Introduction
The Mayo/Alice subject-matter eligibility test has been a controversial topic since its creation. Many have argued that it leaves innovators, particularly in the software field, with uncertainty as to whether their advances are patentable. In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, the Federal Circuit extended this uncertainty into the mechanical field.
The patent at issue there involved methods of manufacturing driveline propeller shafts to dampen multiple types of vibration. The Federal Circuit invalidated the claims, arguing they were directed to a law of nature – Hooke’s Law.
On request for rehearing en banc, the Federal Circuit split 6-6 (leaving the decision in place, although the rehearing request prompted the initial panel to issue an updated opinion). American Axle & Manufacturing (AAM) petitioned for Supreme Court review, and the Court subsequently requested briefing from the Solicitor General, Elizabeth B. Prelogar, to express the views of the United States.
About a year later, the Solicitor General has now filed the Amicus brief. The brief argues this case was incorrectly decided by the Federal Circuit, and the Supreme Court should grant certiorari to clarify the proper application of the Mayo/Alice framework for determining Section 101 patent eligibility.
Disagreement with the Federal Circuit’s Holding
As an overarching theme, the brief draws from reasoning in Alice and Mayo to emphasize that, “because all useful inventions that operate in the physical world depend for their efficacy on natural laws (whether known or unknown), such dependence by itself cannot render [them] patent-ineligible.” (p. 14 of the brief, citing Alice)
With this principle in mind, it pushes back against the Federal Circuit’s finding that the claim was “a drafting effort designed to monopolize” Hooke’s law. Instead, the claim simply “foreclose[s] from others the use of that equation in conjunction with all of the other steps in [the] process.” Id.
Like the claims previously held patent-eligible in Diamond v. Diehr, this claim entails a concrete application of a natural law, here Hooke’s law, in a particular setting. It is an “[i]ndustrial process” which “ha[s] historically been eligible to receive the protection of our patent laws.”
The Federal Circuit panel had argued that AAM was attempting to claim the goal of reducing vibrations in driveshafts. The Solicitor General brief responded that AAM’s claimed invention extends
well beyond identifying the “goal” of reducing multiple modes of vibration. . . It recites a specific sequence of steps to achieve that goal: taking a “hollow shaft”; “tuning” the “mass” and “stiffness” of a liner, which the district court construed to mean “controlling” the liner’s mass and stiffness “to match the relevant frequency or frequencies” of vibration of the shaft; and “inserting the” liner “into the shaft,” whereupon the liner acts as an “absorber” of two kinds of vibrations.
The brief further criticized the Federal Circuit for blurring the line between other measures of patent propriety by inappropriately demanding that under 35 U.S.C. § 101, the claims must have “a degree of detail more appropriate to the enablement inquiry.” (Id.)
Certiorari Should be Granted
The need for the Supreme Court’s clarification is emphasized by “splintered separate opinions” of a Federal Circuit that is “deeply divided over the proper application of this Court’s framework.” In fact, as noted in Judge Moore’s dissent, every judge on the Federal Circuit has requested clarification from the Supreme Court on this issue.
Since “the content of that framework is central here,” the brief argues that the AAM case is a “suitable vehicle for providing greater clarity” on the application of Section 101. (Brief at 21) Additionally, “in applying Section 101 to the more traditional industrial manufacturing method at issue here, the Court can more readily draw on historical practice and precedent to clarify the governing principles, which can then be translated to other contexts.” (Id.)
New USPTO director Kathi Vidal also recently encouraged interested parties to submit amicus briefs in American Axle, suggesting she agrees the Supreme Court should take up the case.
The author gratefully acknowledges assistance from Mr. Zachary Grinovich in preparing this post.
