Assessing the Impact of American Axle Six Months Out

“Both anecdotal evidence and statistical data support the fact that the American Axle decision has not yet significantly affected the prosecution of mechanical inventions before the USPTO…. That said, because we are still only six months removed from the decision… we cannot be sure [it won’t going forward].”

https://depositphotos.com/57926613/stock-photo-impact-button-on-keyboard-business.htmlSince the Supreme Court’s Alice decision in 2014, many patent prosecutors in Industrial & Mechanical Technologies practice groups have been spared the headaches that the decision created for their colleagues in Electrical & Computer Technologies practice groups. So, it came as quite a surprise, perhaps unwelcome to some, when the Federal Circuit decided American Axle v. Neapco, invalidating claims for a method for manufacturing propshafts as being directed to ineligible subject matter under Section 101 of the U.S. Patent Act.

The initial reaction of many people to the American Axle decision mirrored the criticism of Rep. Doug Collins, R-Ga, the ranking Republican on the House Judiciary Committee, who said, “[i]t’s unthinkable the courts found this invention, a manufacturing process for making a key automotive part, as patent ineligible,” and the concern later expressed by former Federal Circuit Chief Judge Paul R. Michel, in an amicus brief supporting American Axle, that the decision put “seemingly every patent [in] eligibility jeopardy.” This concern prompted many to discuss practical tips for drafting claims to avoid that exact result.

Neapco, in its December 18, 2019 response to American Axle’s petition that the Federal Circuit rehear the case en banc, nonetheless asserted that “any concern over the potential impact of this case on future cases is vastly overstated, and this case is narrowly limited to the unique claims at issue.”

Six Months Later: What is the Impact? 

The Prosecutor’s Perspective

Almost six months later, it appears that Neapco was right, at least when it comes to patent prosecution in the mechanical arts. Indeed, both anecdotal evidence and prosecution data aggregated by Juristat demonstrate that the American Axle decision has not affected the prosecution of mechanical inventions before the USPTO in any significant way.

At the outset, it is widely agreed upon by many lawyers who routinely handle mechanical prosecution that there has not been any noticeable increase in rejections under section 101 in the last six months (or really even in the six years since Alice, thankfully).

More importantly, an analysis of the prosecution data obtained from Juristat over the last year also reveals no significant increase in rejections under section 101 in the mechanical arts.

Data first analyzed included section 101 rejections issued by Technology Centers 3600 and 3700, which the USPTO classifies as being responsible for examining mechanical inventions, between May 2019 and October 2019, the time period after the USPTO issued its 2019 Patent Subject Matter Eligibility Guidance but before the American Axle decision, and between November 2019 and April 2020, the six months between American Axle and now. Between May 2019 and October 2019, Technology Centers 3600 and 3700 disposed of 96,298 applications, the prosecution of which involved at least one office action. Those Technology Centers issued 13,999 section 101 rejections in those 96,298 applications, meaning that 14.5% of those applications faced at least one section 101 rejection. Meanwhile, between November 2019 and April 2020, Technology Centers 3600 and 3700 disposed of 43,183 applications the prosecution of which at least 1 office action. Those Technology Centers issued 6,556 section 101 rejections in those 43,183 applications, meaning that 15.2% of those applications faced at least one section 101 rejection. While this does mean that post-American Axle there has been an increase in the percentage of disposed applications that have faced at least one section 101 rejection, that increase is quite small (only .7%), and not a single one of these section 101 rejections cited to American Axle.

Data further analyzed included section 101 rejections issued by USPTO Art Unit 3726, the Art Unit that examined and allowed the claims that issued to American Axle and were ultimately invalidated by the Federal Circuit, during these same time periods. Between May 2019 and October 2019, Art Unit 3726 disposed of 531 applications the prosecution of which involved at least 1 office action. That Art Unit issued five section 101 rejections in those 531 applications, meaning that .9% of those applications faced at least one section 101 rejection. Meanwhile, between November 2019 and April 2020, Art Unit 3726 disposed of 412 applications the prosecution of which involved at least 1 office action. That Art Unit did not, however, issue a single section 101 rejection in any of those 412 applications. In other words, the same Art Unit that ultimately allowed the claims that formed the basis of the American Axle decision did not issue a single section 101 rejection in any of the 412 applications abandoned or allowed after the decision was handed down.

