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Latest Update: Jul. 31, 2020
Summary: Case: 18-1763 Document: 133 Page: 1 Filed: 07/31/2020 United States Court of Appeals for the Federal Circuit _ AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, Defendants-Appellees _ 2018-1763 _ Appeal from the United States District Court for the District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge Leonard P. Stark. _ ON PETITION FOR REHEARING EN BANC _ JAMES RICHARD NUTTALL, Steptoe & Johnson, LLP, Chicago, IL, filed a combined petit
Summary: Case: 18-1763 Document: 133 Page: 1 Filed: 07/31/2020 United States Court of Appeals for the Federal Circuit _ AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, Defendants-Appellees _ 2018-1763 _ Appeal from the United States District Court for the District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge Leonard P. Stark. _ ON PETITION FOR REHEARING EN BANC _ JAMES RICHARD NUTTALL, Steptoe & Johnson, LLP, Chicago, IL, filed a combined petiti..
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Case: 18-1763 Document: 133 Page: 1 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
ON PETITION FOR REHEARING EN BANC
______________________
JAMES RICHARD NUTTALL, Steptoe & Johnson, LLP,
Chicago, IL, filed a combined petition for panel rehearing
and rehearing en banc for plaintiff-appellant. Also repre-
sented by JOHN LLOYD ABRAMIC, KATHERINE H. JOHNSON,
ROBERT KAPPERS; CHRISTOPHER ALAN SUAREZ, Washing-
ton, DC.
J. MICHAEL HUGET, Honigman LLP, Ann Arbor, MI,
filed a response to the petition for defendants-appellees.
Also represented by SARAH E. WAIDELICH; DENNIS J.
ABDELNOUR, Chicago, IL.
Case: 18-1763 Document: 133 Page: 2 Filed: 07/31/2020
2 AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
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MATTHEW ZAPADKA, Bass, Berry & Sims, PLC, Wash-
ington, DC, for amici curiae Jonathan Barnett, Richard A.
Epstein, Christopher Michael Holman, Daryl Lim, Adam
Mossoff, Kristen J. Osenga, Michael Risch, Ted M. Sichel-
man, Brenda M. Simon, Jonathan Stroud, David O. Taylor,
Saurabh Vishnubhakat. Also represented by SCOTT A. M.
CHAMBERS, Porzio, Bromberg & Newman, PC, Washington,
DC.
MARK J. ABATE, Goodwin Procter LLP, New York, NY,
for amicus curiae Intellectual Property Owners Associa-
tion. Also represented by ALEXANDRA D. VALENTI; HENRY
S. HADAD, Bristol-Myers Squibb Company, Princeton, NJ;
KEVIN H. RHODES, 3M Innovative Properties Company, St.
Paul, MN.
JEREMY COOPER DOERRE, Tillman Wright PLLC,
Charlotte, NC, as amicus curiae, pro se.
AARON BARKOFF, McAndrews, Held & Malloy, Ltd.,
Chicago, IL, for amicus curiae Biotechnology Innovation
Organization. Also represented by CHRISTOPHER SINGER;
MELISSA A. BRAND, HANSJORG SAUER, Biotechnology Inno-
vation Organization, Washington, DC.
ROBERT P. TAYLOR, Rpt Legal Strategies PC, San
Francisco, CA, for amicus curiae Alliance of U.S. Startups
and Inventors for Jobs.
JOHN THOMAS BATTAGLIA, Alexandria, VA, for amicus
curiae Paul R. Michel.
______________________
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
HUGHES, and STOLL, Circuit Judges.
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AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS 3
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DYK, Circuit Judge, with whom WALLACH and TARANTO,
Circuit Judges, join, concurs in the denial of the petition
for rehearing en banc.
CHEN, Circuit Judge, with whom WALLACH, Circuit
Judge, joins, concurs in the denial of the petition for
rehearing en banc.
NEWMAN, Circuit Judge, with whom MOORE, O’MALLEY,
REYNA, and STOLL, Circuit Judges, join, dissents from the
denial of the petition for rehearing en banc.
STOLL, Circuit Judge, with whom NEWMAN, MOORE,
O’MALLEY, and REYNA, Circuit Judges, join, dissents from
the denial of the petition for rehearing en banc.
O’MALLEY, Circuit Judge, with whom NEWMAN, MOORE,
and STOLL, Circuit Judges, join, dissents from the denial
of the petition for rehearing en banc.
LOURIE, Circuit Judge, dissents without opinion from the
denial of the petition for rehearing en banc.
PER CURIAM.
ORDER
Appellant American Axle & Manufacturing, Inc. filed a
combined petition for panel rehearing and rehearing en
banc. A response to the petition was invited by the court
and filed by appellees Neapco Holdings LLC and Neapco
Drivelines LLC. Several motions for leave to file amici cu-
riae briefs were filed and granted by the court. The petition
for rehearing, response, and amici curiae briefs were first
referred to the panel that heard the appeal, which granted
the petition in part as indicated in the accompanying order.
Thereafter, the petition was referred to the circuit judges
who are in regular active service. A poll was requested,
taken, and failed.
Upon consideration thereof,
Case: 18-1763 Document: 133 Page: 4 Filed: 07/31/2020
4 AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
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IT IS ORDERED THAT:
1) The petition for rehearing en banc is denied.
2) The mandate of the court will issue on September
8, 2020.
FOR THE COURT
July 31, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
Case: 18-1763 Document: 133 Page: 5 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
DYK, Circuit Judge, with whom WALLACH and TARANTO,
Circuit Judges, join, concurring in the denial of the petition
for rehearing en banc.
