Am. Axle & Mfg., Inc. v. Neapco Holdings LLC

• Decision Date: 03 October 2019
• Docket Number: 2018-1763
• Citation: 967 F.3d 1285
• Parties: AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant v. NEAPCO HOLDINGS LLC, Neapco Drivelines LLC, Defendants-Appellees
• Court: U.S. Court of Appeals — Federal Circuit

967 F.3d 1285

AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant

v.NEAPCO HOLDINGS LLC, Neapco Drivelines LLC, Defendants-Appellees

2018-1763

United States Court of Appeals, Federal Circuit.

October 3, 2019

Filed July 31, 2020^*

James Richard Nuttall, Steptoe & Johnson LLP, Chicago, IL, argued for plaintiff-appellant. Also represented by John Lloyd Abramic, Katherine H. Johnson ; Robert Kappers, Steptoe & Johnson, LLP; Christopher Alan Suarez, Washington, DC.

Dennis J. Abdelnour, Honigman LLP, Chicago, IL, argued for defendants-appellees. Also represented by J. Michael Huget, Sarah E. Waidelich, Ann Arbor, MI.

Scott A. M. Chambers, Porzio, Bromberg & Newman, PC, Washington, DC, for amici curiae Christopher Frerking, Christopher Michael Holman, David Lund, Walter Matystik, Adam Mossoff, Kristen J. Osenga, Michael Risch, Mark F. Schultz, Ted M. Sichelman, Brenda M. Simon, Jonathan Stroud, David O. Taylor. Also represented by Matthew Zapadka, Bass, Berry & Sims, PLC, Washington, DC.

Before Dyk, Moore, and Taranto, Circuit Judges.

Dyk, Circuit Judge.

American Axle & Manufacturing, Inc. ("AAM") sued Neapco Holdings LLC and Neapco Drivelines LLC (collectively, "Neapco") alleging infringement of claims of U.S. Patent No. 7,774,911 ("the ’911 patent").¹ The parties filed cross-motions for summary judgment as to the eligibility of the asserted claims of the ’911 patent under 35 U.S.C. § 101. The district court granted Neapco's motion and held that the asserted claims are ineligible under § 101. We affirm in part and vacate and remand in part.

BACKGROUND

I

The ’911 patent generally relates to a method for manufacturing driveline propeller shafts ("propshafts") with liners that are designed to "attenuat[e] ... vibrations transmitted through a shaft assembly." ’911 patent, col. 1, ll. 6–7. Propshafts are "employed [in automotive vehicles] to transmit rotary power in a driveline." Id. col. 1, ll. 38–39. Because these propshafts are typically made of a "relatively thin-walled steel or aluminum tubing [they] can be receptive to various driveline excitation sources." Id. col. 1, ll. 40–42. These excitation sources, in turn, can cause the propshaft to vibrate in three modes: bending mode, torsion mode, and shell mode. Id. col. 1, ll. 42–44. The ’911 patent describes these vibration modes as follows:

Bending mode vibration is a phenomenon wherein energy is transmitted longitudinally along the shaft and causes the shaft to bend at one or more locations. Torsion mode vibration is a phenomenon wherein energy is transmitted tangentially through the shaft and causes the shaft to twist. Shell mode vibration is a phenomenon wherein a standing wave is transmitted circumferentially about the shaft and causes the cross-section of the shaft to deflect or bend along one or more axes.

Id. col. 1, ll. 44–52. These vibration modes correspond to different frequencies. Because such vibrations cause undesirable noise, "techniques [had, prior to the ’911 patent,] been employed to attenuate vibrations in propshafts including the use of weights and liners." Id. col. 1, ll. 53–54.

