The Re-Written American Axle Opinion Does Not Bring Peace of Mind for Section 101 Stakeholders

“Ultimately, one is left with a sense that Section 101 has become a hammer that courts are encouraged to try on a variety of problems first, before reaching for the right tools—in this case, the sufficiency of technical teaching, commensurate with claim scope, a quintessential question under Section 112.”

In the spring of 2018, a district court invalidated a patent claiming methods of manufacturing a pickup truck drive shaft for failure to recite patent-eligible subject matter. Industry stakeholders, scholars, and legal commenters were more than a little incredulous, since methods of manufacturing such tangible objects have long been patentable in the United States. In due course, the Federal Circuit (in a 2-1 decision) drew even more exasperation when it affirmed the district court’s holding. If the ensuing stream of bewildered blog posts, amicus briefs, and statements by public officials are anything to go by, many viewed the case as another high water mark in our uniquely American Section 101 jurisprudence. Readers who are unfamiliar with the case can catch up here, here, and here.

It was not necessarily the fact of another push-the-limits Section 101 invalidation that caught us off guard, instead it was the reasoning used by the court: even though the claims do not mention any natural law, they are nevertheless patent-ineligible because they “are directed to the utilization of a natural law (here, Hooke’s law and possibly other natural laws) in a particular context.”

Read that again. Remember, even the Supreme Court has acknowledged that all inventions at some level rely upon laws of nature, natural phenomena, or abstract ideas. The general understanding prior to the panel opinion was that a claim would fail if it is directed to a law of nature or other ineligible subject matter. So clearly, the fact that the claimed methods merely utilize various natural laws cannot be their point of failure. Moreover, if a patent is to be held invalid for being “directed to” a law of nature, shouldn’t the court be able to identify that particular law of nature, rather than some unspecified list of possibilities?

Key Changes

Enter the July 31, 2020 re-written majority opinion in American Axle. Rather than allow the case to go to the full court for consideration, the majority decided to edit some of the troubling language from the original panel opinion. For example, compare the following:

According to the revised majority opinion, the claim is now exclusively directed to Hooke’s law (not multiple laws) and it no longer embodies an application of that law to a complex system. [This itself is exciting news. Are we perhaps witnessing a new jurisprudential phenomenon: the development of “common” laws of nature, whose scope and applicability evolves according to custom and judicial precedent? Stay tuned for further revolutions in physics.] Moreover, the majority now emphasizes that the fatal flaw of the claim is that it does not recite limiting concrete steps for achieving a claimed result. This new focus is reflected in other changes between the two majority opinions, for example:

Setting aside the accuracy of the majority’s characterizations, ones sees an obvious shift in focus to the particularity of the steps recited in the claim. In order to support its position that the claims themselves (as opposed to the specification or knowledge in the art) must provide limiting concrete steps to achieve the claimed solution, the majority revised some its prior case descriptions, for example (in addition to the re-characterization of Le Roy, supra):

Many might take a pause here, and wonder – with all this focus on steps for accomplishing a claimed outcome being recited in the claim itself – whether this Section 101 analysis is superseding enablement (which, by the way, can be satisfied by teachings in the specification and knowledge in the art.) As Judge Moore aptly points out in her dissent, the revised majority opinion appears to “imbue[] § 101 with a new superpower—enablement on steroids.”

Nonetheless, with its new focus on the specificity of the claimed steps for achieving the goal of the method, the revised majority opinion compares American Axle claim 22 to claim 8 from O’Reilly v. Morse, despite only having made two passing references to O’Reilly in the original panel opinion. As a reminder, claim 8 in the O’Reilly case claimed the use of electromagnetism for making or printing characters and expressly disclaimed any limitation “to the specific machinery, or parts of machinery, described in the foregoing specifications and claims . . .” In other words, claim 8 expressly claimed a natural phenomenon. The revised majority opinion then concludes that “[b]oth claim 8 in O’Reilly and claim 22 here recite a natural law (electromagnetism in O’Reilly and Hooke’s law here) and a result to be achieved (printing characters at a distance in O’Reilly and producing a liner to dampen specific vibrations). . . Thus, claim 22, like claim 8 in O’Reilly, is directed to a natural law because it clearly invokes a natural law, and nothing more, to accomplish a desired result.”

