Practical Tips for Drafting Patent Applications After American Axle & Manufacturing Inc. v. Neapco Holdings

By Christopher Hall
October 31, 2019

“[After American Axle], the patent practitioner would do well to look carefully at the scope of claim elements and make sure there is sufficient detail in the limitations that the claim elements have the solution to the problem, rather than having a claim to the natural law and the instructions to ‘apply it’ to some claim elements.”

https://depositphotos.com/57976815/stock-photo-word-tips-on-toy-bricks.htmlThe United States Court of Appeals for the Federal Circuit decided on October 3 to affirm the ruling by the United States District Court for the District of Delaware that the asserted claims of U.S. patent number 7,774,911 are directed to patent ineligible subject matter under Section 101 (American Axle & Manufacturing Inc. v. Neapco Holdings LLC ). Much has been written about the majority and dissenting opinions. Here, we concentrate on what the patent practitioner can do when drafting a patent application in light of the case.

Explain How

One of the findings is that the specification discussed types of attenuation in propshafts, and tuning of a liner to attenuate shell mode vibration, or bending mode vibration, and the claims instruct to do “tuning [of] at least one liner to attenuate at least two types of vibration transmitted through the shaft member” (claim 1). But the plaintiff argued, and the district court agreed, that neither the specification nor the claims instruct as to how to do the tuning (American Axle & Manufacturing Inc. v. Neapco Holdings LLC, case number 18-1763 page 7, lines 8-9). The patent practitioner would do well to explain the “how” of “tuning”, or any experimentation or adjustment, in the specification and also in the claims, especially when the tuning or adjustment is important to the novelty of the claim. Explaining how tuning or adjustment is done can help overcome an assertion that a claim is directed to a natural law with the instructions “apply it”, and not significantly more. Explicitly explaining how a natural law is applied, with sufficient detail, will also answer to this assertion, because the natural law in and of itself does not say how to apply itself.

Look Carefully at Claim Scope

Another finding is “the representative claims are not limited to any type of liner or the dampening of specific bending modes” (page 13 footnote lines 10-12). The patent practitioner would do well to look carefully at the scope of claim elements and make sure there is sufficient detail in the limitations that the claim elements have the solution to the problem, rather than having a claim to the natural law and the instructions to “apply it” to some claim elements. There is always a trade-off between broader and narrower claim scope and the details in the elements and keeping this test of a claim in mind can help in decisions about claim scope. It appears a broader claim is more at risk in this regard.

The court says: “This distinction between results and means is fundamental to the step 1 eligibility analysis, including in law-of-nature cases, not just abstract-idea cases.”  (Page 16 lines 1-3). The patent practitioner could test a proposed claim to see if it is a claim to a result, without sufficient means for achieving that result, and revise the claim accordingly. This speaks again to describing the “how” in the specification and the claim.

Specify “How” in Functional Claims

Citing Electric Power Group v. Alstom, 830 F.3d at 1355–56, the court noted “the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under §101”. Functional claiming is certainly powerful, often broad, and well accepted, but has this risk. The patent practitioner could test a proposed claim written in a functional claiming style to see if there is sufficient detail in the function and the result to be significantly more than the natural law applied to the claim elements. How is the function performed, how is the result achieved?

Getting Enablement Right

Commenting, “The dissent suggests that the failure of the claims to designate how to achieve the desired result is exclusively an issue of enablement” (page 20 lines 15-17), the court emphasizes the importance of enablement. Patent practitioners should always be aware of this, and here it appears to count doubly, for Section 101 and Section 112 (see also the dissent). Enablement is what allows the hypothetical person of ordinary skill in the art, with the patent at hand, to make and use the invention. Yet again, this is the “how”.

The Lessons are Clear

Whether one personally agrees or disagrees with the court ruling, and there are interesting comments in the dissent about both claim limitations and legal principles, the lessons from the court ruling are clear. Explaining in the specification and claims of a patent how a natural law is applied, how a function is performed and how a result is achieved can position a claim as more than a natural law with instructions to “apply it”, and could bolster the argument for eligibility under 35 USC §101.

 

The Author

Christopher Hall

Christopher Hall is a registered patent agent at Womble Bond Dickinson. He counsels clients in preparing and prosecuting patents in the electrical, telecommunications, computer software, and mechanical arts. In addition, he has 17 years of industry experience as a professional engineer, and is named as sole inventor or co-inventor on 15 granted patents. He practices in Womble Bond Dickinson’s Silicon Valley office.

For more information or to contact Chris, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments. Join the discussion.

  1. Paul Johnson October 31, 2019 9:08 am

    What do you expect from a liberal arts graduate?

