The Patent System is ‘Desperate’: American Axle Implores High Court to Take Up Eligibility Fight

By Eileen McDermott
January 5, 2021

“Simply put, the Court is served a jump-ball. As the nation’s final arbiter, the Court has the opportunity to intervene and answer this difficult question completely and finally.” – American Axle petition

Supreme Court, American AxleAmerican Axle & Manufacturing, Inc. filed a petition for certiorari with the U.S. Supreme Court on December 28, 2020, asking it to review the Federal Circuit’s July 31, 2020 modified judgment and October 2019 panel opinion in a closely-watched Section 101 patent eligibility case involving driveshaft automotive technology. The Federal Circuit has been sharply divided by the issues presented, leading Judge Moore to refer to the original panel’s analysis as “validity goulash” and to state that the “majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”

The questions American Axle is asking the Supreme Court to consider are:

  1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
  2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

American Axle’s petition, filed by Steptoe & Johnson, begins by explaining that its patent claims (U.S. Patent No. 7,774,911) describe and claim “a multi-step, industrial process” that leads to “a new, useful, and tangible thing – a driveshaft that makes cars quieter.” Nevertheless, the Federal Circuit ultimately found that the claims “invoked the equation, F = kx (“Hooke’s Law), ‘and nothing more.’” With a 6-6 split on the issue of whether to rehear the case en banc, the petition argues, in a reference to a quote from Judge Moore, that the CAFC is “bitterly divided” on Section 101 law and that “the entire patent system is desperate for the Court’s guidance and has cried for its help.”

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Good Reason

After rehashing the procedural history leading up to the petition, American Axle explains that the Court should grant certiorari for five key reasons:

I. The Federal Circuit has pushed Section 101 well beyond its gatekeeping function to invalidate industrial manufacturing processes historically eligible for patent protection.

II. The Federal Circuit’s improper expansion of the non-textual exceptions to Section 101 is in conflict with this Court’s precedent and the patent statutes.

III. The entire patent system is calling for guidance from the Court.

IV. The Court (not Congress) can and should resolve the confusion and uncertainty surrounding the Court’s judicially-created exceptions.

V. This case presents the ideal vehicle for the Court to provide much-needed guidance on Section 101.

With respect to point III, retired Federal Circuit Judge Paul Michel and patent trial lawyer John Battaglia have recently written for this blog that the case was the “capstone” in the continued broadening of Section 101 law throughout 2020. Additionally, the petition notes and provides evidence that the Federal Circuit itself is “bitterly divided”, “but unanimous in its cries for help”; that both current and former directors of the U.S. Patent and Trademark Office (USPTO), namely, Andrei Iancu, David Kappos and the late Q. Todd Dickinson, all agree Section 101 is a problem that must be immediately addressed; that industry scholars, organizations and leaders like the Intellectual Property Owners Organization, the Biotechnology Innovation Organization, the Alliance for U.S. Startups and Inventors, the president of the American Intellectual Property Law Association, and even Stanford Law Professor Mark Lemley all agree that guidance is needed; and that the Solicitor General of the United States likewise agreed that the High Court should review eligibility law “in an appropriate case.”

Not Your Average 101 Case

As to why this is that case, the petition argues that the issues are distinct from those addressed by the court in previous cases they’ve taken up, such as Alice, Bilski or Mayo, whereas many of the Section 101 petitions for cert that have recently been denied were not. “This case is different,” claims the petition. It continues:

American Axle’s claims “are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself.” _Id. at 80a. Mechanical and industrial processes like American Axle’s have, until now, “historically been eligible.” Diehr, 450 U.S. at 184. This case, therefore, presents the Court with a unique opportunity to clarify the law on Section 101 as to all technologies and industries and, at the same time, reign in the non-textual exceptions that have steadily crept into our nation’s manufacturing sector.

Furthermore, the case presents an opportunity for the Court to clarify the substantive test for step 1 of the two-step Alice-Mayo framework (“How does one determine if a patent claim is ‘directed to’ a patent-ineligible natural law, natural phenomena, or abstract idea?”). The petition points out that the district court’s answer to this question was different than the parties’ and the divided panel of the Federal Circuit twice came up with something different still. “In its initial opinion, the panel majority held that the claims were ‘directed to’ ‘Hooke’s law’, and possibly other natural laws,’” while in its modified opinion, it held that the claims were “directed to” “Hooke’s law and nothing more.” And then of course, the full Federal Circuit was evenly divided in its vote on whether to rehear the case. The petition continued:

Simply put, the Court is served a jump-ball. As the nation’s final arbiter, the Court has the opportunity to intervene and answer this difficult question completely and finally. In doing so, the Court can provide the patent system the clarity and guidance it so desperately needs.

The petition also noted that the case offers the Court an ideal vehicle to address the Federal Circuit’s “expansion of the non-textual exceptions to Section 101” and “to clarify procedural questions that surround Section 101” – namely, “are steps 1 and 2 questions of law for the court to decide or questions of fact for a jury to decide?”


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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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. Read more.

Discuss this

There are currently 14 Comments comments.

  1. MaxDrei January 5, 2021 9:56 am

    Is this a suitable vehicle for SCOTUS to use, to provide guidance how to adjudicate 35 USC 101? It seems to me that it might well be, because its technology is so simple. Anybody can understand it, even a Justice of the Supreme Court.

