Federal Circuit calls a re-do, and then doubles down on misplaced 112 analysis in AAM v. Neapco


On July 31, 2020, the Federal Circuit declined to hear AAM v. Neapco en banc (AAM v. Neapco denial of en banc hearing, but granted a petition for a panel rehearing, which didn’t mean “rehearing” so much as “we’ll add a few lines to our original opinion that actually manage to make things worse.”  AAM v Neapco 2nd Try, Appeal No. 2018-1763, original opinion, October 3, 2019, modified July 31 2020.  My impression that the first opinion read more like a 112 analysis than a 101 analysis is not changed in view of the second opinion – if anything, the Federal Circuit seems more adamant in its incorporation of 112 into 101.  https://www.ksjlaw.net/you-had-me-but-apparently-not-the-federal-circuit-at-propshaft-federal-circuit-invalidates-patent-directed-to-driveshaft-technology/

The only joy to be found here is in Judge Newman’s scathing dissent, and so, to preserve my sanity, I focus on that.

Prescient as always of the bar’s reception, Judge Newman first points out that the 1853 case cited for its promulgation of the “O’Reilly test” (or the “nothing more” test) and upon which the 2nd decision heavily relies was not even mentioned in the district court opinion, or indeed, the October 3, 2019 opinion of the same panel.

And even with my focus on Judge Newman I want to throw my hands up and go walk the dogs.

Judge Newman’s analysis references the well-reasoned arguments of the many amici in this case:

The majority invokes 101 to hold ineligible a method for manufacturing a drive shaft assembly for a car – a class of invention that has historically been patent eligible…[and] do not recite any particular law of nature, much less preempt the use of Hooke’s law in any particular context

In one colorful example, amici suggest that the majority’s original approach would have placed the combustion engine at risk of ineligibility – a proposition that would have seemed absurd just a few years ago, but now seems eerily plausible.

Judge Newman further points to Judge Moore’s dissent in the original opinion, which asserted that significant evidence was presented, and apparently not considered by the majority either in the drafting of the first decision, or the decision arrived at after “rehearing,” that contradicted the notion that the two types of vibration identified in the claims can be reduced by Hooke’s law “and nothing more.”  In Judge Newman’s opinion, one I expect that many of my colleagues would agree with, “Whether the claimed process involves application of Hooke’s law and/or nothing more than Hooke’s law, are questions of fact that ought to have been addressed by the Court, en banc.”

Judge Newman concludes:

By declining to rehear this case en banc, we have abdicated our responsibility to address patent eligibility head on.  In the face of our unwillingness to consider patent eligibility as a full court, I grow more concerned with each passing decision that we are, piece by piece, allowing the judicial exception to patent eligibility to “swallow all of patent law.”

Coupled with the Supreme Court’s string of denials of petitions for cert involving 101, https://www.ipwatchdog.com/2019/06/16/supreme-court-denies-43rd-petition-cert-101-grounds-villena-v-iancu/id=110425/ and Chris Coon’s comments that legislative relief is not likely to be forthcoming https://www.aipla.org/detail/news/2020/08/04/aipla-q-a-with-senator-chris-coons, the future indeed looks bleak for US patent law.  Anyone need a regulatory attorney with 25 years of experience in patent law?