Mental Gymnastics

The sudden reliance on purported similarities between the instant claims and O’Reilly claim 8 is a bit unsettling, at least from a fairness perspective. But perhaps even more troubling is the fact that Hooke’s law is neither mentioned in the claims nor the specification, as pointed out by the dissent, whereas O’Reilly claim 8 was expressly limited to electromagnetism. Understanding the analogy between these two claims requires some mental gymnastics that we have not sorted out yet. It would not be surprising if patentees and patent applicants likewise have difficulty judging whether their claims fall into the O’Reilly claim 8 trap.

So what do we take away from the revised majority opinion? A claim can be directed to a law of nature even when that law is neither recited in the claim nor the specification. And even where no law of nature is recited anywhere in a patent, the claim itself must recite “particular methods of achieving” the claimed result; otherwise, the patent will fail for being directed to whatever laws of nature happen to make the claimed result possible. That only leads to more questions.

Particularity is typically an indefiniteness issue, and as noted above, teaching how to perform a claimed method is usually an enablement issue. Further, if steps like “providing a hollow shaft member,” “tuning a mass and a stiffness of at least one liner,” and “inserting the at least one liner into the shaft member”, as recited in claim 22, are not particular method steps (they sound pretty concrete to us), then what would be sufficient?

Unclear and Treacherous Terrain

Ultimately, one is left with a sense that Section 101 has become a hammer that courts are encouraged to try on a variety of problems first, before reaching for the right tools—in this case, the sufficiency of technical teaching, commensurate with claim scope, a quintessential question under Section 112. The panel majority is clear that their real beef with the claim is that it is directed to a mere result (a low-vibration driveshaft), and that it does not even matter whether that result is achieved by a skilled person’s application of Hooke’s law, or of any other law, or of no law at all, using only blind trial-and-error.

American Axle’s petition for rehearing en banc was denied in a 6-6 court split. The dissenting opinions (including Judge Moore’s dissent from the revised majority) are definitely worth a read, and reflect the same underlying concern we have tried to raise in this piece: did the revised majority opinion, perhaps despite good intentions, actually make Section 101 jurisprudence more unclear and treacherous for patent owners?

Melissa Brand Melissa Brand is Intellectual Property Counsel at Radius Health. In this role, Ms. Brand leads global patent portfolio development, counsels on freedom to operate and enforcement issues, and provides strategic [...see more]

Hans Sauer Hans Sauer is Deputy General Counsel, and Vice President for Intellectual Property for the Biotechnology Industry Organization, a major trade association representing over 1,100 biotechnology companies from the medical, agricultural, [...see more]

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

26 comments so far.

Anon
August 13, 2020 07:16 am
What is ‘being silly’ is your pretending that being called out for your position that it is ok for the courts to act based on emotion is itself not an affront to the sense of law that SHOULD pervade the mind of any attorney.

This is not about what advice any attorney gives to any particular client.

Stop with that obfuscation.
MaxDrei
August 13, 2020 05:27 am
This is getting silly. There is an old Chinese curse “May you come to the attention of the authorities”. There is an old “Fridge Magnet” saying about the first duty of any member of the legal profession being to save their client from the close attentions of other members of the profession.

You might not think you are doing your client any harm, by writing claims for that client that would affront the court, should it ever come to litigation. If so, feel free to carry on advising your clients as you think best. Me, I would rather my client wins without ever having to see the inside of a courtroom.
Anon
August 12, 2020 05:14 pm
I cannot MaxDrei that you are an actual attorney as you attempt to pass off “the Court has been affronted” as ANY type of justification.

That is not how the courts are allowed to act. You imbue a level of emotion as if emotion alone is justification. No attorney would do such.
MaxDrei
August 12, 2020 01:45 pm
Jam, the point is the old one, that:

1. “tuning” is so old that Applicant has no need to explain in the application as filed how to do it because PHOSITA knows that already, yet

2. the invention, that which is purporting to be patentable, is a process in which what is held out as the contribution to the art is……wait for it…..the step of “tuning”.

