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

• Decision Date: 31 July 2020
• Docket Number: 2018-1763
• Parties: AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant v. NEAPCO HOLDINGS LLC, Neapco Drivelines LLC, Defendants-Appellees
• Court: U.S. Court of Appeals — Federal Circuit

966 F.3d 1347 (Mem)

AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant

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

2018-1763

United States Court of Appeals, Federal Circuit.

Filed: July 31, 2020

ON PETITION FOR REHEARING EN BANC

ORDER

Per Curiam.

Appellant American Axle & Manufacturing, Inc. filed a combined petition for panel rehearing and rehearing en banc. A response to the petition was invited by the court and filed by appellees Neapco Holdings LLC and Neapco Drivelines LLC. Several motions for leave to file amici curiae briefs were filed and granted by the court. The petition for rehearing, response, and amici curiae briefs were first referred to the panel that heard the appeal, which granted the petition in part as indicated in the accompanying order. Thereafter, the petition was referred to the circuit judges who are in regular active service. A poll was requested, taken, and failed.

Upon consideration thereof,

IT IS ORDERED THAT :

1) The petition for rehearing en banc is denied.

2) The mandate of the court will issue on September 8, 2020.

Dyk, Circuit Judge, with whom Wallach and Taranto, Circuit Judges, join, concurring in the denial of the petition for rehearing en banc.

We agree that en banc review was not warranted. The panel opinion is both consistent with precedent and narrow in its scope. Claim 22 and related claims instruct only the use of mass and stiffness to match relevant frequencies to tune a propshaft liner so that the liner, when used, will produce certain results (reducing two modes of vibration from the propshaft). Contrary to Judge Stoll's dissent, these claims in no way "recite the process and machinery necessary to produce the desired effect of reducing vibrations in a shaft assembly." Stoll Dissent Op. at 1362. Because claim 22 contains no further identification of specific means for achieving those results, but merely invokes the natural law that defines the relation between stiffness, mass, and vibration frequency, it is ineligible under a long line of cases beginning at about the time of O'Reilly v. Morse , 56 U.S. (15 How.) 62, 14 L.Ed. 601 (1853), which held ineligible a claim to "printing intelligible characters ... at any distances" by the use of "electro-magnetism," precisely because, unlike the other upheld claims in O'Reilly , it lacked any identification of specific means to use electromagnetism.¹ Id. at 113–20.

"Morse's eighth claim would have covered, among other things, telephone, radio, television, microwave, wireless, and Internet communication, although they were all invented by others much later." Jay Dratler, Jr., Alice in Wonderland Meets the U.S. Patent System , 38 Akron L. Rev. 299, 321 (2015). Allowing the patentability of such broad claims impairs rather than promotes innovation and denies patent protection to real inventors—those who discover particular ways to achieve the desired result. "[T]here is a danger that the grant of patents that tie up the[ ] use [of laws of nature] will inhibit future innovation premised upon them, a danger that becomes acute when a patented process amounts to no more than an instruction to ‘apply the natural law,’ or otherwise forecloses more future invention than the underlying discovery could reasonably justify." Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 86, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012).

The inventors here may well have invented a specific means of achieving the claimed result, but they chose not to include such means in the claims we hold ineligible. Those claims, which invoke only a natural law, are ineligible under O'Reilly and other cases invalidating claims that merely state a result without providing specific detail as to the "how"—the means for achieving the result. See Mayo , 566 U.S. at 71–73, 132 S.Ct. 1289 ("[T]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’ "); Parker v. Flook , 437 U.S. 584, 586, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) (invalidating a claimed method that did not "purport to explain how to select ... any of the ... variables" involved, or "purport to contain any disclosure relating to the chemical process at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system"); Mackay Radio & Telegraph Co. v. Radio Corp. of Am. , 306 U.S. 86, 94–101, 59 S.Ct. 427, 83 L.Ed. 506 (1939) ; O'Reilly , 56 U.S. at 112–17 (holding a claim for "use of the motive power of the electric or galvanic current ... for marking or printing intelligible characters ... at any distances" ineligible because "it matter[ed] not by what process or machinery the result [wa]s [to be] accomplished"); Le Roy v. Tatham , 55 U.S. (14 How.) 156, 175, 14 L.Ed. 367 (1852) (holding that claiming a concept without the particular steps of carrying it out "would prohibit all other persons from making the same thing by any means whatsoever," and that such claims are ineligible for patentability); Corning v. Burden , 56 U.S. (15 How.) 252, 268, 14 L.Ed. 683 (1853) ("It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect, that a patent is granted, and not for the result or effect itself."), quoted by Diamond v. Diehr , 450 U.S. 175, 182 n.7, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981).²