In sum, both anecdotal evidence and statistical data support the fact that the American Axle decision has not yet significantly affected the prosecution of mechanical inventions before the USPTO. That said, because we are still only six months removed from the American Axle decision and there are potentially thousands of pending mechanical applications to be examined, and the decision may ultimately be reviewed by the full Federal Circuit and / or the U.S. Supreme Court, we cannot be sure that the American Axle decision will not significantly impact the prosecution of mechanical patent applications going forward. In the meantime, patent applicants would be wise to heed the practical tips discussed above in order to ensure their mechanical patents do not fall victim to section 101. At the same time, many patent practitioners will continue to hold out hope that Rep. Collins and his colleagues in Congress will fix section 101 once and for all.

The Litigator’s Perspective

Similar to prosecution, there has not been much litigation yet involving the American Axle case. Numerous courts continue to apply the Alice test when making determinations under section 101, but few have cited American Axle in the process. Although citations to American Axle have not yet become widespread among district courts, litigants in the Northern District of California and the District of Delaware should be aware that the case is on at least some of the judges’ minds. Interestingly, none of the cases citing American Axle so far have been for mechanical devices or processes for manufacturing mechanical devices.

In the Northern District of California, Judge Donato has twice relied on American Axle – at least in part – when determining claims related to digital images and digital cameras were invalid under section 101. In Yu v. Apple, the claims generally related to dual-lens cameras, and the Court determined at the Alice step one approach that the invention was directed to the “abstract idea of taking two pictures and using those pictures to enhance each other in some way.” Case No. 3:18-CV-06181-JD, 2020 WL 1429773, at *3 (N.D. Cal. Mar. 24, 2020). In reaching this conclusion, the Court cited American Axle and focused on the “essentially result-focused functional character of claim language” and further noted that the specification provided no description for how the claimed invention achieved the results. Id. At step two, the Court also determined the claims lacked an inventive concept and thus the claims were directed at patent ineligible subject matter. Id. As you may recall, in American Axle, the dissent sharply criticized the majority’s inclusion of “the how” it works as part of a 101 determination and suggested it should instead be left for an assessment of enablement under section 112. In Yu v. Apple, the Court did exactly that – it determined at step one that the specification did not describe how the claimed invention improved image qualities, and thus was merely directed at an abstract idea. Perhaps the Federal Circuit will have a chance to address whether “the how” should be included in the section 101 analysis again because Yu filed a Notice of Appeal on May 1, 2020.

In Rothschild Digital Confirmation, LLC v. Skedulo Holdings Inc., Judge Donato also determined that claims related to cataloging digital images were directed at an abstract idea at step one. Case No. 3:19-CV-02659-JD, 2020 WL 1307016, at *4 (N.D. Cal. Mar. 19, 2020). In making its determination, although the Court relied heavily on a Federal Circuit case which invalidated similar claims related to classifying, storing, and organizing digital images, In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), the Court also cited American Axle, noting that the elements of the claim at issue are “essentially result-focused, functional character.” Likewise, at step two the Court determined that the claims did not add an inventive concept, and thus were directed at patent ineligible subject matter.