This is an affront to the court. And not the first. Such insults were getting to epidemic proportions. No wonder, that such claims are currently receiving ever-shorter shrift.
Jam
August 12, 2020 01:24 pm
Re comments 16 – 18

These comments seem to be falling down the 101 rabbit hole. I.e., asking questions that are not relevant to the issues pertinent to 101 in order to reject the claim under 101. 101 is (supposed to be) for determining whether a claim is or is not directed to a machine or process.

The question of “how” the tuning is performed (in this case) is pertinent to whether the specification sufficiently enables the claim or provides the best mode, which are inquiries relevant to 112 and are irrelevant to 101.

To the “substance”, while I am not an expert in mechanical engineering, I expect that “tuning a mass …” involves increasing or decreasing the mass until a desired result is achieved and expect that one of ordinary skill in the art would immediately recognize the commonly known ways of doing so with the claimed liners. I.e., an expert could testify that the specification is sufficient to meet the requirements of 112.

Note, however, that the expert who may answer and overcome the question above when asked under 112, may not be able to overcome the same question when asked under 101. 101 is a question of law giving judges free reign issue factually incorrect decisions that defy logic and reason, because 101, because Alice.
Anon
August 12, 2020 01:10 pm
ARP,

Mr. Cole has been chastised in the past for his OVER reliance on wanting prosecutors to do what he deigns as ‘right’ to the exclusion of actually focusing on the culpability of the Supreme Court (in particular).

I simply discount what he has to say at this point.

(not that what he has to say is ‘bad’ in and of itself, as practitioners should always be looking to make themselves better — but rather his inability or lack of gumption to squarely place blame where blame NEEDS to be placed makes him part of the problem rather than part of a true solution)
A Rational Person
August 12, 2020 12:18 pm
@Paul Cole

“I am less concerned with legal route than with substance.”

So following the law doesn’t matter to you?

In what “legal system” worthy of the name is that okay?
Anon
August 12, 2020 11:52 am
“Does the end justify the means?”

Is this question being seriously asked?

By a (supposed) attorney?
Paul Cole
August 12, 2020 09:40 am
It is difficult to see that claim 22 covers a truly transformative process because insufficient detail is provided to show precisely what is being done. An astute examiner would have objected on the ground of lack of compliance with the “process” category of section 101, accompanied by objections under section 112.

I am less concerned with legal route than with substance. In my view claim 22 is simply inadequate, and I see no reason to support it. I agree that the court was “right” in its overall assessment, that the claim was, beyond doubt, unfit to proceed, whereby the means of its despatch was not important.
MaxDrei
August 12, 2020 07:52 am
Do you mean, Paul, that the court was “right” to use 35 USC 101 to euthanise this claim, to bring a swift end to its miserable existence.

Does the end justify the means?

Or do you mean that the court was “right” in its overall assessment, that the claim was, beyond doubt, unfit to proceed, whereby the means of its despatch was not important?

Is this why some decisions, these days, are flagged up as fit to be cited as precedents while others are not?
Paul Cole
August 12, 2020 06:28 am
It will not have escaped readers’ notice that I have campaigned for a number of years in support of the eligibility of worthwhile inventions.

But what on earth is really intended to be covered by claim 22? What is the meaning of “tuning”? Is there to be a choir of liners and a conductor with degrees in music and tasked with the job of selecting the liner with the best voice and the best ability to sing in tune? And assuming in the alternative that tuning has some electronic meaning, what network of resistors and capacitors will do the job?

The devil, as they say is in the detail. Claim 22 simply claims everything that works without specifying anything useful that makes it work. Very unfortunately, I fear that the Court was right about this claim.

As I have said before, as a profession we should learn to write better and more focused claims and avoid the dross being presented to the courts.
Anon
August 11, 2020 09:30 am
MaxDrei,

The link that you provide to the PatentDocs article should NOT be taken as everyone at that website agreeing with what is in essence a capitulation to the madness of confusion and conflation of the different sections of law.

As has been pointed out, that view is flawed itself with a ‘post-hoc’ attempt to backwards fit particular cases into its desired narrative. It FAILS any non-post-hoc specialized picking and choosing of cases, as prominent members of every single branch of our US government, from the Legislative, to the Executive, and even to the Judicial branch itself has affirmatively stated that the Common Law re-written Judicial scrivining led by our Supreme Court has resulted in a Gordian Knot of contradictions.

