century. Hooke’s law, often represented as F=kX, relates the force required to compress or stretch a spring (F) to the distance it is being compressed (X) and to a constant (k) that is a physical property of the particular spring. “Therefore, Neapco asserts, in order to ‘tune’ the liner, one merely applies Hooke’s law and then measures the amount of damping” of driveline vibrations.
The Court agreed with Neapco: “There is no dispute that adjusting the mass and stiffness of the liner will change the amount of damping of a certain frequency. The claimed methods are applications of Hooke’s law with the result of friction damping.” The Court based this conclusion on, among other things, the inventor’s own testimony that “tuning is basic physics.”
Having found that the claims were directed to an application of a natural law—one of the subjects excluded from patentability under Section 101—the Court went on to determine whether the claims contained something inventive other than the application of the law of nature, and found nothing not conceded to have been known in the prior art (“the parties here do not dispute that the non-tuning claim limitations are well-understood, routine, and conventional”). The Court therefore concluded that the subject of the claims was unpatentable, and found the claims invalid.
The case is interesting because, as AAM argued to the Court, the patents ultimately found to be directed to unpatentable subject matter “are directed to industrial processes for manufacturing very large automotive components.” Unlike computerized methods, for example, which have so often been found unpatentable in recent years, this kind of industrial technology is the heart of what has been the subject of patents for centuries.
The critical fact seemed to be that the claims “fail to instruct how to design the tuned liners or manufacture the driveline system to attenuate vibrations.” Put another way, the claims “are not directed to any specific, discrete liner design but rather a solution to the problem of attenuating shell and bending mode vibrations generally by applying physics.” While Neapco and the Court looked at the problem as one of patenting a law of nature, one might also characterize the claims as directed to the abstract idea of reducing vibrations—“a solution to the problem of attenuating shell and bending mode vibrations generally,” rather than a specific solution or set of solutions. Regardless, the case represents an interesting extension of current section 101 jurisprudence, and, in some ways, a glimpse back at the patent law of decades and even centuries ago.