We agree that en banc review was not warranted. The
panel opinion is both consistent with precedent and narrow
in its scope. Claim 22 and related claims instruct only the
use of mass and stiffness to match relevant frequencies to
tune a propshaft liner so that the liner, when used, will
produce certain results (reducing two modes of vibration
from the propshaft). Contrary to Judge Stoll’s dissent,
these claims in no way “recite the process and machinery
necessary to produce the desired effect of reducing vibra-
tions in a shaft assembly.” Stoll Dissent Op. at 2–3.
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2 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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Because claim 22 contains no further identification of spe-
cific means for achieving those results, but merely invokes
the natural law that defines the relation between stiffness,
mass, and vibration frequency, it is ineligible under a long
line of cases beginning at about the time of O’Reilly v.
Morse, 56 U.S. (15 How.) 62 (1853), which held ineligible a
claim to “printing intelligible characters . . . at any dis-
tances” by the use of “electro-magnetism,” precisely be-
cause, unlike the other upheld claims in O’Reilly, it lacked
any identification of specific means to use electromag-
netism. 1 Id. at 113–20.
“Morse’s eighth claim would have covered, among other
things, telephone, radio, television, microwave, wireless,
and Internet communication, although they were all in-
vented by others much later.” Jay Dratler, Jr., Alice in
Wonderland Meets the U.S. Patent System, 38 Akron L.
1 Judge Stoll’s dissent suggests that “several of Sam-
uel Morse’s other claims [in O’Reilly] were held eligible in
that very same case, and [that] they more closely resemble
the claims at issue here.” Stoll Dissent Op. at 2. Unlike
claim 8, however, the other claims in O’Reilly all incorpo-
rated by express reference descriptions and illustrations
from the specification of the patent addressed by the Court.
The specification contained a number of detailed technical
drawings and corresponding descriptions. See Reissue Pa-
tent No. 117 (issued June 13, 1848) (Figure 1–5 and pages
2–3). In contrast, claim 8 of O’Reilly specifically did not
limit itself to the specification and for that reason was
found ineligible. O’Reilly, 56 U.S. at 62 (“Eighth. I do not
propose to limit myself to the specific machinery, or parts
of machinery, described in the foregoing specifica-
tion . . . .”). In the Telephone Cases, the Supreme Court ex-
plained that O’Reilly’s singling out of claim 8 rested on this
exact distinction. Dolbear v. Am. Bell Tel. Co.,
126 U.S. 1,
534 (1888).
Case: 18-1763 Document: 133 Page: 7 Filed: 07/31/2020
AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS 3
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Rev. 299, 321 (2015). Allowing the patentability of such
broad claims impairs rather than promotes innovation and
denies patent protection to real inventors—those who dis-
cover particular ways to achieve the desired result.
“[T]here is a danger that the grant of patents that tie up
the[] use [of laws of nature] will inhibit future innova-
tion premised upon them, a danger that becomes acute
when a patented process amounts to no more than an in-
struction to ‘apply the natural law,’ or otherwise fore-
closes more future invention than the underlying discovery
could reasonably justify.” Mayo Collaborative Servs. v. Pro-
metheus Labs., Inc.,
566 U.S. 66, 86 (2012).
The inventors here may well have invented a specific
means of achieving the claimed result, but they chose not
to include such means in the claims we hold ineligible.
Those claims, which invoke only a natural law, are ineligi-
ble under O’Reilly and other cases invalidating claims that
merely state a result without providing specific detail as to
the “how”—the means for achieving the result. See Mayo,
566 U.S. at 71–73 (“[T]o transform an unpatentable law of
nature into a patent-eligible application of such a law, one
must do more than simply state the law of nature while
adding the words ‘apply it.’”); Parker v. Flook,
437 U.S. 584,
586 (1978) (invalidating a claimed method that did not
“purport to explain how to select . . . any of the . . . varia-
bles” involved, or “purport to contain any disclosure relat-
ing to the chemical process at work, the monitoring of
process variables, or the means of setting off an alarm or
adjusting an alarm system”); Mackay Radio & Telegraph
Co. v. Radio Corp. of Am.,
306 U.S. 86, 94–101 (1939);
O’Reilly, 56 U.S. at 112–17 (holding a claim for “use of the
motive power of the electric or galvanic current . . . for
marking or printing intelligible characters . . . at any dis-
tances” ineligible because “it matter[ed] not by what pro-
cess or machinery the result [wa]s [to be] accomplished”);
Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852) (hold-
ing that claiming a concept without the particular steps of
Case: 18-1763 Document: 133 Page: 8 Filed: 07/31/2020
4 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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carrying it out “would prohibit all other persons from mak-
ing the same thing by any means whatsoever,” and that
such claims are ineligible for patentability); Corning v.
Burden, 56 U.S. (15 How.) 252, 268 (1853) (“It is for the
discovery or invention of some practicable method or
means of producing a beneficial result or effect, that a pa-
tent is granted, and not for the result or effect itself.”),
quoted by Diamond v. Diehr, 450 U.S. 175, 182 n.7 (1981). 2
2 See also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1167 (Fed. Cir. 2018) (holding that as “reflected re-
peatedly in our cases,” to avoid ineligibility, a claim must
“ha[ve] the specificity required to transform [the] claim
from one claiming only a result to one claiming a way of
achieving it”); Affinity Labs of Texas, LLC v. DIRECTV,
LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016) (claim was di-
rected to an ineligible abstract idea because “[t]here [wa]s
nothing in the claim that [wa]s directed to how to imple-
ment out-of-region broadcasting on a cellular telephone”);
Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1241 (Fed.
