The “Validity Goulash” of American Axle

In American Axle & Manufacturing v. Neapco Holdings¹, the Federal Circuit was tasked with determining whether claims directed to a method of manufacturing that utilize at least one, and possible other, natural laws, are eligible for patenting under 35 U.S.C. § 101. As detailed in the dissent by Judge Moore, the Federal Circuit appears to do an excellent job of outlining why the claims should be invalid for lack of enablement, but just doesn’t seem to want to admit it.

American Axle sued Neapco for infringement of U.S. Patent No. 7,774,911 (“the ‘911 patent”), which is directed to a method of manufacturing driveline propeller shafts for use in automotive vehicles to transmit rotary power in a driveline². Claims 1 and 22 were determined to be representative:

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 con-figured 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
2. 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.³

The District Court found that the claims as a whole were directed to “laws of nature: Hooke’s law and friction damping” and that the rest of the claims simply instructed one to “’apply Hooke’s law to achieve the desired result . . . without provid[ing] [a] particular means of how to craft the liner and propshaft in order to do so.”⁴ Thus, the District Court held the claims to be ineligible under 35 U.S.C. § 101.⁵

In its review of the District Court’s determination, the Federal Circuit outlined numerous reasons for upholding the lower court’s decision. However, as discussed in detail in Judge Moore’s dissent, nearly all of the court’s explanations “ha[d] nothing to do with a natural law and its preemption and everything to do with the concern that the claims are not enabled.”⁶

Specifically, the Federal Circuit noted the following for finding that the claims are simply directed to the natural law(s):

Most significantly, the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations.⁷.
. . . .
This case might well be significantly different, if, for example, specific FEA models were included in the claims. But, the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc trial-and-error process of changing the characteristics of a liner until a desired result is achieved.⁸
. . . .
What is missing is any physical structure or steps for achieving the claimed result of damping two different types of vibrations. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work. ⁹

Each of these specific points echoes the concepts surrounding the requirements that the claims of a patent must be adequately enabled by the specification. As set forth in the M.P.E.P.:

Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? ¹⁰

Thus, the reasoning behind the Federal Circuit’s decision that the claims are not eligible for patenting appears to be based on the fact that the majority did not feel that the claimed invention “instructed how” to achieve the claimed invention without the use of a “trial-and-error process” using “whatever structures or steps happen to work.” This logic seems to directly mirror holdings in enablement case law, for example, findings that “[a]n adequate disclosure of a device may require details of how complex components are constructed and perform the desired function.”¹¹

Judge Moore’s dissent argues that the court’s holding of “the failure of the claims to designate how to achieve the desired results is exclusively an issue of enablement.” However, the majority dismisses the critique. “Enablement is concerned with whether the ‘the specification of a patent… teach[es] those skilled in the art how to make and use the full scope of the claimed invention. . . . Section 101 is concerned with whether the claims at issue recite a natural law, not whether the specification has adequately described how to make and use the concretely claimed structures and steps.”¹² While the majority may have framed its argument in terms of the “claims” failing to recite required steps or structures, the court also conceded that the same information was missing from the specification:

Neither the claims nor the specification describes how to achieve such tuning. The specification also discloses a solitary example describing the structure of a tuned liner, but does not discuss the process by which that liner was tuned. ’911 patent, col. 8, ll. 4–23.¹³

Thus, as detailed by Judge Moore in the dissent, the majority appears to have “expand[ed] § 101 well beyond its statutory gate-keeping function,”¹⁴ and instead created a precedent where the patent eligibility standard is used to “invalidate claims under standards identical to those clearly articulated”¹⁵ in the enablement requirement of 35 U.S.C. 112, first paragraph. It remains to be seen if some combination of the Supreme Court and/or Congress can provide clarity on Section 101; otherwise the “validity goulash” ¹⁶ may continue to get thicker and more convoluted as different sections of the patent statue are entangled.