  2. Concerned October 31, 2019 9:26 am

    I am having trouble with the intrigrity of the entire system. The dissent in Axle does not help with my belief, nor do the responses I have been receiving in my prosecution.

    A frequent contributor on this website warned us ahead of time that Axle would have serious issues that go straight to the heart of the patent system. He was unfortunately correct.

    My own prosecution has statements and conduct from the examiner that are questionable. Can a process be routine, conventional and well understood when not one example of the inventive step is found by the examiner or by any one else on an open challenge? Can a process have no new and useful end or practical application when all parties are in agreement that a long standing problem was solved by human hand that escaped hundreds of thousands of working professionals and experts for decades at great costs to society in financial terms? If you have practical tips on how to reverse the preceding situations, please feel free to share them.

    And some of the side steps by the examiner are also cute such as: Can not have a practical application if the process is abstract. Really? Read the memos from your own Director dated January 2019 and explain Benson 409 U.S. 63, 67 (1972).

    This article is probably more well stated in a balanced legal system, however, Dorothy my dear, we are no longer in Kansas.

  3. TFCFM November 1, 2019 10:21 am

    CH: “There is always a trade-off between broader and narrower claim scope and the details in the elements and keeping this test of a claim in mind can help in decisions about claim scope.

    It seems to me that the author omits an important piece of advice — perhaps because it’s so blindingly obvious, but let me make it explicit:

    Patent applications are permitted to — and often and advisably do — include claims of varying scope. Go ahead and try to “claim both the present and the future” with a very broad claim, if you like. However, include at least one claim directed to what you actually invented, too, so that you’ll have something to fall back on (unlike the patentee in AAM v Neapco) if a court or the patent office isn’t amused by your attempts to claim more broadly.

    This same advice applies when one attemtps to claim an invention functionally. Functionally-claim yourself silly, but include some concrete claims, too.

  4. Anon November 1, 2019 2:43 pm

    with a very broad claim, if you like. However, include at least one claim directed to what you actually invented, too

    Your disdain cannot help but seep out.

    You make it seem like it is “OK” to knowingly claim what one does not believe that one has invented (as long as smaller scope claims are also there).

    By this notion you reveal yourself to NOT be a registered patent attorney. NO registered patent attorney would advance such advice.

    Functionally-claim yourself silly, but include some concrete claims, too.

    Here as well, you show yourself to not have a grasp on the actutal patent law.

  5. B November 2, 2019 4:52 am

    @ Anon “with a very broad claim, if you like. However, include at least one claim directed to what you actually invented, too”

    FYI, American Axle did this, but the majority decided not to review the dependent claims.

    Dear Author, I appreciate the effort and the intelligence behind this article, but the CAFC is corrupt. They don’t care about right from wrong. The distort the law and the factual record of any case to get to a preferred conclusion.

  6. B November 2, 2019 4:55 am

    @ Anon “Here as well, you show yourself to not have a grasp on the actual patent law.”

    Yep. The actual law is that the CAFC is entitled to spew whatever nonsense they want. I wouldn’t trust Taranto or Dyk to mow my lawn much less review a 101 issue

  7. B November 2, 2019 5:01 am

    “Citing Electric Power Group v. Alstom, 830 F.3d at 1355–56, the court noted “the essentially result-focused, functional character of claim language has been a frequent feature of claims held ineligible under §101”.

    Dear Author, your problem is that: (1) you read the EPG decision, but (2) you didn’t listen to oral arguments or read the briefs. Had you done so you’d realize you had a Homer Simpson “D’oh!” moment.

    The magic behind EPG was the use of a special type of data. The issue was totally ignored by Taranto in the decision

  8. Anon November 2, 2019 11:43 am

    B,

    As you alight, the bigger problem remains (and even today’s advice is no panacea, because tomorrow’s court may well ignore what they want to ignore in order to come to the desired Ends).

    The over-riding problem is that the score board is broken.

    Advice – like that given in this article – that does not reflect that the score board is broken cannot fix or even come close to starting to fix the actual problem, and thus, is nothing more than trying to put a band-aid on a gushing wound.

    The score board MUST be fixed.

    There is nothing wrong with triage, and “advice” to take in the interim. But when that advice ignores the larger drivers, there is a very real problem that such advice may do more harm than good by inducing complacency — or even worse: acceptance of the broken score board as some new “status quo.”

  9. TFCFM November 4, 2019 9:48 am

    Anon @#4: “You make it seem like it is “OK” to knowingly claim what one does not believe that one has invented (as long as smaller scope claims are also there).

    To the contrary, my advice is better read as suggesting that “if you’re foolish enough” to claim more than you’ve invented, you should also include claims limited to what you’ve invented.

