By Stuart Meyer with counterpoint by Gregory Hopewell
In reading post-Mayo/Alice decisions, some seem more comfortable than others. I’ve been having a tough time getting my head and heart around a recent decision from Judge Leonard Stark of the District of Delaware. The case is American Axle & Manufacturing v. Neapco Holdings and Neapco Drivelines. From the party names alone, this does not appear to be a likely candidate for Section 101 invalidity.
The claims that the court found representative for Section 101 analysis confirm that we’re not talking about social media applications or financial methods here, but instead “a method for manufacturing a shaft assembly of a driveline system.” Classic auto industry innovation dispute between two Detroit area companies, with a bonus that the judge also hails from Detroit. Spoiler Alert: To my surprise, the first sentence of the opinion’s discussion section said, “As explained below, the Court has determined that the Asserted Claims are not directed to patentable subject matter.”
Step One of Analysis
The court proceeded to recite step one of the test: “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” (Bold and italics in this quote from Internet Patents v. Active Network being provided by Judge Stark.) Despite AAM’s arguments that the claims are directed to industrial manufacturing processes for automotive components, the court agreed with Neapco’s view that instead they do “nothing more” than apply physics to a prior art design to minimize unwanted vibrations in the assembly. As the court observed, “The claimed methods are applications of Hooke’s law with the result of friction damping.” Time for me to go back to the claim details.
Neither of the exemplary claims expressly references Hooke’s law. Instead, they reference in pertinent part “tuning a mass and stiffness of at least one liner” and inserting the liner into a hollow shaft, the liner being “a tuned resistive absorber for attenuating shell mode vibrations” and “a tuned reactive absorber for attenuating bending mode vibrations.”
My background is in electrical rather than mechanical engineering, so this sounds to me somewhat like placing an LC circuit (an inductor and a capacitor) at the output of a DC power supply to filter out unwanted “vibrations” of alternating current. Obviously there are physics that make such an approach work, but that does not lead me to think that the “character as a whole” of a corresponding claim would be directed to excluded subject matter. With nothing more, I would expect such a claim to be obvious in the year 2018, but it’s more difficult to think of it as being wholly directed to excluded subject matter.
Nonetheless, the court concluded, “Looking at the ‘focus’ of the claims and their ‘character as a whole,’ Neapco has met its burden at step one.”
Step Two of Analysis
As I read further in the opinion, the step two analysis, looking to whether the claim elements identify any “inventive concept” over the law of nature or mathematical algorithm, also included a caution to consider the claims as a whole. Here, the court pointed to the patent itself as explaining that inserting a liner in a propshaft was well known in the prior art. The court again sided with Neapco in the view that controlling characteristics of the liner is inherent in the design process and a “noise, vibration and harshness (NVH) engineer” would consider the applicable laws of nature when designing such liners to address vibrations.
To my eye, it appears that there is recitation of such tuning as an inventive concept here, even though it may well be that such recitation is misplaced in that it is obvious to one of skill in the art. In other words, as we have seen before, it may well be that such a claim is invalid, but the more reasonable path to that result is via Section 102/103 analysis than subject matter eligibility. Traditional Section 103 analysis provides certain safeguards against hindsight (e.g., secondary considerations of non-obviousness as detailed by the Supreme Court in Graham v. John Deere) that are not typically applied in Section 101 decisions; those safeguards were not applied here either.
Behind the Sea Change of Bilski, Alice, Mayo
I have not spent too much time trying to determine whether the court here accurately applied the tests mandated by Alice, Mayo and their progeny. My discomfort comes from the specific result (that the claims are not, as a whole directed to patent eligible subject matter) more than the general result (patent invalidity) or the path to it. At bottom, all inventions work because of the physics, math, etc. governing their structure and operation. The claims here seem directed, as a whole, to the manufacture of automotive drive shafts. It seems certain to me that even a few years ago, it would have been unthinkable to challenge such a claim on Section 101 grounds. Was the patent bar really that disconnected from the statute for the past century? Is the sea change brought on by Bilski, Alice and Mayo based not on difficult questions brought on by the nature of information age inventions but instead on a longstanding, fundamental misunderstanding of the statutory statement of what our patent system is intended to protect?
It is for these reasons that I’m struggling with the AAM / Neapco decision, and I would be happy to hear others’ opinions on this.
Counterpoint (by Greg Hopewell):
This case did not sit so unwell with me, and to my eye seemed a natural re-considering of more “mechanical” inventions, now that the machine or transformation test is just a clue. These difficult questions have been eternally presented by the patent system, and were not newly created by Bilski, Alice or Mayo or even the “information age” itself. The machine or transformation test neatly avoided (papered over?) these questions which have existed for centuries in inventions that had physical form. And, worse, because of its relative ease to apply, it created the impression that any physical components (or effect thereon) meant eligibility. An additional problem is that because of the machine or transformation test, a large number of now-challengable “information age” patents were issued that, under the microscope, essentially recite the performance of an age-old financial concept (e.g., hedging or intermediary settlement) or obtaining a desired abstract result by a computer. In my opinion, this biases the pool of challengeable patents, but does not necessarily mean that these “information age” patents are inherently more suspect with respect to eligibility. More on these theses in future posts.
1850s — O’Reilly v. Morse & Le Roy v. Tatham
Older cases do not always use the same terms of today, but concepts will ring familiar. O’Reilly v. Morse in 1853 rejected a general broad claim to printing characters as a result of electric or galvanic current. Just the year before, and less famously, the U.S. Supreme Court addressed an invention for “making pipes and tubes from metallic substances” in Le Roy vs. Tatham (1852). Even then, the court addressed distinctions between a principle and an invention for its application:
- The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. at 174-175.
- A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. at 175.