It is unhelpful to pretend otherwise, as that particular author over at Patent Docs insists on doing.
Concerned
August 11, 2020 06:13 am
A successful short seller of stocks said that short selling is months and years of agony. If his short selling position proves correct, it is only days and weeks of glory.

Exactly the patent process. A reasonable and prudent person knows there is no rule of law in the patent process and it cannot be sustained. JAM hits the nail on the head as so do many other posts/authors on this forum.

Months and years of agony watching the patent system dismantle. Only days and weeks of glory when the system collapses under its own weight of nonsense and a reset occurs.

Then the process repeats. Congress finally resolves the issue and the judical exceptions resurface to dismantle the patent process once again.
MaxDrei
August 11, 2020 05:59 am
Curious, you are not a fan of “abstract idea” but how about the EPO’s litmus test of eligibility, namely “technical character”. This is how the EPO parses the “all fields of technology” eligibility test under GATT-TRIPS and also (according to another prominent US patent law blog – link below) what the Federal Circuit now looks for. In the fields of endeavour and innovation in human society, can you also see a distinction between a field of “technology” and all other fields of endeavour, or do you think the distinction is an illusion?

https://www.patentdocs.org/2020/07/the-three-properties-of-patent-eligibility-an-empirical-study.html#comments
Josh Malone
August 10, 2020 09:14 pm
Inventors ALWAYS apply laws of nature. The courts have managed to define the essence of inventing as ineligible for patenting. We are Alice in Wonderland.
Curious
August 10, 2020 06:35 pm
Jam @9 … Good points all.
Moreover, American Axle makes it as clear as ever that any patent may fall as a judicial exception.
This is really important. It doesn’t take much to re-characterize any invention as the implementation of some law of nature (whether or not it is a really a “law of nature” is immaterial to the Federal Circuit). All machines/objects/methods operate in the natural world and are governed by the laws of nature. It doesn’t take much for a craft litigator to characterize a claim as some implementation of a law of nature that some (non-technical) judge can use to clear his docket of these pesky patent cases. It doesn’t even take the identification of a law of nature (or some real abstraction) — I’ve seen the Federal Circuit describe what is necessarily technology as an abstract idea.

Once SCOTUS punted on defining what is (or isn’t) an abstract idea, the Federal Circuit can pick and choose what they believe to be directed to an abstract idea and can do so with near impunity as SCOTUS has showed little inclination (despite being asked to on numerous occasions) to intervene.
MaxDrei
August 10, 2020 05:35 pm
Alternatively, one could suggest that every claim is ineligible. Why, because either it is directed to an application of the laws of nature or it is not.. One or the other. If it is such an application it fails the SCOTUS test of eligibility. If it is not such an application it is something like a perpetual motion machine that does not obey the laws of natural science and so cannot be part of the world in which we live and so cannot be recognised as having any substance or any capacity for patent eligibility.

Not all processes are eligible, by the way. The only ones that are are those that exhibit some utility or other. A perpetual motion machine, for example, has none. Is a process of human brain thinking eligible, or a process of telling a joke?
Jam
August 10, 2020 03:16 pm
MaxDrei @ 7

Claim 22 is a process claim, which by definition is patentable under 35 USC 101 as a “useful process”. Asking “what contribution does the claimed subject matter bring to the art” is simply not germane and provides no probative value to the question of whether the claim is directed to a process or not. I.e., answering the question does not provide any further information on whether the claim is or is not directed to a process.

American Axle is another reminder from the Federal Circuit that the Alice/Mayo two step can reject anything. Step (1), ignore the claim language and fabricate a judicial exception. Step (2) reiterate that the claims are directed to nothing more than the fabricated judicial exception. As stated previously, the note about treading carefully “lest it swallow all of patent law” from Alice is not a warning to only use Alice sparingly. Rather, it was an instruction for the Federal Circuit to make sure they play hide the ball with their 101 rejections so that the lay person will give up attempting to understand what is or is not patentable and leave it as a question of law that can only be deciphered by a judge.