Perhaps not surprisingly, since the American Axle case originally came out of Delaware, Judge Fallon from the District of Delaware has referenced American Axle several times. Although the Court has referenced the case several times, it has been only for the proposition that, “[t]o determine what the claims are ‘directed to’ at step one, we look to the ‘focus of the claimed advance.’ ” See Thompson v. TCT Mobile, Inc., Case No. CV 19-899-RGA-SRF, 2020 WL 1531333, at *6 (D. Del. Mar. 31, 2020); Tenaha Licensing LLC v. Tigerconnect, Inc., Case No. CV 19-1400-LPS-SRF, 2020 WL 30426, at *5 (D. Del. Jan. 2, 2020); Tenaha Licensing LLC v. Ascom (US) Inc., Case No. CV 19-568-LPS-SRF, 2020 WL 30427, at *5 (D. Del. Jan. 2, 2020); Tenaha Licensing LLC v. Vocera Commc’ns, Inc., Case No. CV 19-208-LPS-SRF, 2020 WL 30489, at *5 (D. Del. Jan. 2, 2020). None of these cases related to mechanical devices either. Each dealt with more ‘typical’ 101 issues, for example claims related to communications signals and notification systems. In each instance, the Court determined that the claims were directed to abstract ideas and ultimately that the claims were not patent eligible.

Although district courts have only cited American Axle in a handful of opinions over the last six months, courts and litigants alike are likely waiting to see the result of the petition for rehearing en banc. In the meantime, accused infringers should examine whether the asserted claims are directed merely at a results-oriented functional character such that the American Axle case might provide support for invalidating the claims. Conversely, patentees should ensure that claims vulnerable to challenges under 101 sufficiently recite how to achieve a specific result when deciding which claims to assert.

Only time will tell whether American Axle will have a long-term impact on patent prosecution or litigation or whether it was merely a blip on the radar of Alice and its prodigy.

Image Source: Deposit Photos
Copyright: fotoscool
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The Author

Ryan Schermerhorn

Ryan Schermerhorn is a registered patent attorney with Marshall, Gerstein & Borun LLP who helps clients in all stages of patent prosecution. His engineering background provides him with an understanding of clients’ technologies and enables him to effectively and efficiently provide a range of patent procurement services. Ryan also leverages his experience to assist on intellectual property litigation as well as develop strategies for acquiring and protecting intellectual property.

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

Ryan Schermerhorn

Tiffany Gehrke secures and protects intellectual property rights for a broad range of clients with Marshall, Gerstein & Borun LLP, including retailers, manufacturers, publishers, consulting companies, and organizations across a wide variety of industries. In this role, her prior experience as a software engineer gives her valuable insider perspectives into clients’ technologies and she regularly counsels clients regarding prosecution and enforcement matters. Tiffany has extensive experience representing clients in state and federal courts, before the USPTO, and other dispute resolution forums.

For more information or to contact Tiffany, please visit her Firm Profile Page.

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Discuss this

There are currently 21 Comments comments. Join the discussion.

  1. Ternary May 13, 2020 12:01 pm

    The idea that “computer implemented” inventions can be abstract and “mechanical” inventions can not, is based on an outdated, almost steam-punk, vision of technology.

    I applaud this article by exposing (in a legal sense) the misinformed approach to what an invention is. It points briefly to “‘typical’ 101 issues, for example claims related to communications signals and notification systems.”

    The insertion of “directed to an abstract idea” is probably the most brilliant (if you are anti-computer patents) or the most uninformed statement about technology that you can imagine. I am going with uninformed.

    The steam-punk approach appeals to the technically uneducated: you can touch it, see it move and see it do something. As the current situation demonstrates, many people get confused about things that they cannot see. But that doesn’t mean it is not there of course. They are quick to declare actions “abstract” and want to apply known touchable materials, like bleach and light.

    It is an understandable gut reaction. But further reflection will enlighten the mind and provide a better insight what science is. Unfortunately, closed minds will never be enlightened, they will not learn and stick to their steam-punk interpretation of the world. For some reason our system is geared towards self-perpetuating misinformed opinions: the earth is flat, the earth is 8000 years old, evolution is a theory, computers are abstract, vaccines are bad (until they are not).

    The solution is simple, of course: if it is useful, it is patent eligible. No further test required.

