IP Law Daily Court modifies opinion finding claims for reducing vehicle vibrations ineligible
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Friday, July 31, 2020

Court modifies opinion finding claims for reducing vehicle vibrations ineligible

By Thomas Long, J.D.

After panel rehearing, court again holds that two claims directed to "tuning" a liner to reduce vibrations and noise in a vehicle merely applied Hooke’s law, although one claim went further and needed to be reconsidered by the district court.

Following a petition for rehearing by patent owner American Axle & Manufacturing, Inc., the U.S. Court of Appeals for the Federal Circuit has modified and reissued an October 3, 2019, opinion in which it held that certain patent claims directed to adding a liner to reduce vibrations and noise in a vehicle were ineligible for protection under 35 U.S.C. § 101 because they merely amounted to an application of Hooke’s law. In the modified opinion, the appellate court affirmed in part and vacated in part a decision of the federal district court in Delaware, which had concluded that the challenged claims were invalid because the claims do nothing more than apply a law of nature. The court retained its original holding with respect to two independent claims and claims that depended from them. However, it vacated with respect to independent claim 1, determining that it was not merely directed to a natural law, and remanded for the district court to consider whether it was ineligible under Section 101 as directed to an abstract idea. Circuit Judge Kimberly Moore expanded on her dissenting opinion, asserting that the majority "inflated" Section 101 beyond the statutory language and Supreme Court precedent (American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, July 31, 2020, 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 were invalid because they claimed ineligible subject matter under Section 101. The district court concluded that the asserted claims as a whole were directed to laws of nature: Hooke’s law and friction damping. AAM appealed.

In its October 2019 opinion, the Federal Circuit held that all challenged claims were ineligible for patent protection under Section 101. The court granted AAM’s petition for panel rehearing, although it denied en banc rehearing in a per curiam order with five separate opinions, including three dissenting opinions. In total, six judges dissented from the denial of the petition for rehearing en banc. Because the 12 active judges on the court were evenly divided, the petition for en banc rehearing was denied.

In the modified opinion, the Federal Circuit held that independent claims 22 of the ’911 patent was patent ineligible under because it simply required the 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—to tune a propshaft liner to dampen certain vibrations. Independent claim 36 and asserted claims that depended from claim 22 were also ineligible. However, the court held that because claim 1 required "positioning" in addition to tuning, and could reflect a broader definition of tuning, it was not merely directed to Hooke’s law. The Federal Circuit remanded the case to the district court to address the eligibility of claim 1 and its dependent claims under an "abstract idea" theory.

Claims 22 and 36. The Federal Circuit first determined that claim 22 was directed to a natural law. The claim simply instructed 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. The appellate court noted that a claim to a method of manufacturing can be directed to a natural law.

"In contrast to a number of other natural law cases, the patentee here does not even claim to have discovered a previously unknown natural law," the appellate court said. "Instead, it defines a goal (‘tuning a liner’ to achieve certain types of vibration attenuation)." The district court construed "tuning a mass and a stiffness of at least one liner" in claim 22 to means "controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies." Thus, claim 22 required use of a natural law of relating frequency to mass and stiffness—i.e., Hooke’s law. The claim on its face did not identify the "particular [tuned] liners" or the "improved method" of tuning the liners to achieve the claimed result.

The court rejected AAM’s contention that that tuning a liner such that it attenuates two different vibration modes (or just dampens bending mode vibrations) is complicated in practice, involving more than simple application of Hooke’s law. "While AAM may have discovered patentable refinements of the prior art process, such as particular uses of ‘sophisticated FEA [finite element analysis] models during its design process,’" said the court, "neither the specifics of any novel computer modelling, nor the specifics of any experimental modal analysis are included as limitations in claim 22. These unclaimed features cannot function to remove claim 22 from the realm of ineligible subject matter." According to the appellate court, the problem was that claim 22’s instruction to tune a liner amounted to simply claiming a result.

The court went on to hold that nothing in claim 22 qualified as an "inventive concept" to transform it into patent eligible matter. AAM argued that the claims included numerous inventive concepts that were neither previously known, nor conventional or routine. AAM essentially asserted 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 amounted to no more than an elaborated articulation of its reasons as to why the claims were not directed to a natural law, according to the court.

The appellate court noted that Claim 36 was virtually indistinguishable from claim 22 and was not argued separately on appeal or in district court. Accordingly, it was likewise not patent eligible. Additionally, the court stated that it was unnecessary to separately determine eligibility of the asserted dependent claims.

