In American Axle Manufacturing Inc. v. Neapco Holdings LLC, case number 18-1763, AAM v Neapco the US Court of Appeals for the Federal Circuit affirmed a grant of summary judgement from the District of Delaware finding American Axle Manufacturing’s (AAM’s) method ineligible for patent protection under 35 USC §101.
AAM sued Neapco for patent infringement of US Patent No 7,774,911 US7774911 in December of 2015, and the parties cross-moved for summary judgment on the issue of subject matter ineligibility. On February 27, 2018, the district court granted Neapco’s motion and denied AAM’s, holding the asserted claims invalid for claiming subject matter ineligible for patent protection.
In a decision that reads more like an enablement analysis (see, e.g., majority opinion page 7, lines 1-12, page 14, lines 6-13, page 19, second paragraph, footnote 7, etc.) than application of the Alice test, the Federal Circuit affirmed.
First acknowledging that “The ‘911 patent discloses a method of manufacturing a driveline propshaft containing a liner designed such that its frequencies attenuate two modes of vibration simultaneously,” the Court continues, writing that AAM had argued that the claimed liner “unlike previously dampers and absorbers…[can] dampen multiple types of vibration simultaneously….AAM explains that “particular liners that are specifically tuned to match and damp multiple vibration modes and are utilized to manufacture improved propshafts…[w]ere entirely new and far from well-understood” at the time of the ‘911 patent.” Majority opinion, page 7, emphasis added
But AAM argues that the claims are not merely directly to Hooke’s law. AAM points to testimony suggesting that tuning a liner such that it attenuates two different vibration modes is a process that involves more than simple application of Hooke’s law. Majority opinion, page 11.
The Court then asserts that “the solution to these desired results is not claimed in the patent:”
The elements of the method here that AAM argues take the patent outside of the realm of ineligible subject matter – i.e., mechanisms for achieving the desired result – are not actually claimed in claim 1 or claim 22 of the patent. To be sure, as AAM indicates in its brief, the process of tuning a liner may involve extensive computer modelling and experimental modal analysis, a process utilized in the prior art…While AAM may have discovered patentable refinements of this process, such as “us[ing] sophisticated FED [finite element analysis] models during its design process,” neither the specifics of any novel computer modelling nor experimental modal analysis are disclosed in the patent, much less included in the claims themselves, and these unclaimed features cannot function to remove claims 1 and 22 from the realm of ineligible subject matter. Majority opinion, pages 14-15.
(Judge Moore comically addresses this comment in her otherwise blistering dissent with the statement “Surely, this is the first time adding software to a claim would make it eligible.” Dissent, page 13)
The Court then inexplicably holds:
As to Mayo/Alice step 2, nothing in the claims qualifies as an “inventive concept” to transform the claims into patent eligible subject matter…AAM’s arguments in this respect essentially amount to an assertion that prior to the ‘911 patent, liners had never been tuned to damp propshaft vibrations, and more specifically, liners had not been used to damp two different vibration modes simultaneously. This amounts to no more than an elaborated articulation of its reasons as to why the claims are not directed to a natural law (reasons we have already rejected).
Further confounding is the Court’s response to AAM’s argument that the issue of whether or not the patent discloses an inventive concept is an appropriate issue for disposition on summary judgment:
To the extent that AAM’s opening summary judgment brief as to 101 patent eligibility can be understood to argue that there are disputed issues of material fact as to whether the patent discloses an inventive concept, it relies only on Dr. Rahn’s testimony that dual-damping of bending mode and shell mode vibrations was new and unconventional. [citation omitted] But as addressed in detail above, dual dampening is merely a desired result and without more, is insufficient to make the ‘911 patent eligible pursuant to 101. Majority Opinion, footnote 8, emphasis added.
While I assume that many of my colleagues will find this opinion as frustrating as I did, what takes it from the realm of frustrating to infuriating is Judge Moore’s assertion in her dissent that the majority repeatedly misrepresented the record in their opinion:
I am deeply troubled by the majority’s disregard for the second part of the Alice/Mayo test, its fact finding on appeal and its repeated misrepresentation of the record, in each instance to the patentee’s detriment; all when we are to be applying the summary judgment standard no less.
One such misrepresentation, according to Judge Moore, was the majority’s assertion that “AAM did not argue before the district court that the dependent claims change the outcome of eligibility analysis. Nor did AAM make such an argument in its opening brief on appeal.” To the contrary, Judge Moore asserts, Neapco themselves argued the dependent claims separately, AAM did in fact argue that the independent claims are not representative and provided in their briefs multiple references to the limitations of the dependent claims that were not routine or conventional. Judge Moore concludes her point with ‘It is inappropriate in light of these facts for the majority to sua sponte declare the claims representative and ignore the expressly argued dependent claims and limitations.” And this was a footnote!
Judge Moore further took issue with the majority’s characterization of the teachings of the prior art and AAM’s position regarding the same:
…the majority claims “It was also known that a liner or weight could be designed specifically to have a frequency hat would allow it to function as either a resistive attenuation means [shell mode vibration] or as a reactive attenuation means [bending mode vibration]. AAM does not dispute that these features were known in the art.” These statements are false.
Judge Moore goes on to point to examples within the record where AAM so disputed the alleged teachings of the art and concludes:
More than a dozen times in the briefs and during oral argument the patentee argued that the use of liners to attenuate bending mode vibration was one of its inventive concepts. Without regard for the arguments made, the majority declares “AAM does not dispute that these features were known in the art.” Yes, it certainly did dispute this more than a dozen times.
Not even close to finished, Judge Moore chastises the majority for making its own fact finding that liners had been used to reduce bending mode vibration:
It matters not at all to the majority that the patentee alleges that liners had not been used to reduce bending mode vibration, and that Neapco presented no evidence or argument to contradict that. The majority has decided to make its own fact finding that prior art liners had been used. The majority finds that US Patent No. 3,075,406, never introduced as evidence in this case or cited by either party, which discloses a rigid cylindrical metal bar with two circular ends resembling a metal dumbbell – is a liner…This is a fact question, nobody argued it, and resonable minds could disagree over whether a dumbbell is a liner. Moreover, a disclosure in a single patent does not establish that the use of liners to attenutate bending mode vibration was “well-understood, routine, conventional activity’ as required by the Supreme Court. Dissent, page 8.
Judge Moore concludes:
Today, the majority concludes that the [ ] patent claims are not eligible because they do not teach a skilled artisan how to tune a liner. The majority holds that they are directed to some unarticulated number of possible natural laws apparently smushed together and thus ineligible under § 101. The majority concludes that the inventive concepts “make no difference.” Section 101 simply should not be this sweeping and this manipulatable. It should not be used to invalidate claims under standards identical to those clearly articulated in other statutory sections, but not argued by the parties. It should not subsume § 112. It should not convert traditional questions of fact (like undue experimentation) into legal ones. The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.