Posts Tagged: "AAM v. Neapco"

Federal Circuit Denies AAM Request to Stay Mandate Pending Supreme Court Review

On Friday, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential order in American Axle & Manufacturing, Inc. v. Neapco Holdings denying American Axle & Manufacturing, Inc.’s (AAM’s) motion to stay issuance of the mandate pending the filing of a petition for writ of certiorari in the Supreme Court. AAM’s motion to stay was the result of the CAFC’s precedential modified opinion that issued on July 31, 2020 modifying a prior October 3, 2019 opinion.  In the July 31 opinion, the CAFC vacated the prior judgment with respect to claim 1 of U.S. Patent No. 7,774,911
and remanded to the district court to address eligibility with respect to claim 22 and related claims.

AAM v. Neapco Comes Full Circle: The Foundation of Invention Becomes its Trap (Part II)

In Part I of this article, we briefly summarized how O’Reilly v. Morse was relied upon in the denial for rehearing in the recent case of AAM v. Neapco to assert that a patent claim to a method of making a motor vehicle axle failed to qualify as patent eligible subject matter under 35 U.S.C. § 101. The concurring opinions concluded that claim 22 of the patent at issue, U.S. 7,774,911, “merely invoked” natural law, and did not describe what had been obtained in the patent. Consequently, as in O’Reilly v. Morse, the claim was “too broad, and not warranted by law.”  We also noted an apparent paradox in that, while claims cannot preempt natural law and must be supported by an enabling specification, they necessarily must be able to read on embodiments that incorporate later-developed technology. The key to resolving this dilemma is the notion of invention, which was the basis for the holding by the Court of the King’s Bench in Hornblower v. Boulton.

Morse Code: Is There a Message Behind the Federal Circuit Split in American Axle v. Neapco? (Part I of II)

It may seem surprising that the patent eligibility of making an axle for a motor vehicle could be so divisive among judges of a court tasked by design with the most difficult questions of patent law. And this internal division might appear particularly surprising given that the roots of the views expressed among the judges in the split decision by the Court of Appeals for the Federal Circuit in American Axle & Mfg., Inc. v. Neapco Holdings LLC et al., Case No. 2018-1763, slip op. (Fed. Cir., July 31, 2020) pre-date a famous 170-year old Supreme Court decision involving Samuel F. B. Morse’s telegraphy method, which was featured by the concurring opinions in the denial of the petition to rehear the case en banc. When viewed in a larger context, however, the most significant realization might be a unifying and constructive underlying message from the Federal Circuit bench.

AAM v. Neapco Misreads Federal Circuit Precedent to Create a New Section 101 Enablement-like Legal Requirement – Part II

As detailed in Part I of this article, the recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020) misreads and misinterprets Supreme Court precedent as having long imposed the enablement-like requirements set forth in the AAM ruling. Similarly, the Federal Circuit cases cited by AAM do not reflect some longstanding Section 101 eligibility rule that the claim alone must show, with “specificity,” the “way” or “how to” “achieve” such an invention, beyond a mere “result.”

New Enablement-Like Requirements for 101 Eligibility: AAM v. Neapco Takes the Case Law Out of Context, and Too Far – Part I

With its recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020), and a 6-6 stalemate by the court’s active judges on whether to take the case en banc, the Federal Circuit has now adopted—under the rubric of 35 U.S.C. §101—a formalized set of enablement-like requirements for patent claims. For a simple “threshold” eligibility test, section 101 has grown remarkably complex. Indeed, since the Supreme Court’s 2012 Mayo and 2014 Alice decisions re-cast patent eligibility into a “two-step framework,” the Section 101 test adjudges not just subject-matter eligibility and the three “limited” exceptions thereto, but also patentability or “inventive-concept” challenges predicated on comparisons to the prior art, see 35 U.S.C. §§ 102-103. And now the enablement-type requirements imposed by AAM v. Neapco.