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American Axle Petitions the US Supreme Court to Provide Clarity and Guidance on Section 101 Jurisprudence

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On December 28, 2020, American Axle filed a petition for certiorari with the U.S. Supreme Court, asking it in part to provide guidance in a “bitterly divided” Section 101 case.1  Briefing by the parties is complete and ten amici curiae briefs were submitted, all echoing American Axle’s request that the Supreme Court provide clarity to Section 101 eligibility. Section 101 of the Patent Act states that an inventor can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”2  This provision is subject to three judicial exceptions: abstract ideas, laws of nature, and natural phenomena.  If patent claims are directed to any of these three judicial exceptions without more, then they are deemed to be patent ineligible.    

Background

As discussed in more detail in a previous IP Report, in Am. Axle, the Federal Circuit rejected the representative claims concerning methods for manufacturing automobile driveline shafts as being directed to “Hooke’s law [F = kx], and possibly other natural laws.”3  American Axle subsequently petitioned for panel rehearing and rehearing en banc.4  While the Federal Circuit denied en banc review—a 6-6 split spanning five opinions, it granted a panel rehearing, withdrew its previous opinion, and issued a modified opinion on July 31, 2020.5  In its modified opinion, the Federal Circuit held that the same claims were patent ineligible under Section 101 because they were directed only to Hooke’s law“a natural law, and nothing more.”6           

American Axle’s Petition

In its petition for certiorari to the Supreme Court, American Axle argued five main points:7

  1. The Federal Circuit has pushed Section 101 well beyond its gatekeeping function to invalidate industrial manufacturing processes historically eligible for patent protection.
  2. The Federal Circuit’s improper expansion of the non-textual exceptions to Section 101 is in conflict with this Court’s precedent and the patent statutes.
  3. The entire patent system is calling for guidance from the Court
  4. The Court (not Congress) can and should resolve the confusion and uncertainty surrounding the Court’s judicially-created exceptions.
  5. This case presents the ideal vehicle for the Court to provide much-needed guidance on Section 101.

With regards to the second point, American Axle’s position largely mirrors those from the dissenting opinions at the Federal Circuit, arguing that what is being termed the “Nothing More” test sets forth a “new blended 101/112 defense.”8  According to American Axle, the Federal Circuit imbued Section 101 with the enablement requirement of Section 112 by requiring that patent claims that do not sufficiently teach “how to make and use the claimed invention,” but instead “invoke[] a patent ineligible concept, and nothing more, to achieve the claimed result,” are directed to a patent ineligible concept.9, 10American Axle reiterated Judge Moore’s dissent, stating that “the majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”11

With regards to American Axle’s third argument, the petition explains that the entire patent system—from current and former Federal Circuit judges to current and former directors of the USPTO and the Solicitor General of the United States—agree that Section 101 is a problem that must be addressed.  Relaying Judge Moore’s own words, American Axle observed that the Federal Circuit has “struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law,” and, in this case, is “bitterly divided.”12  Indeed, in an amicus brief filed, in part, by Former Chief Judge of the Federal Circuit Paul Michel, Judge Michel stated that:
In my view, recent [Section 101] cases are unclear, inconsistent with one another and confusing.  I myself cannot reconcile the cases.  That applies equally to Supreme Court and Federal Circuit cases.  Nor can I predict outcomes in individual cases with any confidence since the law keeps changing year after year.  If I, as a judge with 22 years of experience deciding patent cases on the Federal Circuit’s bench, cannot predict outcomes based on case law, how can we expect patent examiners, trial judges, inventors and investors to do so?13       

While the Solicitor General has yet to file a brief explaining the views of the United States in this case, in Section 101 briefing filed in two other recent cases on certiorari before the Supreme Court, the Solicitor General agreed that Section 101 jurisprudence required greater clarity but that those cases were not an appropriate vehicle for bringing such clarity.14  In one brief, the Solicitor General stated that “[t]he Court should await a case in which lower courts’ confusion about the proper application of Section 101 and this Court’s precedents makes a practical difference.”15American Axle explained in its petition that the Court need not wait any longer for the appropriate case, because this case “presents both the substantive and procedural questions plaguing the lower courts.”16 

Conclusion

A principal reason for which the Supreme Court grants certiorari is to review decisions that conflict with its own.17  Given the “bitterly divided” Federal Circuit decision here that in American Axle’s view conflicts with the Supreme Court’s Section 101 precedent, and the numerous amicus briefing calling for help, this may be the hotly anticipated case that the Supreme Court takes up to provide clarity to Section 101 jurisprudence.  Until then, patent owners should take heed of the Federal Circuit’s panel decision and avoid drafting broad claims that are directed to a process for achieving a desired result by reference solely to a natural law, without including claim elements that bound the claim by the particular process and machine necessary to produce the desired effect.

1 Petition for Writ of Certiorari at 3, Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 20-891 (Nov. 18, 2019).
2     35 U.S.C. § 101.
3     Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1364 (Fed. Cir. 2019), reh'g granted, opinion withdrawn, 966 F.3d 1294 (Fed. Cir. 2020), and opinion modified and superseded on reh'g, 967 F.3d 1285 (Fed. Cir. 2020).
    See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 966 F.3d 1294, 1295 (Fed. Cir. 2020); Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 966 F.3d 1347, 1348 (Fed. Cir. 2020).
5     See Am. Axle & Mfg., 966 F.3d at 1295; Am. Axle & Mfg., 966 F.3d at 1348.
6     Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1297 (Fed. Cir. 2020).
7     Petition for Writ of Certiorari at 17-39, Am. Axle & Mfg., No. 20-891.
8     Id. at 22-25.
9     Id. at 23.
10   Section 112 requires that a patent’s specification must teach those skilled in the art how to make and use the claimed invention.  35 U.S.C §112(a) (“The specification shall contain . . . the manner and process of making and using it, in such full, clear, concise and exact term as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 
11   Petition for Writ of Certiorari at 24-25, Am. Axle & Mfg., No. 20-891.
12   Id. at 27-28.
13  Brief for U.S. Senator Thom Tillis et al. as Amici Curiae Supporting Petitioner at 9, Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, No. 20-891 (Mar. 12, 2021). 
14   Petition for Writ of Certiorari at 32, Am. Axle & Mfg., No. 20-891.
15   Id.
16   Id. at 33.
17   S. Ct. R. 10(c).

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