Revised FC opinion maintains invalidity of one independent claim as claiming a natural law and nothing more but vacates and remands DC invalidity decision regarding second independent claim as including “positioning” limitation”

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al.

Docket No. 2018-1763
October 3, 2019 (revised July 30, 2020)

Update (July 30, 2020): Original FC opinion affirmed the DC decision that AA’s claims are ineligible under § 101 since “the mechanism for achieving the desired result” using the “natural” Hooke’s law “are not actually claimed”. In this revised decision, the FC panel affirmed the DC decision that independent claim 22 is ineligible (e.g., “features that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis…[t]he focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work”) but vacated and remanded the DC decision regarding claim 1 (e.g., “unlike claim 22 has an additional limitation of ‘positioning the at least one liner’…[t]he mere fact that any embodiment practicing claim 1 necessarily involves usage of one or more natural laws is by itself insufficient to conclude the claim is directed to such natural laws…the abstract idea basis was not adequately presented and litigated in the” DC). Regarding Judge Moore’s dissent, the FC panel majority disagreed with “its characterization of this case as not involving a recitation of the natural law” since “[i]n all but name…claim 22 recites Hooke’s law” and explained that Mayo’s step 2 analysis does not “require[] an express claim recitation of the natural law” as “the analysis is a substantive one about whether the claim is ‘directed to’ ineligible matter and, if so, whether there is enough that the ineligible subject matter itself to create eligibility.”

Original Brief Summary: DC holding that AAM’s “method for manufacturing” claims are patent ineligible under § 101 affirmed (e.g., “the mechanism for achieving the desired result” using the “natural” Hooke’s law “are not actually claimed”).

Original Summary: AA appealed DC grant of Neapco’s motion for summary judgment (SJ) and holding the asserted claims of US 7,774,911 directed to “[a] method for manufacturing” driveline propeller shafts (“propshafts”) in a way that “attenuate[s] at least two types of vibration transmitted through the shaft” using a “liner” (a “tuned” liner) to be directed to unpatentable subject matter (§ 101). The ‘911 specification explains that “prior art liners, weights, and dampers” have been used to attenuate vibrations during manufacturing, and the FC panel opinion explains that “certain variables related to the liner” can be “changed (…‘tuned’)” to attenuate the vibrations (“Two types of attenuation are relevant here” resistive attenuation and reactive attenuation.”) The DC construed “tuning” (“tuning at least one liner”) “to mean ‘controlling the mass and stiffness of at least one liner to match the relevant frequency or frequencies’”. AAM argued “that it ‘conceiv[ed] of the novel and unconventional concept of ‘tuning’ a liner” that “‘[can] dampen multiple types of vibration’ simultaneously.” The FC panel explained that “[n]either the claims nor the specification describes how to achieve such tuning” and “discloses a solitary example describing the structure of a tuned liner, but does not discuss the process by which that liner was tuned.” It also explained that under the Mayo/Alice test, the court asks “whether the claims are directed to a law of nature, natural phenomenon, or abstract idea” and then “whether the claim embod[ies] some ‘inventive concept’” (Mayo, US 2012; Alice, US 2014). Regarding the first step, the FC panel wrote that it was known in the art “that a liner…could be designed to…function” as an attenuator and that this “at least in part involves an application of 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”). AAM argued “that the claims are not merely directed to Hooke’s law”, but the FC panel disagreed because “the mechanism for achieving the desired result-are not actually claimed” (Alice; Synopsis, FC 2016; Ariosa, FC 2015; Diehr (US 1981); Flook (US 1978)). The FC panel wrote that “as in Flook,…the claims here do not disclose how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes simultaneously”, also recognizing “that AAM may be correct” that the claimed system “is more complex than just the bare application of Hooke’s law”. The FC panel also wrote that the enablement issues raised in Judge Moore’s dissent (e.g., “expands 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority”) are not relevant here without much explanation. The FC panel then concluded that “nothing in the claims qualifies as an ‘inventive concept’” (e.g., “no more than conventional pre- and post-solution activity”), finding AAM’s arguments to be “no more than an elaborated articulation of reasons…why the claims are not directed to a natural law”. Thus, the DC’s decision was affirmed.

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