  2. stepback May 13, 2020 3:24 pm

    Ternary @1

    Many of us out here share a venomous hatred for them who wish to do away with patent rights altogether.

    That said, we go too far to the opposite extreme by proclaiming “anything” useful is eligible. We should tread more carefully.

    What does it mean to say something is “abstract”?
    If I have 6 red apples and Susie has 6 green apples, those things are real. Not because of the number 6 alone but because it is a count of how many real apples we each have.

    Pure math strips away the aspects that tether my and Susie’s possessions to reality. It “abstracts” the situation by saying, forget the apples, forget their colors. Just remember that 6 + 6 =12.

    It would not be right to allow people to claim abstract thought processes even if those thought processes are “useful”. For example what if I claimed all uses of adding the count of one thing with the count of another thing? Would I have the right to stop people from thinking that way?

    On the other hand, drive shafts of the kind claimed in the Axle case are real. The vibration modes that occur in those real drive shafts are real physical phenomenon. The ability to dampen plural ones of those real vibrational modes in the real drive shafts is a real improvement.

    Patent haters pull a three card Monte trick on us (over and over again) by first abstracting the claimed subject matter, by not seeing it for what it is but rather for the shadowy something else that they assert the claim is “directed to”.

    In other words, they first create an abstraction and then declare their self-made abstraction to be abstract. We lose every time. Brilliant.

    Computer processes are real. The electrons move nonetheless (as Galileo might have uttered). But as you correctly point out, the haters refuse to see the electrons. They instead say, I think (they are not there) and therefor I am (right that they are not there). The same can be said for the medical diagnosis rejections. I think the molecular chemistry is not there (it’s just a leaf to be plucked from the tree) and therefore it is not there. Brilliant.

    https://patentu.blogspot.com/2020/03/just-one-leaf-plucking-minute-there.html

  3. MaxDrei May 13, 2020 4:56 pm

    Think about two claims. One is “directed to”, or amounts to, a definition of a technical problem while the other recites a combination of technical features that solves a technical problem. The claim to the solution is not “abstract” but the claim to the problem to be solved is. The claim in the AA case was one of those that claimed the problem and so deserved to be dismissed as “abstract”.

    Just because no subsequent cases cite AA as authority does not mean that the AA case has had no influence or effect on legal thinking since then.

  4. Ternary May 13, 2020 5:46 pm

    Step. I have no venomous hatred for anti-patenters. I disagree with them, as they have their self-interest and I have mine. And I think, based on my interest in the history and methodology of science and technology that they are wrong.

    Was differential calculus an invention? And valuable? Definitely. And worthy of a patent? Yes! The concept of a patent itself is abstract. We can give a patent to whatever we agree upon. Harvesting sea-salt, making weapons, importing material. We, as humans, have been issuing patents on all kind of things for a long time.

    So what if we give a patent on a new useful mathematical procedure? There are actually very, very few mathematical developments that are novel and useful at the time of development. The moment they become useful, their novelty has already gone. In the case of Diffie Hellman (DH) key exchange (or the FFT), the underlying math was well known. It was the machine that performed in accordance with the formulas that was novel.

    “For example what if I claimed all uses of adding the count of one thing with the count of another thing?” That is a bad example, because adding has been known a long time. Even if you really do not add (or count) elements, such as in binary finite fields as applied in the Advanced Encryption Standard (AES, GF(256)) or in error correcting coding such as Reed-Solomon codes, these types of math have long been known. For instance Gaussian elimination as a technique is quite valuable and worthy of a patent. But of course long past patenting.

    I agree, it is difficult to protect patents based on non-machine inventions, so it is probably wise to focus on a device in a patent application. But that should not be the criterion for patent eligibility, as that is used against patent eligibility all the time.

    We are moving in a direction with computers that is nothing short of miraculous. If you can articulate it, you can probably program it and probably make something useful out of it. If we don’t blow-up this world before that, we will have computer models of the human body that allow you to design and test drugs and determine efficacy and safety with high probability, without having to go into a real human body. Sorry, not there yet.

