“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?
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.”
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?