Claim 1. Claim 1 was different from claim 22, the court said, in a change from its original opinion. Although both claims required "tuning," claim 1 was more general and required "tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member." The district court construed this term to mean "controlling characteristics of at least one liner to configure the liner to match a relevant frequency or frequencies to reduce at least two types of vibration transmitted through the shaft member." According to the Federal Circuit, the specification indicated or suggested that the "characteristics" that can be "tuned" in claim 1 include variables other than mass and stiffness. Additionally, claim 1 had an additional limitation of "positioning the at least one liner," which was not present in claim 22. The appellate court concluded that it could not say that claim 1 was merely directed to Hooke’s law. While the district court’s opinion suggested that the broader concept of tuning was an abstract idea, and Neapco on appeal relied on both the natural law and abstract idea categories of ineligibility in defending the district court’s decision, the abstract idea basis was not adequately presented and litigated in the district court. The appellate court vacated the judgment as to claim 1 and its dependent claims and remanded the case for the district court to address this alternative eligibility theory in the first instance.

Dissenting opinion. Circuit Judge Kimberly Moore wrote a strongly worded dissenting opinion. According to Judge Moore, the majority’s decision expanded Section 101 "well beyond its statutory gate-keeping function" and collapsed the Alice/Mayo two-part test to a single step, meaning that claims are now ineligible if their performance would involve application of a natural law.

"The majority makes three critical errors of law and in doing so, has inflated § 101 beyond the statutory language and Supreme Court precedent," Judge Moore said. "First, the majority finds claims directed to natural laws, yet they clearly contain no such natural law. The majority creates a new test for when claims are directed to a natural law despite no natural law being recited in the claims, the Nothing More test." Second, Judge Moore argued that the majority refused to consider the unconventional claim elements. Third, she opinion the majority had "imbued § 101 with a new superpower—enablement on steroids." In Judge Moore’s view, the majority blended the Section 101 analysis with the Section 112 enablement analysis, thereby converting factual issues into legal ones, which she said was "certain to cause confusion for future cases." Judge Moore opined that claims at issue contained a specific, concrete solution to a problem. Although some degree of trial and error in modifying the mass, stiffness, and location of the liner to optimize the reduction in vibration of a given shaft could create an enablement concern, that was not a Section 101 problem, in her view.

"The majority holds that claims are directed to natural laws and are ineligible under § 101 if practicing the method would require application of a natural law and nothing more to achieve the claimed results, even when all of the technical experts disagree," Judge Moore wrote. "The majority has concluded that the Nothing More question will be decided on appeal as a matter of law, without briefing and argument, and without regard to what the experts think. I cannot fathom the confusion that will be caused by declaring that claims are ineligible as directed to a natural law, when it is clear to all involved that this patent does not recite any particular natural law."

Response to dissent. The majority responded to a few of the points raised in the dissent. The majority opined that it was not departing from existing Section 101 precedent, but rather was "faithfully following it in the narrow circumstances of this case."

Additionally, the majority stated that "our holding should not be read as an invitation to raise a validity challenge against any patent claim that requires the application of an unstated natural law," explaining that "our holding is limited to the situation where a patent claim on its face and as construed clearly invokes a natural law, and nothing else, to accomplish a desired result." The majority pointed out that nothing in the case law suggested that the natural law exception required an express claim recitation of a natural law. According to the majority, "the analysis is a substantive one about whether the claim is ‘directed to’ ineligible matter and, if so, whether there is enough other than the ineligible matter itself to create eligibility."

With respect to the dissent’s critique of the majority’s analysis as improperly merging enablement and eligibility, the majority opined that the criticism reflected a failure to distinguish two different "how" requirements in patent law. The eligibility requirement was that the claim must go beyond stating a functional result, by identifying "how" that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness. The second, distinct "how" requirement—the enablement requirement—applied to the specification, not the claim, stated the majority. "Once the required concrete physical structures or actions are set out in the claim," explained the majority, "the specification must set forth enough information for a relevant skilled artisan to be able to make and use the claimed structures or perform the claimed actions." Section 101 was concerned with whether the claims were directed to a natural law, not whether the specification adequately described how to make and use the concretely claimed structures and steps.

This case is No. 18-1763.

Attorneys: James Richard Nuttall (Steptoe & Johnson LLP) for American Axle & Manufacturing, Inc. Dennis J. Abdelnour (Honigman LLP) for Neapco Holdings LLC and Neapco Drivelines LLC.

Companies: American Axle & Manufacturing, Inc.; Neapco Holdings LLC; Neapco Drivelines LLC

MainStory: TopStory Patent FedCirNews GCNNews

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