American Axle’s patent claimed methods of manufacturing driveline propeller shafts for automotive vehicles using liners to reduce a specific type of vibration. Former Delaware District Court Judge Leonard Stark (recently elevated to the Federal Circuit) applied the two-step framework for determining patent eligibility set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). He concluded that the claims’ focus on tuning a liner to attenuate to different vibration modes merely “instruct[s] one to apply Hooke's law to achieve the desired result of attenuating certain vibration modes and frequencies.” Am. Axle & Mfg. v. Neapco Holdings LLC, 309 F. Supp. 3d 218, 228 (D. Del. 2018). Hooke’s law is a physics principle that falls under the “laws of nature” exception to patent-eligible subject matter under Section 101. It states that the force needed to extend or compress a spring by some distance is proportional to that distance. Because American Axle’s patent claims were directed to a law of nature, and because the additional steps of the claims were “well-understood, routine, conventional activity already engaged in by the scientific community,” the district court concluded that the claims were not patent eligible. Id. at 228.
Writing for the majority, Federal Circuit Judges Timothy Dyk and Richard Taranto affirmed the district court’s ineligibility ruling as to certain of the claims at issue, finding that the claims “simply require[] the application of Hooke’s law to tune a propshaft liner to dampen certain vibrations.” Am. Axle & Mfg. v. Neapco Holdings LLC, 967 F.3d 1285, 1292 (Fed. Cir. 2019). The court further explained that “[w]hat is missing is any physical structure or steps for achieving the claimed result.” Id. at 1275. Judge Kimberly Moore dissented, arguing that the majority’s decision “collapses the Alice/Mayo two-part test to a single step ‒ claims are now ineligible if their performance would involve application of a natural law.” Id. at 1304.
Following the decision, American Axle petitioned the Federal Circuit for panel rehearing and rehearing en banc. The Federal Circuit denied the petition, spawning a 46-page set of concurring and dissenting opinions reflecting a deeply divided court on the analysis for determining patent eligibility under section 101. Among other observations, the dissenting opinion from the denial of rehearing en banc remarked that “[t]he court’s rulings on patent eligibility have become so diverse and unpredictable as to have a serious effect on the innovation incentive in all fields of technology.” Am. Axle & Mfg. v. Neapco Holdings LLC, 966 F.3d 1347, 1357 (Fed. Cir. 2020).
Flash forward to the Supreme Court’s denial of American Axle’s petition for writ of certiorari. American Axle’s petition called out the Federal Circuit for invalidating an industrial process with a tangible result ‒ “[E]ven if American Axle’s invention involves an application of [Hooke’s law], it still ‘perform[s] a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing).’” Pet. at 19 (quoting Diamond v. Diehr, 450 U.S. 175, 184 (1981)). It appeared that the Supreme Court might take up the petition, having asked the U.S. government to weigh in. And the government urged the Court to grant certiorari, noting that “[t]he decision below reflects substantial uncertainty about the proper application of Section 101, and this case is a suitable vehicle for providing greater clarity.” Brief for the United States as Amicus Curiae, American Axle & Mfg., Inc. v. Neapco Holdings, LLC, No. 20-891, at 9. However, apparently seeing no need to take up this particular case to clarify Section 101 law, the Supreme Court denied American Axle’s petition.
Takeaways from the Supreme Court’s denial of certiorari in American Axle
- The Supreme Court will not provide clarity in the framework for deciding patent eligibility any time soon.
- Patent eligibility will continue to be determined on a case-by-case basis and will continue to ensnare seemingly “tangible” patent claims.
- The Supreme Court and Federal Circuit may continue to diverge on issues of patent law. See, e.g., TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1516 (2017) (rejecting the Federal Circuit’s interpretation of the patent venue statute); WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018) (rejecting the Federal Circuit’s approach to recovery of lost foreign sales); Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020) (rejecting the Federal Circuit’s approach to the appealability of denial of institution of inter partes review); United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (rejecting the Federal Circuit’s analysis of executive powers bestowed on administrative patent judges); Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021) (rejecting the Federal Circuit’s application of assignor estoppel).
- Public comments provided in response to the United States Patent and Trademark Office's (USPTO’s) request for public comment on ineligibility also reflect “a continuing divide” in the landscape for determining patent subject matter eligibility. See USPTO Subject Matter Eligibility- Public Views.
- Drafting patent claims to avoid an ineligibility finding and best-positioning an Alice motion or opposition under the Mayo/Alice framework will continue to be guided by the sometimes difficult-to-pin-down themes and outcomes in Federal Circuit precedent.
Client Alert 2022-179