    Ultimately, it is the idea that is important and realizing the idea (in software for instance) is then merely a consequence of the idea. This is what upsets the anti-patenters. It seems all too easy to them. They would like to see machinery, gears, motors, stuff! And a machine that is described by mathematical formulas is to them anathema entirely. Clearly we are not yet in the miraculous situation I describe above. But we are slowly moving there. Large incumbents see that trend also and try to weaken the patent system before we get there. Mainly because of the available easy access to machines that can realize these inventions, which is not limited to these companies. The NTP-Blackberry case was really their wake-up call. How a small patent owner could take down a major company almost in its entirety. On what? On a single piece of paper called a patent.

    You, and I and others have explained time and again why computers are machines and not abstract ideas. But they allow abstract ideas to be expressed technically. It is as abstract of course as having an idea to replace human activity by a motorized structure. Or to replace one structure by another. But it is (deliberately?) not recognized as such.

    There are really not that many useful completely novel ideas, especially not in math. Mostly they are nice theoretical concept for which maybe much later an application can be found. So, I wouldn’t worry too much about it.

    You are correct: “In other words, they first create an abstraction and then declare their self-made abstraction to be abstract. We lose every time. Brilliant.” The way to overcome that is to make all useful inventions (it has to be useful, not merely an idea, but something applicable in reality) patent eligible.

    Countries like the US and China will ultimately compete on useful ideas, not on cheap labor. We had designated China as a useful, but underdeveloped, provider of cheap labor. A mistake of catastrophic proportions. They still can screw up, but they seem to largely avoid the mistakes of Japan. I am concerned that when we look back on this period we will have to conclude that narrow self interest damaged the technical spirit of American ingenuity and we screwed up the legacy of a patent system intentionally instituted by our Framers in our Constitution. A brilliant, brilliant move in hindsight.

    Anything under the sun made by humans. Don’t be too concerned about math.

  5. Anon May 13, 2020 6:36 pm

    MaxDrei,

    How is a claim to a definition of a problem enabled?

  6. stepback May 13, 2020 7:38 pm

    MaxDrei @3

    If I recall correctly, the drive shaft is “tuned” in the American Axle claim. The question remaining is what does this “tuning” imply to one skilled in that art?

  7. stepback May 13, 2020 7:46 pm

    Terenary @4

    We are 99% in agreement.

    My reading of the long standing law is that pure math, unteathered from the proven physical universe (think string theory) is not a “useful” process, machine, manufacture, composition of matter or improvement thereof. (Refer back to the words of 35 USC 101.) I agree with you that new developments in math are human inventions. As you note, many of them do not become “useful” until many years later. (Think Boolean Algebra.) So at the time of invention most of them are not “useful”. They fail under the plain language of 101.

  8. Ternary May 13, 2020 11:00 pm

    In claim 1 of AA: “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member;”

    The spec teaches “resistive attenuation and reactive attenuation” and how a liner can be tuned for these attenuations.

    Tuning of vibrational systems, be it for electric systems, optical systems or mechanical systems is well known. Generally they involve a measure of attenuation, usually defined for a frequency or frequency range, and if of importance phase properties. Tuning is achieved by changing a property of a parameter modeling a physical property of the system, like mass or size of elements. In some cases one would like to attenuate or remove certain modes of vibration, like in optical fibers or other wave-guides.

    I don’t believe that one of ordinary skill in mechanical engineering/vibration engineering would be baffled by the term tuning, what tuning means or even its mathematical representation in differential or Laplace equations. Modeling of mechanical vibrations is taught in school and thousands of software models exists (like in MatLab) to analyze (and yes: tune) mechanical systems.

    The concept of tuning is all part of the common toolbox of a trained (mechanical) engineer. There is nothing abstract about it as you can physically measure the vibrational behavior of a system and the effect of changing properties of the liner. Clearly, it is beneficial if you can adequately and easily tune a system.

