Result-Oriented Claims Based on Natural Laws Held Invalid Under § 101
AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC
Before Dyk, Moore, Taranto. Appeal from the United States District Court for the District of Delaware.
Summary: Mechanical method claims involving tuning automotive propshafts to dampen vibrations were directed to natural laws and patent ineligible under § 101.
American Axle & Manufacturing (“AAM”) sued Neapco for patent infringement. The patent at issue covered methods of manufacturing driveline propeller shafts (“propshafts”) to dampen multiple types of vibration. For example, a representative independent claim required tuning a mass and stiffness of a propshaft liner to dampen both “shell mode” and “bending mode” vibrations. The parties filed cross-motions for summary judgment on the eligibility of the asserted claims under 35 U.S.C. § 101. The district court granted summary judgment of ineligibility, finding the claims directed to Hooke’s law and friction damping principles—laws of nature. AAM appealed.
The Federal Circuit agreed that the challenged claims were ineligible. Under Mayo/Alice step 1, AAM argued that the process of tuning a liner to achieve the claimed vibration dampening was too complex to be adequately described by Hooke’s law. AAM also argued that liners had not previously been used to dampen bending mode vibrations. The Federal Circuit found that the claims recited desired results but not the specific tuning process used to achieve those results. Because the claims required no more than applying Hooke’s law (and possibly other natural laws) by trial and error to achieve the desired results, the Federal Circuit found the claims directed to a patent ineligible natural law. Turning to Mayo/Alice step 2, the Federal Circuit found that AAM’s alleged inventive concepts amounted to nothing significantly more than the desired results addressed at step 1. Even if those desired results were “new and unconventional,” the claims recited no specific way of achieving them other than “a conventional, unbounded trial-and-error process.” Thus, the Federal Circuit affirmed.
Judge Moore dissented, stating that she was “deeply troubled by the majority’s disregard for the second part of the Alice/Mayo test, its fact finding on appeal and its repeated misrepresentation of the record.”
Editor: Paul Stewart