AAM agreed that "[t]he methods for determining natural frequencies and damping are well known in the art." AAM Op. Br. 8. Some of these are described in the specification. Those techniques include "the use of weights and liners." Id. col. 1, l. 54. Elaborating, the patent first describes the use of "plugs or weights" that are inserted to frictionally engage a propshaft to damp certain vibrations. Id. col. 1, l. 53–col. 2, l. 4. It then describes several priorart dampers and "hollow liners." See, e.g. , id. col. 2, ll. 5–37; col. 6, ll. 49–53. The specification describes prior art hollow liners as tubes made of a fibrous material (like cardboard) with outer resilient members that "frictionally engage the inner diameter of the [propshaft]." Id. col. 6, ll. 56–65.

Two types of attenuation are relevant here: resistive attenuation and reactive attenuation. "[R]esistive attenuation of vibration refers to a vibration attenuation means that deforms as vibration energy is transmitted through it ... so that the vibration attenuation means absorbs ... the vibration energy." Id. col. 1, ll. 61–65. A liner that is properly tuned to attenuate shell mode vibration through resistive attenuation "matches" the shell mode vibration (i.e., a particular natural frequency) of the propshaft such that it absorbs, through friction damping, the shell mode vibration of the propshaft. J.A. 1933, 2000–02. "[R]eactive attenuation of vibration refers to a mechanism that can oscillate in opposition to the vibration energy [of the propshaft] to thereby ‘cancel out’ a portion of the vibration energy." ’911 patent, col. 2, ll. 15–18. Thus, to design a liner to perform reactive attenuation of a bending mode vibration "the liner frequency must match the propshaft frequency and involve translation of the liner to effectively couple with the propshaft bending mode." AAM Op. Br. 6 (citing J.A. 2076–77, 4036–37, 5218).

According to the ’911 patent ’s specification, prior art weights, dampers, and hollow liners that were designed to individually attenuate each of the three propshaft vibration modes—bending, shell, and torsion—already existed. ’911 patent, col. 1, l. 53–col. 2, l. 38. But these prior art damping methods were assertedly not suitable for attenuating two vibration modes simultaneously. See id. Thus, the patent identified "a need in the art for an improved method for damping various types of vibrations in a hollow shaft" that "facilitates the damping of shell mode vibration as well as the damping of bending mode vibration" simultaneously. Id. col. 2, ll. 39–43. AAM argues that the invention is the tuning of a liner in order to produce frequencies that dampen both the shell mode and bending mode vibrations simultaneously. It argues as well on appeal that the use of liners to dampen bending mode vibration is itself inventive.

The district court treated independent claims 1 and 22 of the ’911 patent as representative of the asserted claims (claims 1–6, 12, 13, 19–24, 26, 27, 31, 34–36). Those two claims recite methods of manufacturing:

1. 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 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.

’911 patent, col. 10, ll. 10–27; id. col. 11, ll. 24–36.

II

AAM sued Neapco on December 18, 2015, alleging infringement of the ’911 patent. The parties filed cross-motions for summary judgment as to patent eligibility under § 101. On February 27, 2018, the district court granted Neapco's motion for summary judgment, and denied AAM's cross-motion. Applying the two-step analysis of Mayo Collaborative Services v. Prometheus Laboratories, Inc. , 566 U.S. 66, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank International , 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), the court held that the asserted claims of the ’911 patent are invalid because they claim ineligible subject matter under § 101.

The district court construed the claim 1 limitation "tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member" 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." J.A. 1046. The district court construed the claim 22 limitation "tuning a mass and a stiffness of at least one liner" to mean "controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies." J.A. 15, 1047. No party contests the district court's construction on appeal.

At step 1 of the Mayo / Alice analysis, the district court concluded that the Asserted Claims, "considered as a whole," are "directed to the mere application of Hooke's law," treating claims 1 and 22 as representative. J.A. 4–5, 11. The district court held that the claims’ direction to tune a liner to attenuate different vibration modes amounted to merely "instruct[ing] one to apply Hooke's law to achieve the desired result of attenuating certain vibration modes and frequencies" without "provid[ing] [a] particular means of how to craft the liner and propshaft in order to do so." J.A. 17. The district court made no distinction between claims 1 and 22 in its analysis. See J.A. 15 n.3.

Hooke's law is an equation that describes the relationship between an object's mass, its stiffness, and the frequency at...