Federal Circuit Holds Making Liners for Driveshafts Doesn’t Practically Apply Laws of Nature
The trend in the U.S. for courts to invalidate growing numbers of patents, particularly software, business method, and medical diagnostic patents, as being directed to unpatentable abstract ideas, laws of nature, and natural phenomena has found its way to mechanical devices. In Am. Axle & Mfg. v. Neapco Holdings LLC, No. 2018-1763, 2019 U.S. App. LEXIS 29655 (Fed. Cir. Oct. 3, 2019), the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s grant of a motion for summary judgment, agreeing that the methods of making driveshafts in the asserted claims were directed to a natural law without practically applying that law. The claims presented methods of making driveshafts including liners configured to dampen multiple kinds of vibrations (along the shaft, twisting, and around the shaft) simultaneously. The patent itself acknowledged that the kinds of vibrations experienced by driveshafts were understood in the art, and liners had previously been used to dampen vibration for a given type of vibration. The patent owner maintained that simultaneously dampening multiple types of vibration represented a significant advance in the field.
The Federal Circuit criticized the patent specification for lacking description of how to specifically achieve tuning that would dampen multiple types of vibration, with only one illustrative liner disclosed in detail on no discussion of the process by which that liner was tuned. The panel held that the claims were directed to tuning liners utilizing Hooke’s law describing the relationship between the mass and stiffness of an object and the frequency at which the object naturally vibrates. It emphasized that the patent text, as well as the expert testimony from the lower court, acknowledged that the problem of vibrating driveshafts as well as certain techniques for dampening that vibration were well-known. The patentee argued that tuning a liner to dampen more than one type of vibration at a time was complex, requiring more than a straightforward application of Hooke’s law. Dismissing this argument, the Court stated that such complexity was not reflected in the asserted claims or the patent specification. The claims only recited tuning the liner to attenuate at least two types of vibration, and neither the claims nor the specification described in detail how to achieve that kind of tuning. At most, this amounted to a general instruction to use Hooke’s law (and other, unstated natural laws) to engage in an ad hoc, trial-and-error process of changing a liner’s characteristics to achieve a stated goal. Having made that determination, the majority opinion from the Federal Circuit concluded there was nothing in the claims that amounted to significantly more than the law of nature.
Judge Moore wrote a dissent, arguing that the majority’s opinion stretched the law on subject-matter eligibility beyond its bounds and other standards were better-suited to address the deficiencies with this patent. She characterized the majority’s concerns with the patent’s claims and specification as primarily being that they do not enable those skilled in the art to make and use the invention, which is a separate requirement from subject-matter eligibility. By shoehorning those concerns into a subject-matter eligibility analysis, the majority was attempting to turn that standard into a panacea for all concerns over an invention’s patentability. Judge Moore emphasized that several of the dependent claims presented specific materials, structures, and positions for the liners that would affect their dampening characteristics. Even if those claims relied on natural laws, limiting their scope to specific configurations for liners that produced dampening of multiple types of vibration in driveshafts represented a practical application of those laws. The patent owner had repeatedly emphasized, and the accused infringer had admitted, that liners had never been used to reduce bending mode vibrations. Judge Moore would have found at least certain dependent claims to be patent-eligible because they presented a concrete, unconventional configuration resulting in beneficial functionality unrealized by the prior art.
James C. Watson, Registered Patent Lawyer
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