Posted in: S&H IP Blog | U.S. Court of Appeals For The Federal Circuit
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC
The U.S. Court of Appeals for the Federal Circuit”™s decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, invalidated claims for a patent directed to a driveshaft. This case is of interest, because the court used the Alice/Mayo analysis to invalidate a mechanical patent.
U.S. Patent 7,774,911
Independent claims 1 and 22 both recite a preamble of “a method for manufacturing a shaft assembly of driveline system”.
The court in its analysis of claim 22, focused on the recited feature of “tuning a mass and a stiffness of at least one liner”. The court agreed with the district court”™s finding that the recited claim language invokes a relation between frequency, mass, and stiffness as stated by Hooke”™s law. As such, the court found that claim 22 invoked a natural law, thus satisfying step one of the Alice/Mayo test.
In its step two Alice/Mayo analysis, the court stated that nothing in claim 22 qualified as an inventive concept which would transform the recited features into patent eligible matter. The court based its step two determination on the finding that the claims were merely reciting desired results. The majority appeared to be concerned about inhibiting future innovation by granting patents that tie up the use of laws of nature. The court concluded “that independent claim 22 of the ”˜911 patent is patent ineligible under section 101 because it simply requires the application of Hooke”™s law to tune a propshaft liner to dampen certain vibrations”.
Independent claim 1, however, was remanded back to the district court. Claim 1 recited the feature of “tuning at least one liner”. The district court interpreted the term “tuning” to mean “controlling characteristics of at least one liner to match a relevant frequency”. The specification stated that characteristics that can be tuned included variables other than mass and stiffness. The court held that since the specification stated that characteristics could include variables other than mass or stiffness, claim 1 was not solely directed to Hooke”™s law. However, the court determined that further analysis was required under step one of Alice/Mayo to determine if claim 1 was directed to an abstract idea and remanded the case back to the district court.
The U.S. Court of Appeals for the Federal Circuit”™s decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, invalidated claims for a patent directed to a driveshaft. This case is of interest, because the court used the Alice/Mayo analysis to invalidate a mechanical patent.
U.S. Patent 7,774,911
Independent claims 1 and 22 both recite a preamble of “a method for manufacturing a shaft assembly of driveline system”.
The court in its analysis of claim 22, focused on the recited feature of “tuning a mass and a stiffness of at least one liner”. The court agreed with the district court”™s finding that the recited claim language invokes a relation between frequency, mass, and stiffness as stated by Hooke”™s law. As such, the court found that claim 22 invoked a natural law, thus satisfying step one of the Alice/Mayo test.
In its step two Alice/Mayo analysis, the court stated that nothing in claim 22 qualified as an inventive concept which would transform the recited features into patent eligible matter. The court based its step two determination on the finding that the claims were merely reciting desired results. The majority appeared to be concerned about inhibiting future innovation by granting patents that tie up the use of laws of nature. The court concluded “that independent claim 22 of the ”˜911 patent is patent ineligible under section 101 because it simply requires the application of Hooke”™s law to tune a propshaft liner to dampen certain vibrations”.
Independent claim 1, however, was remanded back to the district court. Claim 1 recited the feature of “tuning at least one liner”. The district court interpreted the term “tuning” to mean “controlling characteristics of at least one liner to match a relevant frequency”. The specification stated that characteristics that can be tuned included variables other than mass and stiffness. The court held that since the specification stated that characteristics could include variables other than mass or stiffness, claim 1 was not solely directed to Hooke”™s law. However, the court determined that further analysis was required under step one of Alice/Mayo to determine if claim 1 was directed to an abstract idea and remanded the case back to the district court.
Implications of the Decision
The U.S. Court of Appeals for the Federal Circuit”™s decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, invalidated claims for a patent directed to a driveshaft. This case is of interest, because the court used the Alice/Mayo analysis to invalidate a mechanical patent.
U.S. Patent 7,774,911
Independent claims 1 and 22 both recite a preamble of “a method for manufacturing a shaft assembly of driveline system”.
The court in its analysis of claim 22, focused on the recited feature of “tuning a mass and a stiffness of at least one liner”. The court agreed with the district court”™s finding that the recited claim language invokes a relation between frequency, mass, and stiffness as stated by Hooke”™s law. As such, the court found that claim 22 invoked a natural law, thus satisfying step one of the Alice/Mayo test.
In its step two Alice/Mayo analysis, the court stated that nothing in claim 22 qualified as an inventive concept which would transform the recited features into patent eligible matter. The court based its step two determination on the finding that the claims were merely reciting desired results. The majority appeared to be concerned about inhibiting future innovation by granting patents that tie up the use of laws of nature. The court concluded “that independent claim 22 of the ”˜911 patent is patent ineligible under section 101 because it simply requires the application of Hooke”™s law to tune a propshaft liner to dampen certain vibrations”.
Independent claim 1, however, was remanded back to the district court. Claim 1 recited the feature of “tuning at least one liner”. The district court interpreted the term “tuning” to mean “controlling characteristics of at least one liner to match a relevant frequency”. The specification stated that characteristics that can be tuned included variables other than mass and stiffness. The court held that since the specification stated that characteristics could include variables other than mass or stiffness, claim 1 was not solely directed to Hooke”™s law. However, the court determined that further analysis was required under step one of Alice/Mayo to determine if claim 1 was directed to an abstract idea and remanded the case back to the district court.
Implications of the Decision
In view of the Federal Circuit”™s decision, it is important to keep in mind when drafting claims, that simply reciting functional results may place claims at risk of ineligibility under 35 §USC 101. As such, it is vital to meet the requirements of the Alice/Mayo test when drafting claims in the mechanical arts, such as emphasizing utilization of a result of a calculation to perform an action.