Cir. 2016) (claims found ineligible and “directed to an ab-
stract idea” because they “d[id] not claim a particular way
of programming or designing the software to create
menus . . . , but instead merely claim[ed] the resulting sys-
tems”); Internet Patents Corp. v. Active Network, Inc.,
790
F.3d 1343, 1348 (Fed. Cir. 2015) (finding claim abstract be-
cause it “contain[ed] no restriction on how the result [wa]s
accomplished”); Secured Mail Sols. LLC v. Universal
Wilde, Inc.,
873 F.3d 905, 911 (Fed. Cir. 2017) (finding
claims abstract because they were “not limited by rules or
steps that establish[ed] how the focus of the methods [wa]s
achieved”); ChargePoint, Inc. v. SemaConnect, Inc.,
920
F.3d 759, 770 (Fed. Cir. 2019), cert. denied,
140 S. Ct. 983
(2020) (finding claims directed to abstract idea where
broad claim language “would cover any mechanism for
Case: 18-1763 Document: 133 Page: 9 Filed: 07/31/2020
AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS 5
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implementing network communication on a charging sta-
tion” rather than a specific way of doing so); Interval Li-
censing LLC v. AOL, Inc.,
896 F.3d 1335, 1345–46 (Fed.
Cir. 2018) (claims ineligible “because they consist[ed] of ge-
neric and conventional information acquisition and organ-
ization steps that [we]re connected to, but d[id] not convert,
the abstract idea . . . into a particular conception of how to
carry out that concept” (emphasis added)); Innovation Sci.,
LLC v. Amazon.com, Inc., 778 F. App’x 859, 863 (Fed. Cir.
2019) (finding ineligible a claim reciting coverage “in
merely functional, result-oriented terms”); Univ. of Fla. Re-
search Found., Inc. v. Gen. Elec. Co.,
916 F.3d 1363, 1364,
1368 (Fed. Cir. 2019) (claims “directed to an abstract idea”
where “[n]either the . . . patent, nor its claims, ex-
plain[ed] how the drivers d[id] the conversion that [Appel-
lant] points to.”); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC,
874 F.3d 1329, 1337 (Fed. Cir. 2017)
(claim directed to ineligible abstract idea where “[t]he
claim require[d] the functional results of ‘converting,’ ‘rout-
ing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’
but d[id] not sufficiently describe how to achieve these re-
sults in a non-abstract way”); Finjan, Inc. v. Blue Coat Sys.,
Inc.,
879 F.3d 1299, 1305 (Fed. Cir. 2018) (“Apple, Affinity
Labs, and other similar cases hearken back to a founda-
tional patent law principle: that a result, even an innova-
tive result, is not itself patentable.”); McRO, Inc. v. Bandai
Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir.
2016) (“[In section 101 analysis w]e . . . look to whether the
claims . . . focus on a specific means or method that im-
proves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.”).
As the foregoing cases illustrate, the same concern is
significant under the abstract idea branch of ineligibility
analysis, which we leave for consideration as to the claims
that are the subject of our remand.
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6 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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The assertions that the panel decision holds that “any
reliance on a scientific principle in the claimed subject mat-
ter affects eligibility” or calls into question the patentabil-
ity of basic inventions such as “the telegraph, telephone,
light bulb, and airplane” are quite incorrect. Newman Dis-
sent Op. at 5; Stoll Dissent Op. at 7. What the decision
calls into question is claims, such as claim 8 in O’Reilly,
that claim only a result (the telegraph, electric light bulb,
the combustion engine) and disclose nothing more than a
natural law (electromagnetic force, incandescence, chemi-
cal combustion) to achieve that result. Nothing in the
panel opinion suggests that claims that describe how the
objective (light bulb, etc.) is to be achieved are patent inel-
igible. Such claims have long been held patentable. Such
claims continue to be patentable. A contrary result would
deny a true inventor (an individual who determined a spe-
cific means to achieve the claimed result) the fruits of his
or her invention.
Contrary to Judge Stoll’s dissent from denial of rehear-
ing en banc, see Stoll Dissent Op. at 6–7, there is also no
fact issue here. If the suggestion is that it is a factual ques-
tion whether more than Hooke’s Law might be needed to
make a device that actually produces the claimed result,
that is not the proper eligibility question. In O’Reilly, it
was plain from the specification and the other claims that
more than electromagnetism was needed to produce the
claimed result, but the Supreme Court held claim 8 ineligi-
ble precisely because it omitted any such implementation
means. The omission of needed specifics in the claim was
the problem, not a reason to find eligibility.
The step-one “directed to” inquiry in this case, as in
O’Reilly, is what the claim says. As to that question, the
panel does not suggest that there can never be a factual
issue, but there is no such factual issue here. Both parties’
witnesses agreed that Hooke’s law relates an object’s fre-
quency of vibration to its mass and stiffness, see Maj. Op.,
slip op. at 12–13, and neither party disputes the claim
Case: 18-1763 Document: 133 Page: 11 Filed: 07/31/2020
AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS 7
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construction given to the claim language “tuning a mass
and a stiffness of at least one liner,” namely, “controlling a
mass and stiffness of at least one liner to configure the liner
to match a relevant frequency or frequencies,” J.A. 15,
1047. Nor is there a conflict in evidence about what “mass”
or “stiffness” means to the relevant skilled artisan. The
claim language thus invokes the very relation between fre-
quency and mass and stiffness stated by Hooke’s law, as
the district court determined. J.A. 11 (“The claimed meth-
ods are applications of Hooke’s law with the result of fric-
tion damping.” (emphasis added)).
