Propeller Shafts Are Laws of Nature…?
Jerrit Yang is a J.D. candidate, 2021 at NYU School of Law.
In
October 2019, the Federal Circuit added to the very confusing mess of § 101 of
the U.S. Patent Law system. Under 35 U.S.C. § 101, an
inventor may obtain a patent on “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” The judiciary has created certain exceptions to patentability,
however, for “laws of nature, natural phenomena, and abstract ideas.” But
doesn’t nearly every invention at some level encompass a law of nature, natural
phenomena, or abstract idea? Yes and no. Following the seminal decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,[1]
the Supreme Court set out a two-step test to determine whether an invention is
patent eligible: (1) is the claim directed to a law of nature, natural
phenomenon, or abstract idea, and (2) if so, does the claim embody an element
or combination of elements that is “sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the ineligible
concept itself” (aka, does it have an “inventive concept”)? The Federal Circuit has since used this test to
invalidate a variety of inventions in the medical diagnostics, chemical, and
software fields. Now, it seems that § 101 is clawing its way towards another
unsuspecting industry, mechanical devices.
In
American Axle & Manufacturing, Inc. v. Neapco Holdings
LLC.,[2]
the Federal Circuit ruled that American Axle’s United States Patent No. 7,774, 911 was invalid for covering unpatentable
subject matter. The claims were directed towards a method of manufacturing a
vehicle driveline propeller shaft with a liner capable of reducing two types of
vibrations simultaneously. According to the patent, propeller shafts – which
help to transmit rotary power in a vehicle drive line (think the system of
axles, shafts, and gears which function to turn the wheels)—are typically subject
to three types of vibrations which cause the shaft to make a lot of noise.
These three types of vibration are: (1) “bending mode vibration”—wherein energy
is transmitted longitudinally along the shaft and causes the shaft to bend at
one or more locations; (2) “torsion
mode vibration”—wherein energy is transmitted tangentially through the
shaft and causes the shaft to twist; and (3) “shell mode vibration”—wherein a
standing wave is transmitted circumferentially about the shaft and causes the
cross-section of the shaft to deflect or bend along one or more axes. Though it
was previously known that changing certain properties of the liner (e.g., mass,
stiffness, etc.) could result in reducing either bending, torsion, or shell
mode vibration, American Axle claimed that tuning the liner to reduce bending
and shell mode vibrations simultaneously constituted a new invention. The
District Court and Federal Circuit majority begged to differ, however.
The
Federal Circuit affirmed the District Court’s finding under Mayo step 1,
that the claims of the ’911 patent were directed to the utilization of Hooke’s
law and other natural laws/phenomena (such as friction damping). Under step 2,
the majority reasoned that there was no inventive concept, because the ’911
claims did not disclose “how target frequencies are determined” or “how liners
are tuned to attenuate two different vibration modes simultaneously”; in other
words, “[w]hat is missing is any physical structure or steps for achieving the
claimed result of damping two different types of vibrations.”[3]
For support, the majority mentions the Supreme Court cases, Parker v. Flook[4]
and Diamond v. Diehr[5].
In Parker v. Flook, the invention, directed to a method of using a
formula to calculate and update an alarm limit in a catalytic conversion
process, was found ineligible because it lacked an inventive application (use
of alarm limits to trigger alarms, repeated recalculation and readjustment, and
use of computers for automatic monitoring were well known). The Flook
court also found that merely limiting the solution to a specific purpose did
not make it patent eligible. In Diamond
v. Diehr, the claims, which were directed to a process for
manufacturing rubber utilizing the Arrhenius equation to recalculate and set an
alarm limit to automatically open a rubber mold, were found patent eligible and
the Court reaffirmed the idea that more than “token postsolution activity” is
required.[6]
The majority noted that the present claims are essentially a “direction to
engage in a conventional, unbounded trial-and-error process” and, like the Flook
claims, “amount to no more than conventional pre- and post-solution activity”
or limiting the use of the natural law to a particular process.[7]
In
a strong dissent, Judge Moore wrote that the majority was not actually
concerned with a natural law or its preemption, but instead was conflating §
101 with § 112 enablement. Judge Moore notes that the majority could “not even
identify the precise natural law” which the claims were directed to (majority
described as “Hooke’s law and possibly other natural laws”)[8],
and that the ’911 patent in fact disclosed several inventive concepts (liners
not having previously been used to attenuate bending mode vibration, concrete
examples of tuned liners, etc.). Judge
Moore’s dissent is a good example of how many view § 101 as largely serving a
gatekeeper function and believe that supposed § 101 issues can often be
resolved using other areas of patent law, e.g., § 102, § 103, and/ or § 112.
Looking
at the opinions of this case, it is apparent that there is still no uniform
methodology for § 101 analysis. Is the majority’s issue with the claims lacking
“how” to determine target frequencies or tune the liners really masking a
concern with the breadth of the claims (aka preemption)? It is still unclear
whether courts factor preemption into step 1 or step 2 of the Mayo test.
Could this have been solved under §112 enablement? For example, if § 101 is
restricted to merely a gatekeeping function for claims which would preempt use
of the natural law, abstract idea, or natural phenomenon, would an enablement
analysis using “undue experimentation”
and the Wands factors
provide cleaner and more predictable guidance to inventors and patent
attorneys? Lots of questions still remain in the § 101 discussion, and it is
unlikely they will be answered soon as the Supreme Court has accepted no cases on
it for its 2020 session, and recent § 101 legislative proposals have been put
on hold. For the moment, maybe all we can take from American Axle is
that mechanical devices are not safe from § 101, and it may be best to avoid
broadly sweeping, results-oriented claiming.
[1]
566 U.S. 66 (2012).
[2]
939 F.3d 1355 (2019).
[3] Id.
at 1366-67.
[4]
437 U.S. 584 (1978).
[5]
450 U.S. 175 (1981).
[6] Id.
at 191-92.
[7]
939 F.3d, at 1367-68.
[8] Id.
at 1369 (quoting Maj. at 1366).