    The claim states that the tuning should be used to attenuate. Like a band-stop filter. This as being distinct from a band-pass filter, which minimizes attenuation over a frequency band.

    Really, there is nothing mysterious or abstract about this invention. Just a solid piece of mechanical engineering. This has nothing to do with Hooke’s Law, and even if it had, it would be an application thereof.

    Why do we even have to discuss this B.S.? If there is a problem with the claims it may be in failing to recite in the claims how the attenuation is achieved, which may make it indefinite. However, there is nothing that makes it abstract.

  9. Ternary May 13, 2020 11:41 pm

    Step @7, I know we largely agree. Your example of Boolean algebra is right on the mark.

  10. MaxDrei May 14, 2020 1:47 am

    Good discussion. I am told that i) the contribution to the art provided by the claimed subject matter was “tuning” and that ii) we have to reflect upon what “tuning” means to one skilled in the art but that iii) “tuning” was already “well-known” by the date of the claim.

    Indeed. Either the claim is an instruction merely to do what every driveshaft designer was inevitably already doing anyway, or it was an instruction to do something inventive, more special than the sort of “tuning” which every designer of every multi-component vibrating system must do anyway, and in so doing, achieve a driveshaft performance better than hitherto accomplished by the conventional “tuning”.

    Given the context (the specification) in which we read a claim, it must be the latter. But to construe the claim that way (ie to ascribe a special meaning to “tune”) presents the reader of the claim a problem to solve.

  11. stepback May 14, 2020 3:19 am

    MaxDrei @10 and Ternary @8

    If I recall correctly, the specification in American Axle was somewhat thin on how the “tuning” is carried out to achieve the claimed result. However, “tuning” is clearly recited in the claim. So it is not merely claiming a result but also including a step that gets you to that result.

    It appears that this annoying fact did not deter the Feds from declaring the whole thing “abstract”. Don’t confuse us with facts. We’ve made up our story and we’re sticking to it.

    Ternary, yes, Hooke’s Law should have had nothing to do with it and yet the Feds found that Hooke’s is a Law “of Nature”. One of the many confessions inscribed by Mother on her stone tablets and one of those “fundamentals” that prohibits claiming anything even remotely related to it.

  12. Roy Marsh May 14, 2020 6:13 am

    Hi Stepback. On “tuning”, the spec is indeed “thin” at best. In cases like this, Applicant will often resist prior art objections with the specious argument that the reference is silent as to any “tuning” but that the claimed “tuning” is the patentable contribution to the art.

    The proper response from the PTO is that if you don’t tell us in the appln as filed what “tuning” means, you have brought us no further forward than the prior art and all you have done is given us a problem to solve.

    And, in such a case, you can express that objection as i) abstract ii) not novel iii) not enabled, iv) not definite v) obvious. Choose your tool. Any of them will serve, to knock the claim on the head. EPO chooses obviousness. USPTO these days reaches for the short sharp eligibility tool

  13. Anon May 14, 2020 7:20 am

    MaxDrei,

    Instead of the glad-handing — and then repeating the error — why don’t you try understanding that the point that you want to insert is not agreed upon by ANYONE ELSE having a discussion here?

  14. Anon May 14, 2020 8:51 am

    Roy @ 12 – I cannot disagree more with the propriety of what you suggest (as opposed to the actuality of what may be happening). Your version — instead of bringing clarity and focus — is the opposite (and ultimate) “whatever, throw everything in a blender and if you get the desired Ends, then the Means just do not matter.

    It is precisely this type of ‘whatever’ that has led to the MUCK of jurisprudence that we have.

