Keys to Eligibility: Preemption, History, and Levels of Abstraction – Patently-O

by Dennis Crouch

The US Solicitor General has provided her inputarguing that the Supreme Court should grant American Axles petition and decide whether the claimed method of manufacturing a driveshaft is patent eligible. American Axle & Mfg., Inc. v. Neapco Holdings LLC, Docket No. 20-891 (Supreme Court 2022). [USDOJ Brief]

A decade ago, the Supreme Court decidedMayo v. Prometheus, 566 U.S. 66 (2012). Mayo broadened the scope of excluded laws of nature and established a two-step test for judging eligibility. The court followed-up two years later with Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), extending Mayos holdings to abstract ideas and computer implemented inventions. In the wake of these decisions, the USPTO substantially changed its practices as did the U.S. Courts. Thousands of claims have been denied, cancelled, or invalidated, but those involved still experience substantial uncertainty about the proper application of Section 101. In American Axle, the Federal Circuit reluctantly took the law a further step by finding abstract a method of manufacturing and calibrating a mechanical structure. The USDOJ concludes that the claim at issue here is a paradigmatic examples of the arts or processes that may receive patent protection if other statutory criteria are satisfied.

American Axles US Patent No. 7,774,911 claims a method of manufacturing an automobile driveshaft that operates with reduced vibration & noise. The claims are particular directed to the use of a shaft liner that has been tuned to reduces multiple vibration modes (bending and shell mode vibrations). Prior technology included a shaft liner, but not one tuned to multiple vibration modes. So, the novel feature here is that the liner has been tuned to both resistively absorb shell mode vibrations and reactively absorb bending mode vibrations.

22. tuning a mass and a stiffness of at least one liner wherein the 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.

The crux of the problem found by the Federal Circuit is that these novel features are claimed functionallyat a fairly high level of abstraction. Rather than claiming the actual steps of tuning, the patentee has endeavored to claim all methods that achieve the claimed result. In some ways, this is like the claimed process in Diehr, but instead of using the Arrhenius equation the inventors here just use an unstated algorithm.

Broad claims like these have been typically dealt-with under the disclosure requirementswritten description and enablement; as well as obviousness. Under those doctrines, broad functional claims are permitted so long as the disclosure is sufficient and the prior art allows. By shifting to eligibility the defense was able cut-off the broad claims straight away. And importantly from a procedure perspective, was able to achieve this without worrying about the strictures of evidence or fact finding because eligibility is a question of law that rarely involves any underlying factual findings.

Substantial Uncertainty: The DOJ brief focuses on uncertainty created by Mayo/Alice framework, both at Step 1 and Step 2.

Clarification of both steps is especially important, both because a courts step-two analysis often finally resolves the determination as to patenteligibility, and because the nature of the initial step-one screen logically depends in part on the inquiry that courts will apply at step two.

DOJ Brief. The original petitioner brief focused on Alice Step 1 asking what is the appropriate standard for determining whether a patent claim is directed to a patent-ineligible concept. The DOJ suggested that the court focus on both steps and ask more generally is it patent eligible?

Preemption: An overarching theme in patent eligibility jurisprudence has been the potential of handing-over exclusive rights to fundamental aspects of human life and building blocks human ingenuity. Avoiding improper preemption is the key goal. But, the Alice/Mayo test does not use preemption in its decision process, and the Federal Circuit has found evidence of no preemption irrelevant to eligibility. Rather, as the DOJ implies, preemption considerations should be fundamental to the eligibility analysis.

Levels of Abstraction: The role of patent attorneys has historically been to help inventors abstract-out their inventions to ensure that the claims cover sufficiently valuable scope. What we know is that some abstraction is OK, too much is not. The DOJ suggests that it would be helpful to have a bit more guidance.

Historic Exceptions: The court wrote in Bilski that these exceptions are historic and based upon longstanding precedent. The suggestion is that they should be guided by the old precedent and not expanded further without congressional input.

Despite my earlier focus on results-based claiming, the DOJ Brief explains that the claims here go far enough in reciting:

a specific sequence of steps taking a hollow shaft; tuning the mass and stiffness of a liner, which the district court construed to mean controlling the liners mass and stiffness to match the relevant frequency or frequencies of vibration of the shaft; and inserting the liner into the shaft, whereupon the liner acts as an absorber of two kinds of vibrations.

DOJ Brief. These sequence of steps make the case look much more like Diamond v. Diehr than OReilly v. Morse.

Regarding Alice Step 2, the DOJ argues that conventional claim elements should not be disregarded. Rather, the focus should continue to be on the claimed invention as a whole.

The petition asks a second question whether eligibility is a question of law. The DOJ suggests that this is a secondary question that can only be addressed once the general doctrine is established. Answering the second question presented thus would be difficult while uncertainty about the substance of the Section 101 inquiry persists.

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Keys to Eligibility: Preemption, History, and Levels of Abstraction - Patently-O