SCOTUS declines to respond to requests for clarification in American Axle v. neapco | Mintz – Viewpoints on Intellectual Property
[co-author: Amanda Metell]
The U.S. Supreme Court has denied certiorari in the closely watched case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The court’s refusal to hear the case disappointed patent practitioners nationwide — and likely also members of the Federal Circuit Court of Appeals, which itself was clamoring for guidance. For now, at least, this means that lower courts and practitioners still lack the necessary clarity on the proper application of the Mayo/Alice test to determine statutory purpose under 35 USC § 101.
In American axle, the Federal Circuit upheld a patent claim not eligible for protection under Section 101, where it involved methods of reducing vibration on a shaft assembly of an automobile (highlighted at 20, ci below). The patent explained that in the existing art, car shaft assemblies experience vibrations resulting in movements in three modes: lateral (bending mode), twisting (twisting mode), and circumferential (shell mode). According to the patent, existing vibration dampening methods, such as weights and liners, were ineffective at dampening more than one of these modes. The patent claimed an improvement for the application of liners to the shaft, the liners being tuned for mass and stiffness to account for the mode of flex. and vibration in hull mode. See, for exampleClaim 22 of US Patent No. 7,774,911.
Claim 22 of the ‘911 patent states:
A method of manufacturing a shaft assembly of a transmission system, the transmission system further comprising a first transmission component and a second transmission component, the shaft assembly being adapted to transmit torque between the first transmission component and the second transmission component, the method comprising:
providing a hollow shaft member;
adjusting a mass and a stiffness of at least one sleeve; and
inserting the at least one sleeve into the tree member;
wherein the at least one coating is a resistive absorber tuned to attenuate shell mode vibration and wherein the at least one coating is a reactive absorber tuned to attenuate flex mode vibration.
By applying steps 1 and 2 of the Mayo/Alice test, the district court (in an opinion written by Judge Stark, now on the Federal Circuit bench since March 2022), ruled that “Hooke’s law governs the relationship between mass, stiffness, and frequency” and that the “request for “setting” limitation does no more than suggest that a[n]…the engineer takes this law of nature into account when designing driveshaft sleeves to dampen transmission vibrations. A m. Axle & Mfg. vs. Neapco Holdings LLC, 309 F. Supp. 3d 218, 226-28 (D. Del. 2018).
The majority of the Federal Circuit (Judges Dyk and Taranto), on a vigorous dissent by Justice Moore, agreed with Justice Stark, but offered a clue as to how the claims might have survived the Alice test if they had been more detailed, i.e. if they included specific finite element analysis models. The majority argued that if “[t]his case may well be significantly different, if, for example, specific FEA [finite element analysis] the models were included in the claims[, ] the general statement of claims to settle a liner is nothing more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc process of trial and error of modifying the characteristics of a liner until a desired result is achieved. A m. Axle & Mfg. vs. Neapco Holdings LLC939 F.3d 1355, 1363-64 (Fed. Cir. 2019).
Justice Moore, in a strongly expressed dissent, argued otherwise. She noted that “[t]The majority’s concern with the claims at issue has nothing to do with natural law and its preemption and everything to do with the fear that the claims will not be permitted. Respectfully, there is a clear and explicit legal section for enablement, § 112. We cannot turn § 101 into a panacea for all the concerns we have about the patentability of an invention, especially when the law on patents expressly deals with the other conditions of patentability and where the defendant has not contested them. Identifier. at 1369.
The Federal Circuit later denied a rehearing bench and issued a hash of a split opinion, including a denial of the rehearing request (Justices Dyk, Wallach, Taranto), an agreement (Justices Chen and Wallace), and four separate dissenting opinions (including Newman, Moore, O’ Malley, Reyna, Stoll and Lourie). Justice Newman highlighted the views of the dissenters:
Court rulings on patent eligibility have become so diverse and unpredictable that they have a serious effect on incentivizing innovation in all areas of technology. The victim is not only this inventor of this now copied improvement of motor vehicle driveshafts; the victims are the national interest in an innovative industrial economy and the public interest in the fruits of technological progress. I share the concerns of my dissenting colleagues and write to highlight the far-reaching consequences of the Court’s erroneous Section 101 jurisprudence. A m. Axle & Mfg. vs. Neapco Holdings LLC966 F.3d 1347, 1357-58 (Fed. Cir. 2020).
For clarification and guidance from the Supreme Court, American Axle appealed. The Supreme Court initially showed interest in the case by asking the government to rule on whether to grant certiorari. It took over a year for the Solicitor General to file a brief in response to this request. After the initial briefing, American Axle and the United States Solicitor General had argued that the Supreme Court should take up the case because there is great uncertainty in the law as to how a given set of patent claims will be assessed under the mayo/Alice test. They encouraged the Supreme Court to provide lower courts, practitioners and inventors with guidance on how to objectively determine when a claim is “directed to” non-patentable subject matter. The Solicitor General pointed out that “[p]problems arising from the application of Section 101 have drawn particular attention in certain areas, such as medical diagnostics, and which the USPTO’s guidelines for patent examiners “made difficult for” inventors, companies and other patent stakeholders to reliably and predictably determine that subject matter is patentable”. Nonetheless, at the end of its term this year, the Supreme Court declined those invitations to take up the case and clarify Section 101.
Although patent practitioners may have differing opinions on the Federal Circuit’s decision and the Supreme Court’s denial, it is generally accepted that in the years following the mayo and Alice decisions, the level of ambiguity around how to apply the mayo/Alice the scope of a given patent claim remains, for the time being. In fact, former Chief Justice Paul Michel of the Federal Circuit, during testimony before Congress in 2019, asked, “If I, as a judge with 22 years of experience deciding cases of patents on the federal circuit bench, I can’t predict [Section 101] results based on case law, how can we expect patent examiners, trial judges, inventors and investors to do so? This question will likely remain unanswered until the Supreme Court provides the clarifications that American Axle and the Solicitor General have sought in this case. It remains to be seen whether the Court, in a future case with an equally fractured Federal Circuit seeking guidance, will ultimately take up a patent eligibility case under Section 101 and respond to these calls for clarification.