  15. Ternary May 14, 2020 11:54 am

    The spec teaches (sorry for the long quotation):

    “It will also be appreciated from this disclosure that various characteristics of the liner 204 can be controlled to tune its damping properties in the shell mode and in one or both of the bending mode and the torsion mode. In the particular example provided, the following variables were controlled: mass, length and outer diameter of the liner 204, diameter and wall thickness of the structural portion 300, material of which the structural portion 300 was fabricated, the quantity of the resilient members 302, the material of which the resilient members 302 was fabricated, the helix angle 330 and pitch 332 with which the resilient members 302 are fixed to the structural portion 300, the configuration of the lip member(s) 322 of the resilient member 302, and the location of the liners 204 within the shaft member 200.”

    The spec then continues with very specific tuning examples. So, the specification is not “light” or “thin” at all on tuning. It discusses in detail the prior art on liners.It is verifiable untrue that “you don’t tell us in the appln as filed what “tuning” means.” There is nothing in the spec on tuning that a mechanical engineer would not understand or would not be able to apply.

    This whole rejection on being abstract, as it is a solid piece of engineering work, is absolutely and utterly B.S. and shameful.

  16. Night Writer May 15, 2020 6:47 am

    Terenary @4

    Where I disagree with you is that the anti-patent crowd are getting their way through the backdoors and with judicial activism. They aren’t using the front door and making sound arguments. They are paying “academics” to write papers to their abstracts, selecting the judges for the CAFC, etc.

    They cannot win in a fair fight so they have bought off the “intellectuals”, stacked the CAFC, bought the Congress, etc. What is happening is a reversal of what Carter did in the late 1970’s when he realized that the only way to get the big corporations to get moving was a patent system.

    Now we are back to huge corporations doing very little other than entrenching themselves in markets and running up the prices. How do you know the system is broke for certain? The huge profits the big corporations are running up and the $100 billion plus they have in their bank accounts. They aren’t worries about innovation taking them over. Just take whatever comes along for a small price. They aren’t too concerned about the high cost of wages. Just use trade secrets to lock employees in.

    First the big corporations convinced the Scotus to eviscerate the anti-trust laws and how they have convinced the Scotus and Congress to eviscerate the patent system.

    They will be wiped out by Chinese companies at some point or we will have to protect them in the USA market, which is what will likely happen. Our future is not bright.

  17. Anon May 15, 2020 10:27 am

    Night Writer @ 16,

    I see what you are saying, but I would amend your outcome with one additional observation:

    Transnational Corporations (and those wanting to be) are simply NOT beholding to any one Sovereign.

    Sure, they may not yet have figured out how to overcome China (which is a bit of a unique and frankly much more powerful governmental force), but they simply do not care what happens to the US Sovereign at bottom line.

    They do not.
    They will not.

    And I will add, that this is entirely within a Rational Actor mechanism.

  18. Ternary May 15, 2020 12:14 pm

    Night, Actually we agree on that. The whole AA mess is the result of changing reasonable and scientific arguments into ideological misinformation. And thrown in is irrelevant nonsense (the Hooke argument) to arrive at the desired outcome. My arguments show clearly that I do not consider the Court’s arguments in any way sound, rational and scientifically based. The Court has a desired outcome in mind and sets up the arguments to arrive at that outcome.

    The desired outcome is to make it difficult for (independent) inventors to assert valuable and potentially devastating patents against incumbents. Luckily, larger companies are also getting blasted. Providing more attention to the ongoing debacle called the US Patent System. (I am sometimes wondering, can our institutions get anything right? Or have we entered the dark age of scientific incompetence with institutions dominated by ideology rather than rational thought? When we ask a Court or the USPTO how many legs a spider has, do they count them or do they ask their political bosses how many?)

    This concern of the threat posed by new companies/new technology was already articulated way back by Bill Gates, who was of course earlier “one of us”. It was also, somewhat hidden, expressed in a National Academy of Sciences report. This concern was actually brought forward by the pharma industry which was unhappy that novel biotech techniques made development of drugs “too easy.” But even that report cautioned that technological leadership of America is not a given. It basically warned not to screw up a good thing.
    The whole issue of patents quickly became a concern for software related inventions which were considered to be “easy” by many people with little understanding of inventions and software. At the same time that the whole world was moving on-line.