Moreover, American Axle makes it as clear as ever that any patent may fall as a judicial exception. E.g., all patentable subject matter requires energy, energy is nothing more than mass times the square of the speed of light, which is the law of mass energy equivalence (Einstein’s E=mc^2). This is something that no party can dispute. Thus, all patents that have ever been granted or ever will be granted are nothing more than mere applications of a law of nature, i.e., nothing more than a statement of a judicial exception with the words “apply it”.
Anon
August 10, 2020 01:13 pm
“ SCOTUS now has the chance, if it feels like it, ”

MaxDrie,… obtuse. Is it deliberate?
MaxDrei
August 10, 2020 12:42 pm
Curious, I put it to you that this majority and dissent is deliberately crafted to serve up to the Supreme Court a lesson, to bring it home to them what are the grotesque everyday consequences of their instruction to the lower courts that claims which amount to “nothing more” than an “apply it” hand wave are not eligible. The Supreme Ct Justices can read the opposed viewpoints of the majority and the minority, and then write their own opinion.

The subject matter is easy to grasp, even for a Justice of the Supreme Court. Prop shafts that include a liner are known. Known are the three modes of prop shaft vibration, known is that prop shaft designers have (and always have had) no choice but to recognise the existence of these modes of vibration and then to manage them, necessarily and inevitably striving to damp/attenuate them as best they can.

Extract from that reality what contribution does the claimed subject matter bring to the art of designing prop shafts. There is none, and the one who drafted the claim must have known this already, even when making first attempts to write a claim. As I say, when drafting claims, you have to have your eyes open.

You may say that, on the contrary, it is the notion of “tuning”. But that is just giving a fancy name to what prop shaft designers have always done. Just because you can’t find that word in the right place in the USPTO search database does not mean that “tuning” as such is new and patentable. The invocation to go away and “tune” the shaft gives the prop shaft designer “nothing more” than what they had already, the acme of a “bad” patent, one that should never have been granted. As often happens, the first one fooled by the claim is not the PTO Examiner but the drafter who falls in love with the elegance of their own claim.

But I know. As you (and everybody else) has said, 101 is not the right vehicle for knocking this claim on the head. SCOTUS now has the chance, if it feels like it, to tell us all how the claim should be despatched.

Why didn’t they claim something else? i don’t know. something like: selecting a first trial liner for optimal damping of shell mode vibrations; selecting a second trial liner for optimal damping of bending mode vibration and then; selecting as optimal liner the best fit between the two trial liners. That might have stood a better chance of wriggling something old and uninventive past the PTO and the courts.
Curious
August 10, 2020 10:31 am
For inventors and their backers, the solution is clear: simply draft in such a way that summary dismissal under 101 is not a reasonable option.
The lights are on but no one is apparently home. The issue (that you fail to appreciate) is that nobody knows how to draft claims that avoid summary dismissal under 101. Alice has been law of the land for 6 years now, and I would guess that 90% of first office actions in certain art units of the patent office are still getting 101 rejections.

The ‘911 patent at issue was filed in February 27, 2006, and issued on August 17, 2010. Claim 22 of the ‘911 patent reads:
22. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising: providing a hollow shaft member; tuning a mass and a stiffness of at least one liner; and inserting the at least one liner into the shaft member; wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations.
I can all but guarantee that no one in 2010 (when this patent issued) would have even remotely contemplated that this claim would be deemed directed to non-statutory subject matter under 35 USC 101.

Perhaps, given the unremitting and penetrating criticism of the Federal Circuit’s reasoning, it will gradually become more adept at saying why any given claim deserves to be summarily knocked on the head, already during the preliminary inspection of its fitness for issue.
LOL. Haven’t you figured it out yet? The law doesn’t matter. If the law mattered, claims couldn’t even be rejected under 35 USC 101 but that is how the STATUTE is written. The only thing that matters to the Federal Circuit is that the scope of what is unpatentable subject matter gets continually enlarged.
Anon
August 10, 2020 07:42 am
While one may live in hope, “hope” (alone) is a poor choice to combat the scourge that the Supreme Court has unleashed with their scrivining re-write of 35 USC 101.
MaxDrei
August 10, 2020 06:43 am
There are a great many life situations in which one must pass a preliminary examination as a condition of being admitted to the main course of study leading up to the final qualifying examination. The logic of arranging things in this way, beginning with the imperative that precious resources be consumed frugally and as economically as the case allows, is unassailable. So, given the gross consumption of precious resources that happens every time there is a full enquiry into 102, 103 and 112, what could be more natural and sensible than to use 101 as a preliminary coarse filter of patentability? For inventors and their backers, the solution is clear: simply draft in such a way that summary dismissal under 101 is not a reasonable option.

