No Harm, No Stay: Petition for Certiorari Not Enough to Stop Mandate

AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS LLC

Before Dyk, Moore, and Taranto. Appeal from the United States District Court for the District of Delaware.

American Axle & Manufacturing, Inc. (AAM) sued Neapco Holdings LLC (Neapco) for infringement of AAM’s patent. The district court granted summary judgment of invalidity under 35 U.S.C. § 101, and AAM appealed. The Federal Circuit affirmed with respect to some patent claims and remanded with respect to the others, and AAM petitioned the Supreme Court for certiorari. AAM also moved to stay issuance of the Federal Circuit’s mandate in view of its pending petition.

The Federal Circuit denied AAM’s motion. In its decision, the Court adopted the Supreme Court’s three prong test for a stay of mandate, which require the applicant to show “(1) a reasonable probability that four Justices will consider the issue sufficiently meritorious to grant certiorari; (2) a fair prospect that a majority of the Court will vote to reverse the judgment below; and (3) a likelihood that irreparable harm will result from the denial of a stay.” The Court limited its inquiry to the third prong regarding likelihood of irreparable harm. It held that neither the potential recall of the Federal Circuit’s mandate nor the costs of continued litigation of the remanded claims established irreparable injury. Finding that prong was not satisfied, the Court denied AAM’s motion to stay issuance of the mandate.

Judge Moore concurred in the decision to elaborate on application of the three-prong test, and adopted the resulting denial of a stay of the mandate. Her opinion reiterated the Federal Circuit’s request for guidance in § 101 jurisprudence and underscored the need for the Supreme Court to grant certiorari in a § 101 case to resolve the Federal Circuit’s “bitter[] divide[]” in the application of § 101.

Editor: Paul Stewart