Claim 22 does not name Hooke’s law, but the name is
immaterial. The Supreme Court has not required reciting
the natural law by name and has rejected a “draftsman’s
art” approach to § 101 analysis. See, e.g., Mayo, 566 U.S.
at 72, 77 (explaining that the “laws of nature” set forth in
the claims are unnamed “relationships between concentra-
tions of certain metabolites in the blood and the likelihood
that a dosage of a thiopurine drug will prove ineffective or
cause harm”).
Judge O’Malley’s dissent suggests that the panel ma-
jority “decide[s] questions on grounds that were neither ar-
gued before the district court nor briefed on appeal” and
that it “announces a new test for patentable subject matter
at the eleventh hour and without adequate briefing.”
O’Malley Dissent at 2. But there is no new ground here.
Both in district court and on appeal, Neapco Holdings LLC
and Neapco Drivelines LLC (collectively, “Neapco”) argued
that the claims invoked a natural law, and nothing more,
to accomplish a desired result. Neapco argued in summary
judgment briefings that “the claims are ineligible because
they are directed to laws of nature and/or natural phenom-
ena related to controlling the natural frequency of an object
and the physics behind vibration attenuation.” J.A. 4596.
Neapco’s expert stated that “the asserted claims of the ʼ911
patent do nothing more than attempt to claim well-known
laws of nature or natural phenomen[a].” J.A. 2704.
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8 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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American Axle & Manufacturing, Inc. (“AAM”) opposed
this characterization of the claims in its briefing to the dis-
trict court: “Neapco oversimplifie[d] the Asserted Claims to
allege that they ‘do nothing more than attempt to claim
well-known laws of nature or natural phenome-
non . . . . [Its] arguments are without merit.” J.A. 4331
(quoting Neapco’s expert’s testimony). Ultimately, the dis-
trict court found that the claims “are directed to the mere
application of Hooke’s law, and they fail to instruct how to
design the tuned liners or manufacture the driveline sys-
tem to attenuate vibrations.” J.A. 11–12. On appeal,
Neapco reiterated that “[o]ther than providing the relation-
ship set by the natural law itself, the claims tell those of
skill nothing else about how to purportedly ‘tune’ a liner.”
Neapco Br. 25; see also id. at 38 (“[T]he claims here specif-
ically lack[] any instruction or disclosure for how to design
or manufacture the tuned liners to attenuate vibration
(other than telling an engineer to ‘apply’ Hooke’s law).”);
Oral Arg. 13:38–56 (explaining that the invention “is a
claim to a goal, the result . . . of tuning a liner to dampen
two different modes of vibration”). 3 The panel opinion ap-
propriately addresses the case as argued.
There is also no “new test” in stating that claim 22 is
“nothing more” than a natural law, i.e., that it contains no
information as to how to achieve the claimed result. This
linguistic formulation has previously been used by this
3 AAM argued that “[t]he district court [in its § 101
analysis] . . . applied an erroneous legal standard finding
that the asserted claims did not ‘disclose’ or ‘instruct how’
to design tuned liners. There is no such standard, even un-
der § 112, requiring the claims of the ’911 patent to ‘in-
struct how to design the tuned liners or manufacture the
driveline system to attenuate vibrations.’” AAM Op. Br. 54
(quoting J.A. 11).
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court in describing the test for § 101. 4 This “nothing more”
formulation was also repeatedly used by Neapco, 5 by
Neapco’s expert, 6 and by AAM to describe Neapco’s posi-
tion. 7 The same linguistic formulation was used by the
4 See, e.g., Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1048 (Fed. Cir. 2016) (“In recent cases,
we found claims ‘directed to’ a patent-ineligible concept
when they amounted to nothing more than observing or
identifying the ineligible concept itself.” (emphasis added));
ChargePoint, 920 F.3d at 769 (finding ineligible at step 1
“claims that claim nothing more than the broad
law . . . underlying the claims” (emphasis added)); Genetic
Veterinary Scis., Inc. v. LABOKLIN GmbH & Co. KG,
933
F.3d 1302, 1318 (Fed. Cir. 2019) (finding ineligible claims
“directed to nothing more than ‘observing or identifying’
the natural phenomenon of a mutation in the SUV39H2
gene” (emphasis added)).
5 Neapco Br. 12 (“The claimed ‘tuning’ is nothing
more than a recitation of Hooke’s law . . . .” (emphasis
added) (capitalization removed)); id. at 21 (“[T]he asserted
claims do nothing more than recite the abstract concept of
‘tuning’ a liner according to a natural law.” (emphasis
added));
id. at 32 (“The asserted claims ‘fail to provide any
meaningful limits on the scope of the claim,’ and are thus
‘nothing more than applying a law of nature to a conven-
tional method to achieve an abstract solution to a prob-
lem.’” (emphasis added) (quoting J.A. 18)).
6 J.A. 2704 (Neapco’s expert stating that “the as-
serted claims of the ʼ911 patent do nothing more than at-
tempt to claim well-known laws of nature or natural
phenomen[a]” (emphasis added)).
