Amici Urge CAFC to Grant En Banc Review in American Axle Case

By Nancy Braman
December 22, 2019

“If industrial-process, physically-based patents like these are ineligible under Mayo/Alice, then seemingly every patent is in ineligibility jeopardy.” – Judge Michel

https://depositphotos.com/9470054/stock-photo-time-for-review-concept-clock.htmlIn October, the Court of Appeals for the Federal Circuit (CAFC) rejected a method for manufacturing propshafts in American Axle & Manufacturing (AAM) v. Neapco Holdings (Neapco), holding that the claims at issue were ineligible under Section 101. Judge Moore dissented, arguing that “the majority’s decision expands §101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.” Several amici have now filed briefs in support of AAM’s request for rehearing of the CAFC’s decision.

U.S. Startups & Inventors for Jobs (USIJ) in Support of En Banc Review

USIJ is a coalition of 30 startup companies that depend on patent protection, formed to address concerns in legislation adopted by Congress that put small inventors at a disadvantage relative to their larger rivals. The USIJ argues in its brief that the U.S. Patent System is on “life support.” USIJ argues that investors and inventors have shifted focus toward investments in non-patent essential businesses such as entertainment, social media, and apparel, while leaving innovation in science and technology behind. USIJ contends that while some CAFC rulings related to Section 101 have been driven by an attempt to implement rulings from the Supreme Court, the CAFC has unjustifiably expanded the rulings by searching for unfounded, outcome-oriented theories of ineligibility. USIJ further argues that the exclusionary judicial exceptions to 101 (laws or products of nature, abstract ideas, or mathematical formulas) were intended to be construed narrowly and cautiously in order to prevent them from “swallow[ing] all of patent law.”

Acknowledging Judge Moore’s dissent, USIJ contends that the majority failed to acknowledge extensive evidence satisfying the Mayo and Alice “inventive step” requirement. Furthermore, USIJ argues that the panel ignored detailed descriptions of the invention in the dependent claims and attempted to sidestep summary judgment by using ineligibility as a substitute for a lack of enablement. USIJ advocates that the invention in the ‘911 patent describes and claims a mechanical invention that falls within the machine category of Section101, and is not a mere law of nature or abstract idea: numerous calculations and measurements are required to design and manufacture the claimed driveshaft, thus satisfying the inventive step requirement. Additionally, USIJ argues that the CAFC improperly injected enablement issues into its eligibility analysis, even though there is no statutory basis for doing so. USIJ also offers evidence that studies show a substantial decline in investments in U.S. strategically critical industries, such as that of semiconductor technology.

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Intellectual Property Owners Association (IPO) in Support of En Banc Rehearing

IPO argues that ever since the Alice/Mayo two-step test became law, there has been uncertainty in applying it. The decision in American Axle, argues IPO, adds to this ambiguity by adding a third layer involving the interplay of §101 subject-matter eligibility and §112 requirements. IPO contends that whether a patent teaches a person of skill in the art how to use the invention, or whether there is adequate disclosure in the specification are §112 questions and not questions of patent eligibility; therefore, the panel was incorrect in including terms of art evoking §112 in its analysis. IPO also argues that generalized recitation of the natural law as Hooke’s law, and possibly other natural laws opens the door to: 1) non-specific and vague attacks on patentability based on natural laws; and 2) widespread challenges to the subject matter eligibility of mechanical inventions. IPO asserts that the panel’s conclusion that step one of the Mayo/Alice test can be satisfied even if the natural law at issue cannot be defined incentivizes subject matter eligibility challenges based on generalized statements, which is not enough to meet the “clear and convincing” standard required to prove patent invalidity. This, argues IPO, could lead to unintended consequences through countless challenges to mechanical inventions with underpinnings in one or more potentially unnamed natural laws, inventions that have the potential to join the ranks of the most important inventions in history, such as the lightbulb or the airplane.

