On October 23, 2020, in a remarkable order demonstrating how a “bitterly divided” Federal Circuit views post-Alice patent eligibility jurisprudence, the court denied the motion of American Axle & Manufacturing, Inc. (“AAM”) to stay issuance of the mandate pending a writ of certiorari to the Supreme Court.1 The order followed an equally divided 6-6 panel split, where the Federal Circuit had denied a request for rehearing en banc “and, in doing so, detailed its further divided views.” –Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 966 F.3d 1347, 1348 (Fed. Cir. 2020) (prompting two opinions concurring in the denial and three opinions dissenting from the denial).2 Judge Moore penned a vigorous concurrence in which she highlighted that the judicial exceptions to 35 U.S.C. § 101 are not being consistently applied, “slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability.”3
I. Factual Background
American Axle & Manufacturing, Inc. (“AAM”) owns U.S. Patent No. 7,774,911 (“the ’911 patent”), which is entitled –Method for Attenuating Driveline Vibrations.4 The ’911 patent is directed to a method for manufacturing driveline propeller shafts with liners that are designed to “attenuate[e] … vibrations transmitted through a shaft assembly.”5 Driveline propeller shafts can vibrate in three modes, bending mode, torsion mode, and shell mode, and the ’911 patent specification states that prior art methods had used weight, dampers, and hollow liners to individually attenuate each of the three different propeller shaft vibration modes.6 However, these methods were not suitable to attenuate two vibration modes simultaneously, which would in theory allow the invention to meet a need in the art.7 At issue was whether the ’911 patent claimed an ineligible application of a natural law (Hooke’s Law) under 35 U.S.C. § 101.
II. Procedural Posture
AAM sued Neapco LLC and Neapco Drivelines LLC (collectively, “Neapco”) in the Delaware District Court alleging infringement of the asserted claims8 of the‘911 patent.9 Both parties filed cross motions seeking summary judgment regarding the eligibility of the asserted claims under 35 U.S.C. § 101.10 Ultimately, the district court granted summary judgment in favor of Neapco, holding that the asserted claims of the ’911 patent were ineligible under 35 U.S.C. § 101.11 On appeal, the Federal Circuit upheld the district court’s judgment. In reaching this conclusion, the Federal Circuit utilized the two-step analysis provided by –Mayo12 and –Alice13 .14 Under both steps 1 and 2 of the –Mayo/Alice test, the Federal Circuit concluded that “independent claim 22 of the ’911 patent is patent ineligible under section 101 because it simply requires the application of Hooke’s law to tune a [propeller shaft] liner to dampen certain vibrations.” 15 Any asserted dependent claims from claim 22 were thus also considered to be patent ineligible subject matter. 16 AAM’s subsequently filed motion to stay issuance of the mandate pending a certiorari petition was denied.
III. Judge Moore’s Concurrence
Judge Moore agreed that AAM failed to show the required irreparable harm for a stay, but she opined that “American Axle ha[d] established a reasonable probability certiorari w[ould] be granted and a fair prospect that the majority of the Court w[ould] reverse.”17 Judge Moore noted that the Supreme Court will often grant certiorari “to resolve circuit splits that render the state of law inconsistent and chaotic” and expressed her deep concern that “[w]hat we have here is worse than a circuit split—it is a court bitterly divided. ”18
Judge Moore lamented how “the nation’s lone patent court” is “at a loss as to how to uniformly apply § 101,”19 referencing the Athena20 case in which all twelve active judges unanimously urged the Supreme Court to provide guidance in applying §101 to diagnostic method claims. “There is very little about which all twelve of us are unanimous, especially when it comes to § 101. We were unanimous in our unprecedented plea for guidance.” 21 Judge Moore contended that the case at hand is neither the progeny of Alice nor Mayo, but instead “it is [the Federal Circuit’s] own dramatic expansion of a judicial exception to § 101”:
- Section 101 is clear: “[w]hoever invents or discovers any new and useful process,” like the claims here, “may obtain a patent.” Yet, we have struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability.22
Judge Moore described this split as “irreconcilable.” 23
Lastly, Judge Moore warned that the decision in American Axle “is a patent killing judicial exception of our own creation”—“To nonetheless hold these claims ineligible, the majority broadens the judicial exceptions in a way that threatens to swallow the whole of the statute.”24 Her words reflected Judge Stoll’s dissent in the underlying panel decision denying a rehearing en banc: “I grow more concerned with each passing decision that we are, piece by piece, allowing the judicial exception to patent eligibility to ‘swallow all of patent law.’ ”25
Judge’s Moore’s concurrence lays bare what has become painfully clear—the Federal Circuit is irreconcilably conflicted and cannot provide consistent guidance under the Supreme Court’s Mayo/Alice test. Even more significant is Judge Moore’s assertion that the Federal Circuit is slowly creating a panel-dependent body of law. This is especially disconcerting given that the Federal Circuit stands as the nation’s lone patent court. If the Judges of the Federal Circuit are so bitterly divided over patent eligibility jurisprudence that they have admittedly failed to function as an appellate court in this context, perhaps the Supreme Court will finally heed their desperate pleas for more particularized guidance. The updated patent eligibility guidance provided by the Unites States Patent and Trademark Office would be a good place to start.
1 Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 2018-1763, 2020 WL 6228080, at *1 (Fed. Cir. Oct. 23, 2020).
2 Id. at *3.
4 Am. Axle, 967 F.3d at 1288.
5 Id. at 1289 (quoting U.S. Patent No. 7,774,911, col. 1, ll. 6–7).
6 Id. at 1288, 1289 (citing U.S. Patent No. 7,774,911, col. 1, l. 53–col. 2, l. 38).
7 Id. at 1290 (citing U.S. Patent No. 7,774,911, col. 1, l. 53–col. 2, l. 38.)
8 The asserted claims were claims 1-6, 12, 13, 19-24, 26, 27, 31, 34-36 of U.S. Patent No. 7,774,911.
9 Am. Axle, 967 F.3d at 1288.
12 Mayo Collaborative Services v. Prometheus Labs., 566 U.S. 66 (2012).
13 Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014).
14 Am. Axle, 967 F.3d at 1292.
18 Id. (emphasis added).
19 Id. at *3.
20 Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 927 F.3d 1333 (Fed. Cir. 2019).
21 Am. Axle, No. 2018-1763, 2020 WL 6228080, at *3 (emphasis added).
25 Am. Axle, 966 F.3d at 1365 (Stoll, J. dissenting) (citations omitted).