7 J.A. 4331 (AAM arguing that “Neapco oversimpli-
fie[d] the Asserted Claims to allege that they ‘do nothing
more than attempt to claim well-known laws of nature or
natural phenomenon . . . . [Its] arguments are without
merit.” (emphasis added) (quoting Neapco’s expert)).
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10 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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district court. J.A. 15 (“Since Hooke’s law governs the re-
lationship between mass, stiffness, and frequency, the ‘tun-
ing’ claim limitation does nothing more than suggest that
a noise, vibration, and harshness . . . engineer . . . [would]
consider that law of nature when designing propshaft lin-
ers to attenuate driveline vibrations.” (emphasis added));
J.A. 18 (“Here, because the Asserted Claims are nothing
more than applying a law of nature to a conventional
method to achieve an abstract solution to a problem, the
Asserted Claims fail to provide any meaningful limits on
the scope of the claim.”).
Case: 18-1763 Document: 133 Page: 15 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
CHEN, Circuit Judge, with whom WALLACH, Circuit Judge,
joins, concurring in the denial of the petition for rehearing
en banc.
I concur in the court’s decision not to rehear this case
en banc because the principles applied by the district court
and panel majority in holding claim 22 invalid are con-
sistent with long-standing precedent. Contrary to the dis-
sent’s view, the panel majority did not announce a new
patent-eligibility test. Rather, its rationale is a straight-
forward application of the Supreme Court’s decision in
O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853). Moreover,
the district court applied the same test as the panel
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2 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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majority and for that reason no remand is required as to
claim 22.
What the dissent dubs the new “nothing more” test is
actually a principle that has been part of patent law since
at least 1853: a claim may be held ineligible if it invokes a
natural law to achieve some desired result without reciting
any further limitations as to the means for accomplishing
that result. In O’Reilly, the Supreme Court ruled that
Samuel Morse’s eighth claim, reciting nothing more than
the use of electromagnetism to generate and send mes-
sages at a distance, was ineligible. Id. at 112–13.
Today’s
panel decision tracks that precise reasoning. As construed,
claim 22 calls for nothing more than the use of Hooke’s law
to produce a particular result: the reduction of two types of
vibration in a liner. The claim is devoid of any other ele-
ment for producing that result. Because claim 22, as
drafted and construed, is substantively the same as Mr.
Morse’s claim 8, I do not see a way to logically distinguish
O’Reilly in this case.
Some amici suggest that the panel’s understanding of
O’Reilly is undercut because other claims of Mr. Morse’s
patent were found eligible and are analogous to AAM’s
claims. See Law Prof. Br. 6–8. They suggest that Mr.
Morse’s upheld claims merely begin with a natural law and
end with a desired result without reciting any further re-
quirements. To the contrary, each of Mr. Morse’s claims,
with the exception of ineligible claim 8, limits itself to the
specific implementation details disclosed in Mr. Morse’s
specification. Take claim 1 for example:
Having thus fully described my invention, I wish it
to be understood that I do not claim the use of the
galvanic current or current of electricity for the
purpose of telegraphic communications generally;
but [w]hat I specially claim as my invention and
improvement is—
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1. Making use of the motive power of magnetism
when developed by the action of such current or
currents, substantially as set forth in the foregoing
description of the first principal part of my inven-
tion, as means of operating or giving motion to ma-
chinery which may be used to imprint signals upon
paper or other suitable material, or to produce
sounds in any desired manner for the purpose of
telegraphic communication at any distances.
U.S. Reissue Patent No. 117 (issued June 13, 1848) (em-
phasis added). Claim 1 does not simply invoke “the motive
power of magnetism” to produce the desired result of “tele-
graphic communication at any distances,” but instead fur-
ther confines the claim’s scope to the application of current
“substantially as set forth in the foregoing description of
the first principal part of [Mr. Morse’s] invention” to
achieve the desired result. Id. The remaining claims like-
wise incorporate implementation details from Mr. Morse’s
specification.
Id. (claiming what was “substantially as set
forth in the foregoing description,” the “combination of ma-
chinery herein described,” “substantially by the means
herein described,” “substantially as herein set forth and il-
lustrated,” and “as herein described”).
In contrast, Mr. Morse’s claim 8 disavows any imple-
mentation details from his specification:
8. I do not propose to limit myself to the specific ma-
chinery or parts of machinery described in the fore-
going specifications and claims, the essence of my
invention being the use of the motive power of the
electric or galvanic current, which I call “electro-
magnetism,” however developed, for marking or
printing intelligible characters, signs, or letters at
any distances, being a new application of that
power of which I claim to be the first inventor or
discoverer.
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Id. (emphasis added). As the Supreme Court later ex-
plained in Dolbear v. Am. Bell Tel. Co., the distinguishing
feature of Mr. Morse’s invalidated claim 8 was that it
claimed “the use of magnetism as a motive power, without
regard to the particular process with which it was con-
nected in the patent.”
126 U.S. 1, 534 (1888). In contrast,
the Court explained that Mr. Morse’s claim 1, although also
“making use of the motive power of magnetism,” was pa-
tent eligible because that claim specified the use of mag-
netism in connection with the particular process disclosed
in the patent.
Id. Following these principles, the Court in
Dolbear held eligible a claim to “transmitting vocal or other
sounds telegraphically, as herein described, by causing
electrical undulations, similar in form to the vibrations of
the air accompanying the said vocal or other sound, sub-
stantially as set forth.”
Id. at 532 (emphasis added).