- A patent for leaden pipes would not be good, as it would be for an effect, and would, consequently, prohibit all other persons from using the same article, however manufactured. Leaden pipes are the same, the metal being in no respect different. Any difference in form and strength must arise from the mode of manufacturing the pipes. The new property in the metal claimed to have been discovered by the patentees, belongs to the process of manufacture, and not to the thing made. at 176.
The dissent, which would have found the claims eligible, cited several even earlier cases from England grappling with our now familiar issues. One example citation is to “Webster’s Pat. Cases,” to wit:
"You cannot take out a patent for a principle; you may take out a patent for a principle coupled with the mode of carrying the principle into effect. But then, you must start with having invented some mode of carrying the principle into effect...."
So—no patenting a principle alone, but yes if coupled with a mode of carrying it out? That isn’t sounding so different from the recent Federal Circuit cases cautioning against result-oriented claiming.[1] See also Tilghman v. Proctor (1881), citing Morse: “It seems to us that this clear and exact summary of the law affords the key to almost every case that can arise. ‘Whoever discovers that a certain useful result will be produced in any art by the use of certain means is entitled to a patent for it, provided he specifies the means.’”[2]
1939 — Mackay Radio
Likewise, almost 90 years later, but still nearly 80 years ago, Mackay Radio (1939) addressed a claim to the application of a scientific truth relationship related to radio wire lengths, called the “Abraham formula.” Though the court expressly declined to decide validity, the U.S. Supreme Court emphasized that “While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” However, the Court’s evaluation of validity more closely sounded like obviousness, rather than eligibility: “But we do not stop to solve the problem whether it was more than the skill of the art to combine the teachings of Abraham <with others>… We assume … that this advance was invention even though it was achieved by the logical application of a known scientific law to a familiar type of antenna.”
It’s possible the Court today, under Mayo, would not be shy in finding Mackay’s claim to be an ineligible, “conventional” application of the Abraham formula.
So, what to make of this decision in American Axle? Do the claim limitations teach just a “result” (or the “principle” that Hooke’s law can be optimized) or do the limitations provide a particular means of doing so. Tilghman’s key may still apply – “a certain useful result … by the use of certain means … provided he specifies the means.”
Here, the useful result is to attenuate more than one kind of vibration. But the means is just to “tune” the liner.
Though it initially seems like a red herring (or at least an odd direction to take the case), it appears the Court turned to Hooke’s law to determine if there were something inventive in a tuning process itself. Hooke’s law mattered because the court agreed that “in order to ‘tune’ the liner, one merely applies Hooke’s law and then measures the amount of damping.” So, to the district court, to the extent the invention could have provided more than just a result, the means of achieving the result (not directly recited in the claim) was itself application of a physics law and was not a contribution by the inventor. Although not directly recited in the claim, the analysis with Hooke’s law confirms that a process for “tuning” is just claiming the attenuating result itself, rather than some particular process of achieving it.
Why Analytical Scope Matters
But, to the broader sentiments, I agree with Stuart—all inventions do work because of underlying physics, math and ‘abstract ideas.’ And, straightforward application of what a claim is “directed to” would sure seem to suggest these claims are directed to manufacturing automotive drive shafts—a concrete physical part made better by attenuated vibration. A shift in analytical scope might also change the outcome. As analyzed by the district court, the tuning step itself just applied Hooke’s law to a prior art liner design. But why start there? The analysis could have started with the general problem of reducing vibration in a propshaft. With respect to that result, there is a specific means of achieving it: tuning the liner to attenuate more than one kind of vibration. As the district court noted, prior art techniques attenuated vibrations with “weights and liners” but prior art liners only attenuated shell mode vibrations, and not in combination with bending or torsion mode vibrations.
It doesn’t appear to be enough for the claims to recite or result in a machine or physical thing—as a broad understanding of “directed to” might suggest. Instead, “directed to” appears to have a narrower meaning: What is the claimed invention directed to? At the risk of improperly dissecting the claim, this focuses the inquiry on the inventive advance represented in and as articulated by the claim, rather than on broad subject matter categories like “car drivetrains” “computer processors” “personalized cancer treatments” or “financial systems.” Accounting for recent decisions, Tilghman’s key might be adjusted: What is the improved result, and what specific, unconventional means did you invent for achieving it?
[1] Other recent concepts sound familiar, too. In a paper-making case, the U.S. Supreme Court entertained whether “the alleged invention covers only a matter of degree in pitch” and whether it therefore “cannot be the subject of a patent.” Eibel Process Co. v. Minnesota & Ontario Paper Co. (1923). Eligible, in part because “[t]he invention was not the mere use of a high or substantial pitch to remedy a known source of trouble. It was the discovery of the source not before known and the application of the remedy…” Echoing today’s considerations of “conventional” arrangements, what initially was a question of whether the change in pitch “could be the subject of a patent” was analyzed with respect to what was known.
[2] The identification of underlying scientific principle and its application in Tilghman is refreshingly direct: “Let us apply these principles to the present case. In the first place, the claim of the patent is not for a mere principle. The chemical principle or scientific fact upon which it is founded is, that the elements of neutral fat require to be severally united with an atomic equivalent of water in order to separate from each other and become free. This chemical fact was not discovered by Tilghman. He only claims to have invented a particular mode of bringing about the desired chemical union between the fatty elements and water. He does not claim every mode of accomplishing this result. He does not claim the lime-saponification process, nor the sulphuric-acid distillation process, and if, as contended, the result was accomplished by Dubrunfaut, Wilson, and Scharling, by means of steam distillation, he does not claim that process. He only claims the process of subjecting to a high degree of heat a mixture continually kept up, of nearly equal quantities of fat and water in a convenient vessel strong enough to resist the effort of the mixture to convert itself into steam.”
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