Judge Paul R. Michel in Support of Rehearing En Banc

Former Chief Judge of the CAFC Paul Michel also weighed in on the opinion, having decided over 1000+ patent appeals over 22 years. His brief argues four points: 1) the opinion contravenes core summary-judgment rules and ignores evidence of a genuine dispute; 2) the ‘911 claims recite a multi-part, multi-step process for manufacturing auto parts and are not directed to ineligible matter; 3) the ‘911 claims do not preempt Hooke’s Law, confirming they are patent-eligible; and 4) the majority’s Section 101 rulings warrant en banc treatment.

Judge Michel finds the court’s reasoning unpersuasive as to following courts that frequently find patent claims ineligible on summary judgment, because the subject matter in those cases differs substantially. He argues that the decision improperly relied on testimony by Neapco’s own expert to show that the ‘911 claims are directed to Hooke’s law. Even where a ‘911 inventor and AAM engineer testified about the “tuning” step, which was a supposed demonstration of Hooke’s law, Judge Michel argues that the testimony was hardly “so one-sided” and “overwhelming” that a fact-finder could only find for Neapco. He reasoned that the court’s decision failed to account for the other steps and physical parts relevant to the invention, and even failed to accept AAM expert testimony that the claims are not directed to Hooke’s law. Citing Bilski, he argues that the machine-or-transformation qualities of the ‘911 method claims may be enough to establish 101 eligibility for process claims grounded in physical or other tangible form. Additionally, these physical components are a part of a multi-step method for manufacturing auto parts which has historically been an industrial process deemed patent-eligible and safe from Mayo/Alice analysis.

Next, Judge Michel argues under Diehr that a claim drawn to subject matter otherwise eligible does not become ineligible because it uses a mathematical formula, computer program, or natural law. Thus, because the claims here recite a single step that purportedly implicates ineligible matter but does so in conjunction with all of the other steps, the claims are not directed to ineligible matter. He also argues that the ‘911 claims do not preempt Hooke’s law because according to Diehr, this rule doesn’t apply to multi-step method claims that, considered as a whole, do not attempt to patent ineligible matter. Lastly, he urges the CAFC to conduct an en banc rehearing because the majority failed to apply the correct summary judgment requirements, failed to consider that a process may qualify as §101-eligible matter, and failed to consider §101 eligibility of claims reciting industrial processes for manufacturing auto parts.

The Biotechnology Innovation Organization, Attorney Jeremy Doerre of Tillman Wright, PLLC, and 12 Law Professors also filed amicus briefs in support of a rehearing.

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The Author

Nancy Braman

Nancy Braman is a freelance legal researcher for IPWatchdog. She is also a U.S. Registered Patent Agent and a 2L at the University of New Hampshire Franklin Pierce School of Law, where she serves as the Communications Director of the UNH Patent Law Forum. Her research background in Molecular and Microbiology brings her to the realm of patent law, and in her spare time, she also works as an Alaska commercial sockeye fisherman.

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 15 Comments comments. Join the discussion.

  1. Josh Malone December 22, 2019 12:41 pm

    This decision defines the most fundamental act of inventing as ineligible. This is the definition of inventing. Applying physics to create a new and useful process or machine. I guess from now on we must employ sorcery?

  2. angry dude December 22, 2019 7:32 pm

    “…mathematical formula, computer program, or natural law” ???
    All of these are made by humans

    someone wrote mathematical formula – it did not just magically appear on a piece of paper and if some mathematical formula has clearly defined practical utility then it is perfectly patent eligible – as part of a method claim, for example

    Someone wrote that computer program and all it does is pushing electrons inside physical circuitry in some very unique way so something practically useful gets done as a result
    – Perfectly eligible (both as a method and as an apparatus claim)

    And do not even get me started on “natural laws” (I’m physics major for undergrad)

    There are NO “natural laws” at all
    All of the so-called “natural laws” from physics textbooks are just HUMAN MADE approximations to nature to be replaced by better approximations in the next cycle of scientific evolution

    Examples:

    Newton’s theory replaced by Einstein’s special relativity

    Boyle’s ideal gas laws replaced by Van der Waals equation

    etc etc etc – ALL “natural laws” are made by HUMANS !!!