    The issue came to a head with the NTP case that threatened to shut down the Blackberry community. I was in rather fierce discussions at the time, wherein my position was (and still is) that this case was a living example that the US patent system worked and was doing what it was supposed to do.

    However, it was clear that this case was for many the opportunity to undermine the US patent system and accuse it to be no longer of this time. It contributed to an anti-patent narrative that helped pass the AIA. Even reasonable opposition to the Act (for instance giving up the 1 year grace period and first to invent) was ignored. There was this “need” to harmonize, of all places with Europe which basically ignores independent inventors. One may reasonably conclude that AIA has not helped independent inventors, but has been drafted to benefit of incumbent companies.

    The Courts have largely bought into the narrative that accompanied the AIA and now spew and accept scientific nonsense to prevent a more reasonable review of inventions and related patents and patent applications. I agree with Roy @12 that Courts and USPTO use eligibility as a convenient tool to solve thorny issues. We have to remove that tool from their toolbox.

    So Night, I don’t think we disagree at all.

  19. stepback May 15, 2020 2:06 pm

    Ternary @15

    You are correct that the American Axle patent includes an example of a result of the “tuning”. However the patent does not explain how the “tuning” itself is carried out. I fear that the Federal Circuit conflates the section 112 written description requirement with 101 subject matter eligibility. As you probably know, the fact that others (skilled mechanical engineers) know how to carry out an appropriate kind of “tuning” does not save the app from 112 issues like written description and best mode if the spec does not disclose any mode whatsoever of “tuning”.

    We are in agreement that this case should not have been brought down on a 101 basis. The claimed process is a physical process with physical consequences, not a mere abstraction.

  20. Ternary May 15, 2020 3:55 pm

    The spec says (and this is a repeat of the citation) ” In the particular example provided, the following variables were controlled: mass, length and outer diameter of the liner 204,…”

    The frequency behavior of a filter is reflected in a transfer function (usually Laplace or Fourier transform represented) usually provided in a fraction form with a numerator and a denominator. The variables (actually parameters, but this spec calls them variables) in the “transfer function” determines the attenuation.

    It might have been wiser of the inventors to include the transfer function in some way. However, because the folks in robes do not like math, it is sufficient to describe that there is a dependency between variables (physical properties) and frequency behavior. Which is well known. The inventors then describe which parameters (variables) can be modified to adjust frequency behavior (attenuation) and they give a worked-out example how to implement such change.

    This is like asking an EE to tune a given proto-type filter (like a Butterworth filter) for a defined pass-band. That is: tuning takes place by modifying variables to a desired result. The variables in the equation correspond to physical variables (mass, length, outer diameter.) I assume an engineer would know all this, but I repeat it for those unfamiliar with general filter theory. Modifying a value of a resistor R or a capacitor C or an induction L is sufficient to describe/enable the “tuning” of the filter.

    As an engineer, I am “happy” with the explanation of the tuning as provided. I am able to go to a test-bench and perform the tuning. There are of course, underlying concepts, such as transfer-function and its dependency on frequency of of machinery induced vibrations that are assumed to be known to one of ordinary skill.

    The spec does disclose, through the cited text and example, what the tuning actually is. Again, it would have been wiser to recite some of the variables to be tuned in the independent claim.

    But I don’t agree that tuning as a physical process is not sufficiently taught in the specification. One of ordinary skill would have had no problem whatsoever with this.

    To me this is a case wherein a judge got lost in the science, felt that a patent was undeserved and used 101 to clear the docket. The Federal Circuit is so anti-patent that they take almost any 101 invalidation serious and are too cowardly to say what needs to be said: this invalidation on being “abstract” is scientific nonsense. Go back and do your homework more seriously, they should have said.

  21. stepback May 15, 2020 3:59 pm

    Ternary @15

    I should have said it more succinctly as: The claim is directed to a physical improvement and therefore it cannot logically be directed to an abstract idea.

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