The amici’s understanding of Mr. Morse’s upheld
claims as merely reciting the motive power of magnetism
to produce telegraphic communication thus suffers from
multiple grave problems. First, it ignores the claim lan-
guage incorporating implementation details from the spec-
ification. Second, if the amici’s reading were correct, it
would render the O’Reilly decision hopelessly in conflict
with itself, given that the Court invalidated claim 8.
Third, the Court in Dolbear, in reiterating the principle
that invoking a law of nature to achieve a result, without
more, is not a patent-eligible claim, characterized Mr.
Morse’s upheld claims in a way that is clearly incompatible
with the amici’s views. Thus, nothing in O’Reilly helps
AAM’s cause in this case.
Contrary to the dissent’s position that a remand is
needed to allow the district court to apply the O’Reilly test
in the first instance, the district court here already applied
the principles of O’Reilly in the same way and based on the
same claim interpretation as the panel majority when it
held claim 22 invalid as merely invoking Hooke’s law to ac-
complish a desired result. The district court’s decision
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noted that “Neapco asserts, in order to ‘tune’ the liner, one
merely applies Hooke’s law and then measures the amount
of damping.” J.A. 11. “[A]gree[ing] with Neapco,” the dis-
trict court explained that “[t]he claimed methods are appli-
cations of Hooke’s law with the result of friction damping.”
Id. (emphasis added); see also J.A. 11–12 (finding the as-
serted claims “are directed to the mere application of
Hooke’s law, and they fail to instruct how to design the
tuned liners or manufacture the driveline system to atten-
uate vibrations.”) (first emphasis added); J.A. 15 (finding,
under the court’s claim construction “controlling a mass
and stiffness of at least one liner to configure the liner to
match a frequency or frequencies,” that “this claim limita-
tion is just the application of Hooke’s law”) (emphasis
added); J.A. 17 (“Here, the Asserted Claims simply instruct
one to apply Hooke’s law to achieve the desired result of
attenuating certain vibration modes and frequencies. They
provide no particular means of how to craft the liner and
propshaft in order to do so.”) (emphasis added). Thus,
while the district court initially identified the issue in the
case as whether the asserted claims are directed to both
“Hooke’s law and friction damping,” J.A. 10, the court ulti-
mately concluded that claim 22 invokes Hooke’s law, with
nothing more, to achieve a desired result. J.A. 11, 11–12,
15, 17. Notably, this understanding of the claims directly
follows from the undisputed claim construction that the
claim calls for controlling mass and stiffness to control fre-
quency. See J.A. 10–12 (analyzing why controlling mass
and stiffness to control frequency is a reference to applying
Hooke’s law). And given that the district court analyzed
the content of the claim and found nothing other than this
reference to Hooke’s law for accomplishing the claimed re-
sults of attenuating shell mode and bending mode vibra-
tions, its reasoning and conclusion as to claim 22’s
invalidity follows the principle established by the Supreme
Court in O’Reilly. The district court’s understanding of the
claim and its rationale for holding claim 22 patent
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ineligible thus are identical to the panel majority’s analysis
and a remand is not necessary.
While some question the correctness of the panel ma-
jority and district court’s application of the O’Reilly test to
AAM’s claim 22, the application of law to fact in the section
101 context has always been a case by case judgment. Such
context-driven analysis is made in many areas of patent
law, for example in determining whether a claim is invalid
for obviousness or construing a claim limitation in light of
the specification. The same is true for the judicial excep-
tions to section 101 and the legal assessment as to whether
a claim is directed to a patent-ineligible concept or a pa-
tent-eligible application of that concept. As Judge Learned
Hand famously remarked about the similarly difficult
problem in copyright law of distinguishing between idea
and expression: “Nobody has ever been able to fix that
boundary, and nobody ever can.” Nichols v. Universal Pic-
tures Corp., 45 F.2d 119, 121 (2d Cir. 1930). In the present
case, given (1) the claim language of tuning the liner’s mass
and stiffness, (2) the undisputed construction of the rele-
vant claim language as referring to tuning said mass and
stiffness to match frequencies, (3) the undisputed mathe-
matical relationship, per Hooke’s law, between mass, stiff-
ness, and frequency, and (4) the district court’s analysis
rejecting AAM’s arguments that claim 22, as construed, is
not referring to Hooke’s law (J.A. 11–12), it seems reason-
able to me for the panel majority to view claim 22 as on par
with Mr. Morse’s claim 8 and thus likewise fall on the side
of ineligibility.
Importantly, the majority’s opinion in this case does
not, and should not be read to, announce a new test for pa-
tent eligibility. It holds that the O’Reilly test remains good
law and applies when a claim recites a limitation that, as
construed, expressly invokes a particular law of nature.
Maj. at 26. The majority opinion emphasizes that its hold-
ing “should not be read as an invitation to raise a validity
challenge against any patent claim that requires the
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application of an unstated natural law.” Id. That a claim
implicitly or inherently requires compliance with a natural
law for any embodiment to be operational is not a basis for
concluding that the claim expressly invokes that natural
law. In this case, the undisputed construction of claim 22
tunes mass and stiffness to match frequency, which is the
very formula for Hooke’s law.
