By Brian Craig, J.D.
Claims directed to adding a liner to reduce vibrations and noise in a vehicle merely amounted to an application of Hooke’s law.
The U.S. Court of Appeals for the Federal Circuit has concluded that the federal district court in Delaware properly concluded that claims of a patent related to a method for reducing vibrations transmitted along the driveline by a vehicle’s drive shaft, in order to reduce noise audible to the vehicle’s occupants, are invalid because the claims do nothing more than apply a law of nature. The Federal Circuit concluded that a method of adding liners is a mere application of Hooke’s law, an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates. While the majority found the patent claims do not amount to an inventive concept, Circuit Judge Kimberly Moore wrote a dissenting opinion arguing that the claims showing detailed structure and positioning of the liner inside the drive shaft qualify as an inventive concept (American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, October 3, 2019, Dyk, T.).
American Axle & Manufacturing, Inc. ("AAM") sued Neapco Holdings LLC and Neapco Drivelines LLC ( "Neapco") alleging infringement of U.S. Patent No. 7,774,911 ("the ’911 patent"). The ’911 patent generally relates to a method for manufacturing driveline propeller shafts ("propshafts") with liners that are designed to attenuate vibrations transmitted through a shaft assembly. The federal district court in Delaware granted summary judgment in favor of Neapco holding that the asserted claims of the ’911 patent are invalid because they claim ineligible subject matter under 35 U.S.C. § 101. The district court concluded that the asserted claims as a whole are directed to laws of nature: Hooke’s law and friction damping. AAM appealed.
Step one. The Federal Circuit first concluded in step one of the Mayo/Alice analysis that the claims are directed to a natural law. In step one, the court asks whether the claims are directed to a law of nature, natural phenomenon, or abstract idea. Here, the court found that the claims of the ’911 patent are directed to the utilization of a natural law. The claims simply instruct the reader to tune the liner—a process that merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so. Hooke’s law is an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates. The Federal Circuit held that Section 101 is concerned with whether the claims at issue recite a natural law, not whether the specification has adequately described how to make and use the concretely claimed structures and steps. Thus, the patent claims are ineligible because they are directed to a natural law in Hooke’s law.
Step two. In its Mayo/Alice step 2 analysis, the Federal Circuit concluded that nothing in the claims qualifies as an "inventive concept" to transform the claims into patent eligible matter. AAM contends that the claims include numerous inventive concepts that were neither previously known, nor conventional or routine. 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, according to the court. The court also concluded that the claim to "position" the liner within the propshaft fails to add an inventive concept. Having concluded that the patent claims are patent ineligible, the Federal Circuit affirmed the district court.
Dissent. Circuit Judge Kimberly Moore wrote a strongly worded dissenting opinion and was "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. Judge Moore argued that the court cannot convert Section 101 into a panacea for every concern the court has over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them. Judge Moore opined that the majority’s statement that "[s]ection 101 is concerned with whether the claims at issue recite a natural law, not whether the specification has adequately described how to make and use the concretely claimed structures and steps" is just "plain wrong." Missing is any recognition that the Alice/Mayo test is a two-part test and that the second step has meaning, according to Judge Moore. The concretely claimed structures and steps are exactly what can move the claim from ineligible to eligible by virtue of step 1 or step 2. There are additional alleged "inventive concepts" in the present case, including claims which get progressively more detailed about the structure and positioning of the liner inside the drive shaft. Judge Moore wrote that Section 101 simply should not be this sweeping and this manipulatable. She found the majority’s "validity goulash" troubling and inconsistent with the patent statute and precedent.
This case is No. 2018-1763.
Attorneys: James Richard Nuttall (Steptoe & Johnson, LLP) for American Axle & Manufacturing, Inc. Dennis J. Abdelnour (Honigman LLP) for Neapco Holdings LLC.
Companies: American Axle & Manufacturing, Inc.; Neapco Holdings LLC
MainStory: TopStory Patent FedCirNews
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