Case No. 2018-1763 (Fed. Cir. 2020)
On July 31, The U.S. Court of Appeals for the Federal Circuit (CAFC) modified its earlier opinion and denied a rehearing en banc filed by patent owner American Axle. In that earlier decision, the majority affirmed the district court’s findings that claims 1 and 22, which were directed to a method of manufacturing driveline propeller shafts, were invalid under § 101 for being directed to a natural law. This case drew extra attention as most applications of § 101 involve software or medical diagnostics, and not purely mechanical inventions.
Now, in its modified opinion, the majority has determined that claim 1 may be directed to eligible subject matter, while claim 22 remains invalid. However, Judge Moore’s dissent argued that the majority followed a “chimeric approach to § 101 which is inconsistent with precedent, a vast expansion of § 101, and bound to cause confusion in future cases.”
1. method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:
providing a hollow shaft member;
tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and
positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.
22. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:
providing a hollow shaft member;
tuning a mass and a stiffness of at least one liner; and
inserting the at least one liner into the shaft member;
wherein the at least one liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations.
The majority found claim 22 ineligible, keeping the same result as the original panel decision. Under step one of Alice, the court concluded that claim 22 was directed to a natural law, specifically Hooke’s Law. According to the majority, “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 Court highlighted the claim language of Claim 22 – “tuning a mass and a stiffness” and getting a beneficial attenuation of the frequency.
The majority concluded that the “problem is that claim 22’s instruction to tune a liner essentially amounts to simply claiming a result,” without any particular limitations on how to achieve that result. “The Supreme Court has long held that claims that state a goal without a solution are patent ineligible.” Possible limitations that could have been added included “extensive computer modelling, including finite element analysis (‘FEA’), and experimental modal analysis (that is, trial and error).”
Turning to step two of , American Axle argued that there was an inventive concept, because liners had never previously been tuned in this way. The majority found this to be nothing more than a restatement of the desired result, and such “a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept.”
The Federal Circuit found that claim 1 may be directed to eligible subject matter, because claim 1 requires “positioning” in addition to tuning and reflects a broader definition of tuning, either of which could be broader than simply applying Hooke’s law.
Under the district court’s construction, the majority found that claim 1 was directed to “controlling characteristics” of the liner to achieve certain vibrations. Based on the specification, the majority found that the “characteristics” that could be tuned involve variables other than mass and stiffness. The majority found that claim 1 also contained an additional claim limitation of positioning the liner. Thus, the majority found that claim 1 was not merely applying Hooke’s law. Accordingly, the court remanded the case to address eligibility of this claim.
In her dissent, Judge Moore criticized the majority’s analysis as “enablement on steroids,” and found the analysis to be confusing, converting factual issues into legal issues, and eliminating the knowledge of one of skill in the art. Judge Moore noted that the result of the claims is a reduction of vibrations, not that the liners are tuned. Thus the claims identify a precise structure and certain variables to be adjusted to achieve that result of reducing vibrations. Whether or not one of skill in the art would know how to adjust those variables is a question of enablement, not eligibility. Judge Moore dissented from what she called “the majority’s attempt to inject a heightened enablement requirement into the § 101 analysis.”
It has long been understood that functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim” and thus be indefinite. However, the court seems to suggest that inventors must provide some structure or algorithm in the claims that answers the question of how a recited function is achieved. Naturally, this will narrow the scope of the claim, but here the court suggests that limiting a method claim to a specific concrete action is the only way to survive 101 eligibility.
Ricardo earned his JD from Tulane University Law School in 2019. His background in Microbiology and Virology has guided his interest into the field of Intellectual Property.