    Courts and the PTAB, as whiners here know, have been wont to strike down the former sort of claims.

  10. TFCFM November 4, 2019 10:11 am

    B @#5: Anon “with a very broad claim, if you like. However, include at least one claim directed to what you actually invented, too”
    FYI, American Axle did this, but the majority decided not to review the dependent claims.

    The district court treated independent claims 1 and 22 as representative of all asserted claims. Neither party appealed that treatment. Hence, the issue was not raised on appeal.

  11. B November 4, 2019 12:01 pm

    @ TFCFM “The district court treated independent claims 1 and 22 as representative of all asserted claims.”

    Yes, but the Appellant never claimed them as representative, and had you the slightest working knowledge of trial or appellate practice, you’d know that the Appellate was precluded from even arguing issues not part of the trial judge’s holding.

    The CAFC changed the fundamental argument and left American Axle hanging in the wind without even the right to prepare and argue on appeal the new and previously unknown theory that Judges Dyk and Taranto cooked up.

    Why would any party argue issues on appeal that are not relevant to the Dist.Ct. holding?

    Seriously, go back to pretending to being a fireman on another forum where you might convince someone you’re remotely aware of the issues.

  12. B November 4, 2019 12:22 pm

    @ TFCluelessFM “To the contrary, my advice is better read as suggesting that “if you’re foolish enough” to claim more than you’ve invented, you should also include claims limited to what you’ve invented.”

    Wow, and to the thinking world this would be handled under s112(a) and perhaps s112(f), not 101, since at least 1952.

    Do you enjoy looking ignorant?

  13. TFCFM November 5, 2019 9:52 am

    B @#11: “the Appellant never claimed them [independent claims] as representative, and had you the slightest working knowledge of trial or appellate practice, you’d know that the Appellate was precluded from even arguing issues not part of the trial judge’s holding.

    The appellant failed to raise/contest the issue at the district court stage. That is why the appellant was unable to raise the issue for the first time on appeal.

    It was, arguably at least, a mistake for the appellant not to separately argue eligibility of the dependent claims — at least if the appellant wished to separately argue the issue on appeal. That the appellant did not preserve the issue for appeal can hardly be blamed on the Federal Circuit.

    (Even ignoring the childish attempt to insult, I don’t understand what you’re even attempting to say in #12.)

  14. B November 5, 2019 2:35 pm

    @TFCFM “It was, arguably at least, a mistake for the appellant not to separately argue eligibility of the dependent claims ”

    How does one raise an issue the rules say should not be raised?

    Also, I’ve done exactly what you requested. The CAFC ignored all issues relating to the dependent claims.

    But go ahead. Tell us about your appellate experience and enlighten us all.

  15. Anon November 6, 2019 5:09 pm

    TFCFM,

    Your “rephrasing” is no better.

    To the contrary, my advice is better read as suggesting that “if you’re foolish enough” to claim more than you’ve invented, you should also include claims limited to what you’ve invented.

    That you think it so, is more of an indication of your lack of experience or honesty.

    You are — or should be — aware that an oath is still administered, right? The cavalier manner in which you jibe about “really inventing” shows that your feelings are stronger than your reasoning.

  16. B November 6, 2019 5:47 pm

    @ TFCFM “The appellant failed to raise/contest the issue at the district court stage.”

    You haven’t looked at the dist.ct. record, and so you’re spewing b.s. Then again, you’re incapable of doing anything but spewing nonsense. Heck, you haven’t even read the AA decision, because if you did, you’d see where AA did raise quite a number of the dependent claims.

    Why do you lie? Seriously, why do you constantly lie?

    “(Even ignoring the childish attempt to insult, I don’t understand what you’re even attempting to say in #12.)”

    Of course you don’t understand. That’s what gives you away as a farce.

  17. TFCFM November 7, 2019 10:19 am

    Have a quick look at section III of the decision, to wit:

    Having determined that independent claims 1 and 22 are not patent eligible under § 101, we need not separately determine eligibility of the dependent claims. The district court found independent claims 1 and 22 collectively representative of all the asserted claims. AAM did not argue before the district court that the dependent claims change the outcome of the eligibility analysis. Nor did AAM make such an argument in its opening brief on appeal. Although at oral argument AAM disagreed that claims 1 and 22 are representative of the others and stated that it never acceded to such a finding, Oral Arg. 30:07-40, it was unable to identify any part of its opening brief that presented such an argument and admitted that it was “not suggesting that the other claims should come out differently,” … We therefore find any such argument waived. (Emphasis added)

    Folks having a valid point do not feel the need to insult folks who disagree with them — all the more so at every turn.

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