    Seriously.. do not get me started here.. cause I’m already boiling…

    All of those so-called “judges” or “justices” should be on welfare roll (or worse – in jail for corruption)

  3. concerned December 23, 2019 3:06 am

    Tossing or ignoring evidence of genuine dispute is the rule of the day, did everyone not get that memo? Do not even waste the gasoline backing up the dump truck and unloading the evidence into the situation.

    And my examiner zeroed in on 2 parts of the representative claim for supporting his rejection while ignoring the other 11 parts of the same representative claim. Naughty naughty I am a bad little boy. Computer is a four letter word and if used, the entire application is rejected regardless of what the claims represent as a whole.

    Expert testimony or university studies? So what? I submitted two university studies, the examiner had none.

    Preemption. That is an easy work around to rejection/invalidation. Just eliminate the meaningful limitations and imply and/or substitute routine.

    Who needs a law degree for this stuff? And I knew I read the American Axle decision somewhere else before, hardly original. Let me see. Oh it was my own file wrapper. Just white out some names, insert others.

    On a serious note, Judge Michel and his fellow retired jurists have to be highly disappointed to see their work and the Constitution they upheld during their tenure to be discarded so cheaply.

  4. stepback December 23, 2019 3:13 am

    angry @2

    Precisely!

    Mother Nature does not descend from the mountain top with her “Laws of Nature” inscribed (scrivened?) on clay tablets. The most “supreme” nine “minds” of our top court are completely out of their minds to believe it that way. Worse yet they are unaware of their incompetency.

    The linear springs (F=-kx) to which Hooke’s “Law” applies are man-made synthetics. They don’t exist in nature. Therefore Hooke’s Law cannot logically be a Law of Nature. And as you say, all these so-called laws are our current human-fabricated models for how we think the universe works. We are likely wrong as we have been throughout history.

  5. TFCFM December 24, 2019 10:06 am

    JM @#1: “This decision defines the most fundamental act of inventing as ineligible… Applying physics to create a new and useful process or machine. I guess from now on we must employ sorcery?

    Assuming your comment was intended as more than merely a gripe, I think it’s important to keep in mind the distinction between “invention” (noun; what patents protect) and “inventing” (verb; how some inventions get made).

    The patent statute explicitly addresses this distinction, to wit:

    35 USC 103: “Patentability shall not be negated by the manner in which the invention was made.

    Various sections address whether a patent claim recites a patentable “invention” (101-103, 112, etc.). The portion of 103 quoted above indicates that it matters not at all how the applicant might have developed the claimed invention — whether through blood, sweat, and tears; by “applying physics”; or by copying one’s invention from one’s alien homeworld (https://en.wikipedia.org/wiki/The_Man_Who_Fell_to_Earth).

    The issue in the American Axle case is a relatively straightforward matter of whether section 101 permits a patent applicant to define an invention in terms of what it does or achieves, rather than in terms of what it is and, if so, what disclosure(s) are required to support patentability of an invention so-claimed.

  6. Anon December 24, 2019 3:32 pm

    TFCFM,

    I invite you to contemplate just why there is a double negative in 35 USC 103.

  7. stepback December 25, 2019 3:14 am

    Anon @6

    You’ve probably heard of the not-so-secret “Secret Santa”.
    There is another secret. The secret 103 clause: “Patentability shall be negated, and frequently, by the whims of the judiciary and the inferior officers of the USPTO.”

    Merry Judicial Override (and Christmas too)

  8. TFCFM December 26, 2019 10:19 am

    Anon@#6: “…why there is a double negative in 35 USC 103

    Whether or not the phrase is genuinely a “double negative,” It seems to me the clearest way of expressing the intended meaning. If you believe the grammatical construction has some greater significance, I would like to hear what you believe that significance to be (or, if you prefer, how otherwise you believe the idea ought to have been expressed).

  9. Anon December 26, 2019 1:06 pm

    TFCFM,

    The reason why I ask you to contemplate is NOT to have you re-gurge your already anti-patent leaning towards the fact that a double negative is used, and basically throw up your hands.

    And no, there is NO question as to “whether or not the phrase is genuinely a “double negative,”

    The double negative is an affirmation of the value of patents (why we have patents in the first place) and why patents are related to a Lockian view.

