AAM v. Neapco: Method of Manufacturing Claim Gets the 101 Hook(e)
In American Axle and Manufacturing v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir., July 31, 2020), a split panel of Judges Dyk, Moore and Taranto, on rehearing, slightly modified their earlier opinion that most of the claims of U.S. Pat. No. 7,774,911 are invalid as an attempt to claim a law of nature, namely Hooke’s Law. The majority seems confused at times as to whether the claims are directed to an abstract idea or to a law of nature. See slip op. at 18 and 25. Moore strongly dissented. The claim that warranted the most discussion is Claim 22:
Claim 22. A method for manufacturing a shaft [“propshaft”] assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, thee 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 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.
As described by the majority: “The ‘911 patent generally relates to a method for manufacturing driveline propeller shafts (‘propshafts’) with liners that are designed to ‘attenuat[e] … vibrations transmitted through a shaft assembly … Propshafts are ‘employed [in automotive vehicles] to transmit rotary power in a driveline … because these prop shafts are typically made of a relatively thin-walled steel or aluminum tubing [they] can be receptive to various driveline excitation sources.” These can cause the propshaft to vibrate in 3 modes. So the goal of the invention is to attenuate vibrations in propshafts.
By now, you may be asking yourself how such a claim could possibly fail the Alice/Mayo test for patentability. The claimed invention is a new [no prior art rejections] and useful process to make the recited machine; no matter what steps are recited, apart from any s. 112 issues, when you have completed the claimed method, you have a shaft assembly of a driveline system sitting on your workbench. It is not an abstract idea or a natural phenomenon. If you drop it on your foot, it will hurt. But not so fast….
Classy lawyering convinced both the district court and the majority of the three judge panel that, at step one of the Mayo/Alice analysis, the claims are “directed to the mere application of Hooke’s law”, –is this a natural law or an algorithm, which is an abstract idea? The court and the panel also agreed that the claim element of tuning the liner to attenuate different vibrations merely “instruct[ed] one to apply Hooke’s law to achieve the desired result of attenuating certain vibration modes and frequencies” without “provid[ing] [a] particular means of how to craft the liner and propshaft in order to do so.”[Isn’t this a s. 112 enablement issue?] The description of the claimed process in Diehr could have been written by AAM’s attorneys. Even reliance on Flook, the majority states that “claim 22 here does not specify how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes….This holding as to step 1 of Alice extends only where, as here, a claim on its face clearly invokes [ed. note – where does invocation equal “directed to.”] a natural law, and nothing more, to achieve a claimed result [ed. note: no result is “claimed”].
Of course, that reading of the claim sent it off to Step 2 of the Alice/Mayo analysis, and the hopeless search for an “inventive concept.” The majority quotes AAM’s concession that “methods for determining natural frequencies and damping are well known in the art.”
The district court had defined Hooke’s law as “an equation that describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates.” (In a first cut at definition, Hooke’s law is not so simple to adapt to this situation. Hooke’s law is Fs = kx, where Fs represents the force of a spring, k is the “spring constant – the mass?—and x represents the amount of spring compression or compression—the stiffness? I am many years beyond my college physics course, but I think the court or the panel should have explained how vibration frequency is derived from this equation.)
Blurring the distinction between s. 101 and s. 112, the panel rejected AAM’s argument that claim 22 ‘”does not merely claim a result and so is not directed to whatever natural laws make the result possible.” (AAM also argued that it had invented an improved method of tuning. I think they would have been wise to stay away from the “improvement test” that the Fed. Cir. seems to be embracing when doing the step one Mayo/Alice analysis. AAM might have done better by continuing to argue that the invention is a 101 sanctioned method to make a machine.) The majority continued:
“Claiming a result that involves application of a natural law without limiting the claim to particular methods of achieving the result runs headlong into the very problem repeatedly identified by the S.Ct. in its cases shaping eligibility analysis. While the majority predictably cites Mackay Radio and O’Reilly v. Morse, these were preemption decisions due to the breadth of the claims. I don’t see how these decisions support claims limited to a new and useful was to make a particular piece of equipment. The Supreme Courts of the past probably have found no s. 101 issues if the claims had been directed to an improved method to construct a telegraph key.
The majority turns to claim 1 and reversed and remanded the district court’s conflation of claim 1 and claim 22:
“In light of the district courts construction of claim 1 which requires only controlling characteristics and positioning the liner, we cannot conclude that it is merely directed to Hooke’s law. In contrast with claim 22, which as construed recites nothing more than a desired result and an instruction to apply Hooke’s law, we cannot say that claim 1 as construed is directed to a particular natural law and nothing more.” Claim 1 recites controlling shell mode vibrations and bending mode vibrations within recited parameters. The majority hints that this may be a abstract idea. The dissent is about as long as the majority’s opinion, and it will be the subject of my next post. However I have summarized a number of the points asserted by Judge Moore herein. Still, it really is a good read.