The narrow scope of the majority’s holding is illus-
trated by the differences in the outcomes between claims 1
and 22. If claim 22 had omitted any reference to mass and
stiffness, such that the claim simply recited “tuning to
match the relevant frequency or frequencies,” there would
be no basis to say that the claim invokes Hooke’s law. This
is the scenario of claim 1, which recites “tuning at least one
liner to attenuate at least two types of vibration transmit-
ted through the shaft member” and “positioning the at least
one liner within the shaft member such that the at least
one liner is configured to damp shell mode vibrations in the
shaft member by an amount that is greater than or equal
to about 2%, and the at least one liner is also configured to
damp bending mode vibrations in the shaft member, the at
least one liner being tuned to within about ±20% of a bend-
ing mode natural frequency of the shaft assembly as in-
stalled in the driveline system.” U.S. Patent No. 7,774,911
at claim 1. Because claim 1 nowhere mentions “mass” and
“stiffness,” it cannot properly be read to expressly invoke
the Hooke’s law relationship between mass, stiffness, and
frequency. As the specification confirms, tuning for a de-
sired frequency can be accomplished through variables
other than mass and stiffness.
Id. at
col. 7 l. 60–col. 8 l. 2.
Thus, unlike claim 22, claim 1 cannot be said to expressly
call for Hooke’s law. 1 Because of the differences between
1 This distinction between claim 22, which expressly
invokes Hooke’s law, and claim 1, which is entirely silent
as to mass and stiffness, exists regardless of whether
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the two claims, I cannot say it was wrong for the panel ma-
jority to hold that the district court erred by treating the
two claims in the same way. As evidenced by the majority
opinion’s conclusion that claim 1 is not directed to a natural
law, the narrow holding of this case should not be read to
open the door to eligibility challenges based on the argu-
ment that a claim is directed to one or more unspecified
natural laws.
To the extent AAM and amici contend that mechanical
or industrial inventions can be categorically excluded from
the ambit of section 101 concerns, I cannot agree. The ori-
gins of the judicial exceptions to patent eligibility arise
from such cases during the Industrial Revolution. Mr.
Morse’s patent claimed the invention of the electro-mag-
netic telegraph. O'Reilly, 56 U.S. at 77. In Wyeth v. Stone,
Justice Story, riding circuit, considered the eligibility of a
patent that described a particular apparatus for cutting
ice, and a method for using the inventor’s apparatus to cut
ice.
30 F. Cas. 723 (C.C.D. Mass. 1840) (finding ineligible
a claim to “the art of cutting ice by means of any power,
other than human power”). Likewise, in Tilghman v. Proc-
tor, the Court evaluated the eligibility of a claim to “the
manufacturing of fat acids and glycerine from fatty bodies
by the action of water at a high temperature and pressure.”
102 U.S. 707, 729 (1880). To exclude manufacturing meth-
ods such as AAM’s from the section 101 inquiry would be
inconsistent with longstanding Supreme Court precedent
dating back to the origins of the eligibility inquiry.
I also do not agree with the dissent’s assertion that the
panel majority’s decision creates a heightened enablement
provision. As the majority opinion explains, section 101
“positioning” in claim 1 is construed to have the same, or
different meaning to “inserting” in claim 22. While claim 1
is not directed to Hooke’s law, the district court will ad-
dress on remand whether it is directed to an abstract idea.
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imposes a threshold constraint on the claims, whereas en-
ablement applies a second, different requirement to the
specification’s support of those claims. Maj. at 27–29.
Moreover, the panel opinion goes no farther than what is
required by O’Reilly, which the Supreme Court has repeat-
edly identified as a case about the judicial exceptions to
section 101. See Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1343 (Fed. Cir. 2018) (citing Supreme Court sec-
tion 101 opinions discussing O’Reilly). And as made clear
by the lengthy list of both Supreme Court and Federal Cir-
cuit cases cited in Judge Dyk’s concurrence, result-oriented
claim drafting raises concerns under section 101 independ-
ent from section 112. Dyk Concurrence Op. at 3–4 and n.2.
The lesson to patent drafters should now be clear: while not
all functional claiming is the same, simply reciting a func-
tional result at the point of novelty poses serious risks un-
der section 101. See, e.g., SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (stressing that, as “re-
flected repeatedly in our cases,” a claimed invention must
embody a concrete solution to a problem having “the speci-
ficity required to transform a claim from one claiming only
a result to one claiming a way of achieving it”); Le Roy v.
Tatham, 55 U.S. (14 How.) 156, 175 (1853) (“A patent is not
good for an effect, or the result of a certain process,” for
such patents “would prohibit all other persons from mak-
ing the same thing by any means whatsoever.”); Athena Di-
agnostics, Inc. v. Mayo Collaborative Servs., LLC,
927 F.3d
1333, 1344–49 (Fed. Cir. 2019) (Chen, J., concurring in de-
nial of rehearing en banc) (explaining how the Supreme
Court in Mayo Collaborative Services v. Prometheus Labor-
atories, Inc.,
566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS
Bank Int’l,
573 U.S. 208 (2014) resurrected the point of nov-
elty inquiry from Parker v. Flook,
437 U.S. 584 (1978),
which many, including this court, thought had been re-
jected in Diamond v. Diehr,
450 U.S. 175 (1981)).
Consider the example of an automaker CEO who an-
nounces a stretch goal to her engineers to produce a car,
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powered by electricity, that can be driven 1,000 miles with-
out a recharge. That declaration from the CEO does not
make her an “inventor” and the section 101’s judicial ex-
ceptions bar the grant of a patent for such a claim, for it
fails to recite any arguable act of invention to reach the
claimed result. Like Mr. Morse’s claim 8, this claim recites
a law of nature, and also like Mr. Morse’s claim 8, the
claim’s fundamental problem is there is no there there.
Without any content in the claim that can even be arguably
regarded as some form of a means or method beyond the
use of electricity, the claim is invalid under O’Reilly with-
out having to consider other validity grounds, such as ena-
blement, for example.
