PATENT CASE OF THE WEEK 

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. Oct. 3, 2019)

In this week’s Case of the Week, the Federal Circuit considered whether patent claims directed to methods of manufacturing drive shaft assemblies were patent-ineligible under 35 U.S.C § 101. The patent at issue generally claimed “tuning” a driveline propeller shaft liner to “dampen” undesirable vibrations, which was known in the art to be accomplished by altering the mass and stiffness of the liner to attenuate phenomena referred to as “bending mode,” “torsion mode,” and “shell mode” vibrations. The patent owner claimed to have invented a method of tuning liners to attenuate more than one such “mode” of vibration simultaneously, describing a single embodiment of one such “tuned” liner but not the process by which such “tuning” could be achieved. Instead, the claims described the “tuned” liner only in terms of the type or degree of dampening achieved with respect to the different vibration modes.

The district court granted defendants’ motion for summary judgment under § 101, finding that the claims were directed to laws of nature. The Federal Circuit affirmed, finding that the patents only directed one to take routine, conventional steps to apply Hooke’s law, an equation describing the relationship between an object’s mass, stiffness, and vibration frequency, “and possibly other natural laws,” to achieve the well-known natural phenomenon of friction damping.

Applying the two-step inquiry established by the Supreme Court in Mayo Collaborative Servs. and Alice Corp. Pty. Ltd., the Federal Circuit noted that there is no law or principle that a claim to a method of manufacturing cannot be directed to a natural law. Rather, the Court found that the asserted claims fell within the group of directives prohibited by Mayo, “simply stating a law of nature while adding the words ‘apply it.’”  The Court rejected plaintiffs’ arguments that a propshaft liner is too complex to be described by mere application of Hooke’s law, because no specific solution was described in the patent, and the Mayo/Alice analysis turns on the language of the claims themselves—unclaimed features are irrelevant. In so doing, the Court reiterated and collected authority for the proposition that a patent may not be directed only to the result of an unclaimed generic process, without describing the process and such that it would prohibit others from making the same thing by any means at all. As in such cases, the Court noted that “[t]he focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work.”

Judge Moore submitted a vigorous dissent, opining that the majority disregarded the second part of the Alice/Mayo test, and that issues concerning the patent’s description of the claimed process were issues of enablement, not patent eligibility. Judge Moore expressed concern that the majority’s opinion impermissibility tended to “convert § 101 into a panacea for every concern we have over an invention’s patentability,” describing it as a “validity goulash” that was as troublingly results-oriented as the claims it held invalid.

The opinion can be found here.

ALSO THIS WEEK

OSI Pharmaceuticals., LLC v. Apotex Inc., Appeal No. 2018-1925 (Fed. Cir. Oct. 4, 2019)

In an appeal finding claims concerning cancer drugs obvious, the Federal Circuit reversed. The PTAB had found that it would have been obvious to have combined teachings from different references, and that there would have been a reasonable expectation of success from doing so. The Federal Circuit found that there was insufficient evidence to support a reasonable expectation of success, in part because of the highly unpredictable nature of testing cancer treatments and an over 99.5% failure rate for drugs entering Phase II clinical studies. The Court also rejected the theory that IPRs are unconstitutional as applied to pre-AIA patents, following from its recent decision in Celgene Corp. v. Peter, 931 F.3d 1342, 1362 (Fed. Cir. 2019). See our write-up of the Celgene case here.

The opinion can be found here.

Honeywell International Inc. v. Arkema Inc., Appeal Nos. 2018-1151, -1153 (Fed. Cir. Oct. 1, 2019)

In an appeal from a post-grant review, the Federal Circuit reversed on an issue concerning the right to seek a certificate of correction. The case concerned a Honeywell patent. During prosecution, Honeywell canceled 20 pending claims and added 20 new claims but failed to update the priority chain to reflect the written support for the new claims dating back to 2002. Arkema filed a post-grant review asserting that priority extended only to the filing date of the patent’s application—that Honeywell was not entitled to claim priority back to 2002. Honeywell sought leave to file a motion for a Certificate of Correction pursuant to 35 U.S.C. 255. The Board denied the request, finding the facts in this case did not warrant a Certificate of Correction. The Federal Circuit reversed, finding that the Board abused its discretion. Pursuant to Section 255, the decision to issue a Certificate of Correction is expressly provided to the Director, not the Board, so it is the Director, not the Board, that determines whether the facts and circumstances merit a Certificate of Correction. By denying Honeywell’s request to file a motion, the Board exceeded the scope of its authority, usurping the decision-making authority of the Director.

The opinion can be found here.