    I suggest that you embrace innovation (and a strong system for protecting innovation) rather than look for paths to limit or weaken patent rights. Therein lie the answer, and one that you will more readily accept once you do the legwork (and mind-work) rather than have some anonymous person on a patent law blog tell you.

    I can give you bread, but you knowing how to make bread is more valuable.

  10. TFCFM December 27, 2019 9:46 am

    Anon: “The double negative is an affirmation of the value of patents…

    I don’t follow you. Do you believe that our Congress simply threw a meaningless “Hurray for patents!” cheer randomly into the middle of the patent statutes?

    A look at the legislative history of this statuory provision might provide a more definitive answer, if it were worth the search. It seems to me extremely unlikely that such was the case, however. It seems to me far more likely that the provision was intended simply to achieve what it says on its face: to prevent denial of a patent for technology that is asserted not to have been invented in a “right” way.

    I’d be interested to hear how/why/what-makes you think that this statutory provision “is an affirmation of the value of patents.”

    (Bonus points if you can somehow tie your explanation back to the original question that JM asked and the answer that I provided. It seems to me that, even if Congress may once have been possessed by an uncontrollable desire to cheer, “Hurray for the value of patents!” in the middle of the US Code, the American Axle decision nonetheless stands for the proposition that a valid patent must claim adequately disclosed subject matter, and not claim merely a disclosed goal which encompasses one or a few embodiments which the inventor has actually conceived.)

  11. Anon December 27, 2019 11:10 am

    TFCFM,

    You do not follow because you are not trying hard enough.

    To wit: you follow your statetment with a fallacy of: “Do you believe that our Congress simply threw a meaningless “Hurray for patents!” cheer randomly into the middle of the patent statutes?

    The fallacy is in YOUR characterization of “throwing a meaningless” item. The point her for you to grasp is that the presence is most definitely NOT meaningless and that you are to try to understand the fundamentals of the patent system in order to grasp why such is not meaningless.

    Instead, you are doing no such work and sticking to your already held beliefs. GET OUT OF YOUR COMFORT ZONE, my friend.

    Bonus points for you to do something other than cling to the views you already have.

    YOU are the one that invoked 103 – and yet you are the one that does not appreciate the very thing that you invoke.

    Still.

  12. angry dude December 27, 2019 1:03 pm

    Anon & TFCFM

    Dudes,

    Please continue on…

    After reading your meaningless and boring legal mumbo jumbo for a while there is no question in my mind why some people hate all lawyers… regardless of which side they are (presently) on

  13. Anon December 27, 2019 1:08 pm

    … what is a “goal” that encompasses an embodiment?

    I think that you might be attempting to take issue with a breadth of claims stance but may be confusing an issue of simply ineligible material stance…

    Or perhaps you wish to distinguish a process from a result of a process from one or more of the hard goods (a “proper” result of a process)…

  14. Anon December 27, 2019 3:06 pm

    angry dude,

    Your comment does not surprise me – in at least so far as you appear ever ready to embrace emotion at the expense of reason.

    (that’s not a good thing)

  15. TFCFM January 6, 2020 10:59 am

    [sorry for the delay — I’ve been away]

    Anon@#13: “… what is a “goal” that encompasses an embodiment?

    By this, I’m referring to the claiming structure (such as it is) in American Axle (and in so many other claims declared invalid under Alice/Mayo rationales: Trying to claim an article or a process that achieves a certain result, without adequately disclosing the articles/processes that achieve that result. “Whatever works” claims are abstract and are therefore not eligible subject matter.

    For example, in AA, claim 1 read, in relevant part: “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member…” (emphasis added) without describing the configurations that represent a liner so tuned.

    You may well be correct that I’m not ‘smart enough’ to understand your ‘double-negative’ comment. Nonetheless, I’m disappointed that you’re unwilling to explain either the comment’s intended meaning or its proposed relevance.

    @AD@#12: If discussions of patent law annoy you, then it seems to me that you’re unnecessarily aggravating yourself by participating at a blog devoted to patent law and judicial/agency decisions interpreting and applying it.

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