    Tension between two ways to “do” eligibility under the EPC has existed, for very many years, between the established case law of the EPO and that of the UK . That tension is beneficial, because it puts each jurisdiction under maximum pressure to demonstrate that its approach is more fair, more predictable and intellectually superior to the approach of the other EPC jurisdiction. For me, the EPO is winning that battle, hands down.

    Exactly the same two schools of thought on eligibility are evident in the USA, where the EPO approach has till now not been given a fair hearing. Perhaps it will, if this case is taken up by the Supreme Court. I do hope so.

  2. Scott Pierce January 5, 2021 10:46 am

    Great summary, Eileen. While couched in the form of “guidance,” it seems that the many eligibility cases that have been decided since Mayo demonstrate that there is not much more guidance to be had that will diminish the confusion that exists over application of the “two-part” test. The Supreme Court needs to go back to the drawing board, and if the EPO model prevails, so be it if more certainty is the result. After all, eligibility doctrine in this country originally derived from two English cases, Boulton v. Bull (1795) and Hornblower v. Boulton (1799).

  3. __tr__ January 5, 2021 10:57 am

    @MaxDrei, that would be an interesting outcome that I would not oppose, but I see a problem that would prevent that outcome here. This case is WAY outside the original scope of Alice in that it really has nothing to do with software claims.

    Wouldn’t the EPO “technical inventive step” approach be hard to reach from these claims since they aren’t software-related?

  4. MaxDrei January 5, 2021 4:10 pm

    Yes, indeed, tr. But are there not already straws in the Fed. Ct. wind, to the effect that (just as at the EPO) the only sort of non-obviousness that “counts” in the assessment of patentability is non-obviousness in a field of technology, this being the crucial step towards clarifying eligibility. In any journey, the first step is often the hardest.

    Of course, SCOTUS has always declined to define “useful arts” so defining “technical” will also be, for that court, way out beyond the imaginable.

    The EPO has the advantage of NOT adjudicating under English law, NOT running a system of Binding Precedent. In reality, the likelihood of SCOTUS picking up the EPO ball and running with it is precisely zero. That’s why, thus far, it is instead tracking the approach of the courts in England, down the same primrose path to the same bonfire.

  5. MaxDrei January 5, 2021 4:21 pm

    tr, you surmise that with these claims the EPO approach would be “hard to reach”. You might then enjoy a canter through the file wrapper of the counterpart application at the EPO. The Examiner is playing with it like a cat with a hapless mouse, and seems to be enjoying it just as much as any cat. Squirm-inducing for the hapless European patent attorney paid to carry the case through to issue.

  6. Pro Say January 5, 2021 8:42 pm

    The problem here, you see, is the failure of SCOTUS to give a d.a.m.n.

    Petition denied.

    With Congress watching with popcorn in hand, the SCOTUS – CAFC crippling of American innovation continues.

  7. Anonymous January 6, 2021 1:40 am

    The Emperor Has No Clothes. Judge Plager said most clearly, “there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine.” I believe SCOTUS never had authority to create any “judicial exception” to statute in the first place.

    I disagree that SCOTUS ought to be legislating from the bench, much less begged to do it. Patent policy must be set by Congress. Congress can and must end the 101 mess and I think the patent bar as a whole should so advocate.

    I predict denial of cert. Efficient Invalidators (TM) are more than 50-0 on this issue. Stop paying for these briefs and use the money to lobby Congress where the fix constitutional.

  8. Anon January 6, 2021 8:27 am

    Of course, SCOTUS has always declined to define “useful arts” so defining “technical” will also be, for that court, way out beyond the imaginable.

    Is it duplicity, or merely lack of self-awareness that MaxDrei evidences in his posts concerning Useful Arts and technology?

    I have to wonder, seeing how even after what seems like a decade, I am still on occasion reminding MaxDrie not to conflate Useful Arts and technology, to respect the differences in Sovereign choices, and to even provide a definition on technology (in non-circular terms) — of which he has never bothered to do so.

    Then he vomits forth his “but we don’t have binding precedent and that’s a good thing” mantra, when he does not grasp just what that means (hint: it is NOT a good thing to not have binding precedent).

  9. MaxDrei January 6, 2021 11:06 am

    Gene, I am disappointed, that my further comment overnight has not yet seen the light of day

  10. Eileen McDermott January 6, 2021 4:01 pm

    Not sure what comment you’re talking about Max, but we do not censor comments on IPWatchdog unless they are irrelevant personal attacks or include racist, sexist, etc. language. Not all comments go through automatically, some have to be manually allowed and neither I nor Gene monitor 24-7.

  11. MaxDrei January 6, 2021 4:40 pm

    Thanks for that, Eileen. I take it that I did not offend the House Rules but rather that you’ve had a look for my post but not found it. Hey ho.

    Let’s just both assume that the ether quietly swallowed my post, somehow, somewhere along the way between me and you. Let’s both forget it and move on.

  12. Eileen McDermott January 6, 2021 5:17 pm

    It would be helpful if you could email me to let me know what your comment said generally so i can search for it/ figure out what happened in case it’s a glitch: emcdermott@ipwatchdog.com. Thank you.

  13. Model 101 January 6, 2021 5:25 pm

    Go Axe!!

    Show no mercy.

    We met at the 101 hearings.

    Your patent told GM how to do it.

    No mercy…none.

  14. MaxDrei January 7, 2021 2:32 am

    Eileen, I admire your resolve to figure out what happened but I did not note what I wrote, nor when I sent it. Who knows: perhaps my memory is playing a trick on me. So I can’t help you to do further research. But I have noted your email address for future use, if the same thing happens again. Thanks.