Natural Law and Nothing More
Before Dyk, Moore, and Taranto. Appeal from the District Court for the District of Delaware.
Summary: Claims directed to a law of nature, without more, may not be patent eligible.
American Axle & Manufacturing (“AAM”) sued Neapco Holding, LLC for patent infringement for AAM’s patents for improved prop shafts. Both parties filed cross motions for summary judgment on the patent eligibility of independent claims 1 and 22. In evaluating the motions, the district court found that AAM’s claims merely apply Hooke’s Law, an algorithm that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object subsequently vibrates. The District Court therefore held that the claims were not patent eligible under § 101 and granted Neapco’s motion for summary judgment.
AAM appealed the District Court’s decision that its claims were ineligible. On review, the Federal Circuit affirmed the district court as to Claim 22, but vacated and remanded the decision as to Claim 1. The Federal Circuit found that Claim 22 defines a goal and achieves that goal through application of a natural law. The Federal Circuit rejected AAM’s argument that it invented an improved method of tuning because neither established processes nor improved processes for implementing the underlying natural law were claimed. The Federal Circuit concluded in its Alice step 2 analysis that nothing in Claim 22 qualifies as an “inventive concept,” because the stated “inventive concept” is nothing more than an assertion that the desired results are an advance. As for Claim 1, the Federal Circuit found that the Claim encompasses tuning variables other than those in Hooke’s Law. In addition, Claim 1 requires the additional step of positioning the components in order to effect the claimed method. As a result, the Federal Circuit could not conclude that the Claim was merely directed to Hooke’s Law, and nothing more, and vacated and remanded the decision on Claim 1 for the District Court to evaluate this alternative eligibility theory.
Judge Moore dissented arguing that the Federal Court’s analysis collapses the two-part Alice/Mayo test into a single step, and expands the exclusionary power of § 101 well beyond what it was intended to do. The Dissent contends that AAM’s claims were not directed to natural law, but rather to a method of manufacturing a drive shaft that merely involves use of a natural law. Judge Moore also argues that the majority created a new test—the nothing more test—for claims directed to natural law. Finally, Judge Moore argues that even if the majority’s analysis of Alice step 1 was correct, Claim 22 recites a number of inventive concepts articulated in the claims themselves and should have been found patent eligible in step 2 of the analysis.
Editor: Paul Stewart