Of course I also agree that the reasoning given in the 101 cases leaves one dissatisfied. Perhaps, given the unremitting and penetrating criticism of the Federal Circuit’s reasoning, it will gradually become more adept at saying why any given claim deserves to be summarily knocked on the head, already during the preliminary inspection of its fitness for issue. One lives in hope.
concerned
August 10, 2020 06:19 am
My examiner admitted that the concrete steps of the claimed process solved the decades old problem. Then the examiner invented an imaginary manual process that was merely automated as the rejection.

No 102, 103 or 112 rejections, just a 101. When the standby template 101 reasons did not work for the rejection, the examiner create a fictitious process and rejects on that 101 basis. Very creative, fiction over fact.

Of course, no proof was offered to support the examiner’s rejection. My evidence submitted on the official record was not addressed or acknowledged.

The examiner also tries slight of hand. He addresses only 3 of the 14 limitations and ignores the other 11 limitations. I even caught that move before my attorney had time to comment.

My invention may not “wow” everyone at the USPTO. It did solve a problem that hundreds of thousands, if not millions, of working professionals and experts for decades could not solve to include two university attempts that were submitted in the official record.

Nothing in American Axle surprises me. Keep shoving that square peg into the round hole. Eventually some thing or some shape might fit.
Pro Say
August 9, 2020 09:10 pm
102? . . .

103? . . .

112? . . .

101!
David Stein
August 9, 2020 01:19 pm
“Section 101 has become a hammer that courts are encouraged to try on a variety of problems first, before reaching for the right tools—in this case, the sufficiency of technical teaching, commensurate with claim scope, a quintessential question under Section 112.”

This is exactly correct and very well-stated. It also echoes David Kappos’s comments not long after Alice, which were more recently voiced by Judge Michel in the Senate hearing: rejections that are properly articulated under 102, 103, and 112 are increasingly conflated into 101.

I believe that with Alice, the Court sought to rectify the inadequate response by providing a lengthy, detailed example of the kind of deep, multidimensional analysis that it wanted to encourage. We can certainly disagree with the Court’s logic and conclusions in Alice, but no one can deny that Alice was at least thorough (especially compared with Bilski).

The crux of the problem is that nowhere does the Alice opinion *explicitly state* that 101 decisions should be correspondingly deep and multidimensional. Alice failed to require 101 decision-makers to articulate a thorough analysis, and then reach a determination as a balancing-test based on many considerations.

Absent any such clear statement, 101 decision-makers have done exactly the opposite: they apply Alice as a Swiss-army-knife of 101 rejection tools.

Is the technology conventional? If so, abstract.

Do the claims involve a concept? If so, abstract.

Do the claims seem preemptively broad? If so, abstract.

Do the claims pertain to commerce or social interaction? If so, abstract.

Do the claims recite steps that are performable in the human mind? If so, abstract.

…etc. Instead of a multi-dimensional analysis, many 101 decisions choose and apply a single aspect of the Alice grab-bag of abstractness rationale and apply it in isolation, without any holistic or detailed analysis. I believe that the major developments after Alice – particularly the flowchart in the USPTO Interim Eligibility Guidance – are an attempt to manufacture scaffolding around the Alice decision, in order to forces decision-makers to conduct the more rigorous analysis that Alice attempted, but failed, to require.

In American Axle, the Federal Circuit chose the “112(a)-like” aspect of the Alice 101-rejection multi-tool. I interpret the revision of the American Axle opinion as a tacit admission that transmogrifying a a 112(a) written description rejection into a 101 rejection is straining the limits of the Alice multi-tool.