The assertions that the panel decision holds that "any reliance on a scientific principle in the claimed subject matter affects eligibility" or calls into question the patentability of basic inventions such as "the telegraph, telephone, light bulb, and airplane" are quite incorrect. Newman Dissent Op. at 1359; Stoll Dissent Op. at 1364. What the decision calls into question is claims, such as claim 8 in O'Reilly , that claim only a result (the telegraph, electric light bulb, the combustion engine) and disclose nothing more than a natural law (electromagnetic force, incandescence, chemical combustion) to achieve that result. Nothing in the panel opinion suggests that claims that describe how the objective (light bulb, etc.) is to be achieved are patent ineligible. Such claims have long been held patentable. Such claims continue to be patentable. A contrary result would deny a true inventor (an individual who determined a specific means to achieve the claimed result) the fruits of his or her invention.

Contrary to Judge Stoll's dissent from denial of rehearing en banc, see Stoll Dissent Op. at 1363–65, there is also no fact issue here. If the suggestion is that it is a factual question whether more than Hooke's Law might be needed to make a device that actually produces the claimed result, that is not the proper eligibility question. In O'Reilly , it was plain from the specification and the other claims that more than electromagnetism was needed to produce the claimed result, but the Supreme Court held claim 8 ineligible precisely because it omitted any such implementation means. The omission of needed specifics in the claim was the problem, not a reason to find eligibility.

The step-one "directed to" inquiry in this case, as in O'Reilly , is what the claim says. As to that question, the panel does not suggest that there can never be a factual issue, but there is no such factual issue here. Both parties’ witnesses agreed that Hooke's law relates an object's frequency of vibration to its mass and stiffness, see Maj. –––– – ––––, and neither party disputes the claim construction given to the claim language "tuning a mass and a stiffness of at least one liner," namely, "controlling a mass and stiffness of at least one liner to configure the liner to match a relevant frequency or frequencies," J.A. 15, 1047. Nor is there a conflict in evidence about what "mass" or "stiffness" means to the relevant skilled artisan. The claim language thus invokes the very relation between frequency and mass and stiffness stated by Hooke's law, as the district court determined. J.A. 11 ("The claimed methods are applications of Hooke's law with the result of friction damping." (emphasis added)).

Claim 22 does not name Hooke's law, but the name is immaterial. The Supreme Court has not required reciting the natural law by name and has rejected a "draftsman's art" approach to § 101 analysis. See, e.g. , Mayo , 566 U.S. at 72, 77, 132 S.Ct. 1289 (explaining that the "laws of nature" set forth in the claims are unnamed "relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm").

Judge O'Malley’s dissent suggests that the panel majority "decide[s] questions on grounds that were neither argued before the district court nor briefed on appeal" and that it "announces a new test for patentable subject matter at the eleventh hour and without adequate briefing." O'Malley Dissent at 1365–66. But there is no new ground here. Both in district court and on appeal, Neapco Holdings LLC and Neapco Drivelines LLC (collectively, "Neapco") argued that the claims invoked a natural law, and nothing more, to accomplish a desired result. Neapco argued in summary judgment briefings that "the claims are ineligible because they are directed to laws of nature and/or natural phenomena related to controlling the natural frequency of an object and the physics behind vibration attenuation." J.A. 4596. Neapco's expert stated that "the asserted claims of the ’911 patent do nothing more than attempt to claim well-known laws of nature or natural phenomen[a]." J.A. 2704. American Axle & Manufacturing, Inc. ("AAM") opposed this characterization of the claims in its briefing to the district court: "Neapco oversimplifie[d] the Asserted Claims to allege that they ‘do nothing more than attempt to claim well-known laws of nature or natural phenomenon.... [Its] arguments are without merit." J.A. 4331 (quoting Neapco's expert's testimony). Ultimat...