An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-ineligible claims directed to tuning liners of driveline propshafts to damp vibrations. In American Axle & Mfrg., Inc. v. Neapco Holdings LLC, No. 2018-1763 (Fed. Cir. Oct. 3, 2019) (precedential), the majority, Judge Dyk, joined by Judge Taranto, affirmed a summary judgment that claims of U.S. Patent No, 7,774,911 (“Method for Attenuating Driveline Vibrations”) are invalid under 35 U.S.C. § 101 as directed to a law of nature. The majority found that the claimed liner tuning of “merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so.” In dissent, Judge Moore identified numerous claimed inventive concepts beyond natural law, and castigated the majority for subsuming the question of enablement under 35 U.S.C. § 112 into the patent-eligibility analysis of 35 U.S.C. § 101.
Judge Dyk’s opinion identified independent claims 1 and 22 of the ’911 patent as representative. Those claims are reproduced below:
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 configured 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.
* * *
22. 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.
Notably, Judge Moore disagreed that these claims were properly representative for the § 101 inquiry, arguing that dependent claims were improperly ignored. For example, claim 31, depending indirectly from claim 22, limited the liner to a “material selected from a group consisting of cardboard, plastic resin, carbon fiber, fiberglass, metal and combinations thereof.”
Hooke’s law, as any high school physics student knows, states that the force to compress or extend a material is directly proportional to the distance of extension or compression. The claims were directed to adjusting stiffness and mass – variables implicated by Hooke’s law – to configure damping.
The patent owner argued that the claims required “more than simple application of Hooke’s Law.” This argument failed because “the solution to these desired results is not claimed in the patent.” As known in the prior art, an “extensive computer modelling and experimental modal analysis” may have been needed. But the specification merely provided a non-exclusive list of variables that could be used in tuning, and “the claims do not instruct how the variables would need to be changed” in tuning. Thus, the ’911 patent claimed a natural law, and, diving into venerable U.S. Supreme Court precedent, Judge Dyk stated that
[t]he claiming of a natural law runs headlong into the very problem repeatedly identified by the Supreme Court in its cases shaping our eligibility analysis. See Mayo, 566 U.S. at 71–73; Parker v. Flook, 437 U.S. 584, 590–95 (1978); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94–101 (1939); O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112–17 (1854). As the Supreme Court stated in Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174–75 (1853), “[a] patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever.” The same approach is embodied by this court’s case law.
This distinction between results and means is funda-mental to the step 1 eligibility analysis, including in law-of-nature cases, not just abstract-idea cases. See Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“We recognize, of course, that when a claim recites a mathematical formula (or sci-entific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protec-tion for that formula in the abstract.” (emphasis added)).
After finding the claims directed to a natural law under Alice/Mayo step 1, the majority easily found no inventive concept because arguments that the claims were not routine or conventional
essentially amount to an assertion that prior to the ’911 patent, liners had never been tuned to damp propshaft vibrations and, more specifically, liners had not been used to damp two different vibration modes simultaneously. This amounts to no more than an elaborated articulation of its reasons as to why the claims are not directed to a natural law (reasons we have already rejected).
Judge Moore’s Dissent
Judge Moore, in dissent, accused the majority of improperly collapsing the two-part Mayo/Alice patent-eligibility test to “a single inquiry: If the claims are directed to a law of nature (even if the court cannot articulate the precise law of nature) then the claims are ineligible and all evidence of non-conventionality will be disregarded or just plain ignored.” The majority opinion, Judge Moore stated had “nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled.” Judge Moore as one point stated that § 101 law was “monstrous” enough without the majority’s present decision which, she is clearly concerned, will swallow patent law altogether”
We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.
Judge Moore listed the “at least” six inventive concepts she said were found in the claims. She then argued that these limitations were “structural,” and that
The majority’s true concern with these claims is not that they are directed to Hooke’s Law (because this is clearly a much more complex system not limited to varying mass and stiffness), but rather the patentee has not claimed precisely how to tune a liner to dampen both bending and shell mode vibrations.
Lessons for Practice
Some see this case as an expansion of § 101 patent-eligibility law to new technical areas, or simply decry it as an expansion of § 101 patent-eligibility law. As a practical matter, I find it hard to disagree with Judge Moore that the real problem here is with broad functional claiming, i.e., claiming results or what is being done without claiming (or adequately describing) how it is done. I’m not skilled in the art; I can’t say whether the claims here were enabled or not. But if the ’911 patent claims were not enabled, surely, in hindsight they could have been (in fairness, it should be noted that the ’911 patent application was filed in 2006, a different legal age). Further, more implementation detail would have provided more distinction from the prior art, helping not just overcome anticipation or obviousness arguments, but also helping patent-eligibility arguments. And that is the true lesson here: whether you are worried about adequate description and support under § 112, or patent-eligibility under § 101 – or for that matter, distinguishing from prior art under §§ 102 and 103 – the more implementation detail you provide in you specification, and claim, the stronger your patent will be.