On October 3, 2019, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) decided American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. The Federal Circuit held U.S. Patent No. 7,774,911 (“the ”˜911 patent”), a method of manufacturing patent, invalid under 35 U.S.C § 101 (“§ 101”) for patent ineligible subject matter.
American Axle & Manufacturing, Inc., (“American Axle”) sued Neapco Holdings LLC (“Neapco”) alleging infringement of the ”˜911 patent. The ”˜911 patent generally relates to a method for manufacturing driveline propeller shafts with liners that are designed to “attenuat[e] … vibrations transmitted through a shaft assembly.” The U.S. District Court for the District of Delaware (“District Court”) held the ”˜911 patent”™s claims ineligible under § 101. Specifically, the District Court found the claims, as a whole, were directed to the laws of nature: Hooke”™s law and friction dampening. American Axle timely appealed.
On appeal, the Federal Circuit utilized the Alice/Mayo two-step test for determining whether claims recite eligible subject matter. At step one, the Federal Circuit first noted that there is no legal principle or precedent that a claim to a method of manufacturing is inherently directed to eligible subject matter under § 101. Turning to the “focus of the claimed advance,” the Federal Circuit explained the claims merely state a liner should be tuned to dampen certain vibrations by controlling the stiffness or mass of the liner which is an application of a natural law, Hooke”™s law. Further, despite American Axle”™s arguments that the tuning process was more complex than simply applying Hooke”™s law and that the liner dampens multiple frequencies, the Federal Circuit emphasized the ”˜911 patent”™s claims did not disclose or claim any such details. As such, the ”˜911 patent”™s claims were found to be directed to a law of nature.
The Federal Circuit next analyzed whether the claims provided an “inventive concept” under step two of the Alice/Mayo test. American Axle argued that “prior to the ”˜911 patent, liners had never been tuned to dampen [propeller shaft] vibrations and, more specifically, liners had not been used to damp two different vibration modes simultaneously.” Critically, the Federal Circuit again noted the claimed advance was simply controlling various known characteristics of the liner in order to achieve attenuation of two vibration modes simultaneously. Further, American Axle admitted that is was well known “in the automotive industry [to] test for natural frequencies and damping of [propeller shafts] by performing experimental modal analysis.” In light of the facts, the Federal Circuit explained the process of engaging in a conventional, unbounded trial-and-error process does not render the claims patent eligible, even if the desired result to which that process is directed would be new and unconventional.
Accordingly, the Federal Circuit affirmed the District Court”™s ruling that the claims of the ”˜911 patent were directed to ineligible subject matter under § 101. Thus, this case demonstrates the importance of including an advancement in process claims that are directed to laws of nature ”“ irrespective of the complexity of such laws. Moreover, the Federal Circuit”™s holding in this case emphasizes that technologies rooted in the mechanical/physical realm are not inherently eligible under § 101.