Assessing claim validity under section 101 is difficult
work and our court over a series of many decisions in recent
years has attempted to extract principles articulated in Su-
preme Court opinions, both old and new. Differences of
opinion within our court on how to apply those principles
to a particular case inevitably arise from time to time,
given the inherently imprecise nature of the legal frame-
work. But today’s panel majority decision is consistent
with both Supreme Court and our court’s precedent and its
decision as to claims 1 and 22 does not strike me as war-
ranting en banc intervention.
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United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
NEWMAN, Circuit Judge, with whom MOORE, O’MALLEY,
REYNA, and STOLL, Circuit Judges, join, dissenting from
denial of the petition for rehearing en banc.
The court’s rulings on patent eligibility have become so
diverse and unpredictable as to have a serious effect on the
innovation incentive in all fields of technology. The victim
is not only this inventor of this now-copied improvement in
driveshafts for automotive vehicles; the victims are the na-
tional interest in an innovative industrial economy, and
the public interest in the fruits of technological advance. I
share the concerns of my colleagues in dissent, and I write
to emphasize the far-reaching consequences of the court’s
flawed Section 101 jurisprudence.
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The court’s new spin on Section 101 holds that when
technological advance is claimed too broadly, and the
claims draw on scientific principles, the subject matter is
barred “at the threshold” from access to patenting. As here,
where the invention is found to embody a principle of phys-
ics called “Hooke’s law,” the court rules that the invention
is ineligible for patenting as a matter of law.
All technology is based on scientific principles—
whether or not the principles are understood. The Su-
preme Court long ago recognized that what is required for
patentability is that the inventor describes the useful ap-
plication of discovery. The Court then and now understood
the distinction between the basic principles of science and
their practical application. See, for example, Le Roy v. Tat-
ham, 55 U.S. 156 (1852):
The word principle is used by elementary writers
on patent subjects, and sometimes in adjudications
of courts, with such a want of precision in its appli-
cation, as to mislead. It is admitted, that a princi-
ple is not patentable. A principle, in the abstract,
is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in
either of them an exclusive right.
Id. at
174–75 (emphasis in original). This understanding
is fundamental to the system of patents, implementing the
constitutional purpose of promoting the progress of science
and useful arts. The Court further stated:
[T]he processes used to extract, modify, and con-
centrate natural agencies, constitute the invention.
The elements of the power exist; the invention is
not in discovering them, but in applying them to
useful objects.
Id. at
175. The Supreme Court has reiterated this balance
between abstract principle and practical application:
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[W]e tread carefully in construing this exclusionary
principle lest it swallow all of patent law. At some
level, “all inventions . . . embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Thus, an invention is not ren-
dered ineligible for patent simply because it in-
volves an abstract concept. “Applications” of such
concepts “to a new and useful end,” we have said,
remain eligible for patent protection.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (in-
ternal citations and alterations omitted).
Precedent illustrates application of these principles to
evolving technologies; for example, radio: “While a scien-
tific truth, or the mathematical expression of it, is not pa-
tentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be.” Mac-
kay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S.
86, 94 (1939). See also, e.g., Diamond v. Diehr,
450 U.S.
175 (1981):
Our earlier opinions lend support to our present
conclusion that a claim drawn to subject matter
otherwise statutory does not become nonstatutory
simply because it uses a mathematical formula,
computer program, or digital computer. . . . It is
now commonplace that an application of a law of
nature or mathematical formula to a known struc-
ture or process may well be deserving of patent pro-
tection.
Id. at
187 (emphasis in original). Until recently, Federal
Circuit precedent appropriately implemented the law; for
example, Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327,
1335 (Fed. Cir. 2016) (“The ‘directed to’ inquiry, therefore,
cannot simply ask whether the claims involve a patent-in-
eligible concept, because essentially every routinely pa-
tent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon—after
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all, they take place in the physical world.”); see also In re
TLI Comm’cns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016) (“But in determining whether the claims are di-
rected to an abstract idea, we must be careful to avoid over-
simplifying the claims because ‘[a]t some level, ‘all
inventions . . . embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.’’”
(quoting Alice
Corp., 573 U.S. at 217)).
However, the case now before us departs from these
rulings, adding to the concerns of amici curiae that “[t]he
panel majority’s decision reflects a five-year trend of courts
severely narrowing the range of inventions and discoveries
eligible for patent protection under the two-step Mayo-Al-
ice inquiry, contrary to historical practice and precedent.”
12 Law Profs. Br. 2.
Section 101 of the patent statute is designed as an all-
encompassing introduction to the subject matter of inven-
tion and discovery:
35 U.S.C. § 101. Whoever invents or discovers any
new and useful process, machine, manufacture, or
composition of matter, or any new and useful im-
provement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this
title.
A valid patent must meet the “conditions and require-
ments” of the patent statute; eligibility under Section 101
is not the same as patentability under the substantive stat-
utory provisions of novelty (§ 102), non-obviousness
(§ 103), and description and enablement (§ 112). Yet the
court accepts the argument made by defendant Neapco, the
admitted copier of the American Axle invention, that “it al-
ways has been, the breadth of a claim is critically material
to the § 101 inquiry. The fact that breadth is also material
to enablement (and written description, novelty, and obvi-
ousness as well) does not mean that it cannot be relevant
to § 101.” Neapco Br. 4. That is incorrect.
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Breadth of claiming is a matter of the scope and con-
tent of the description and enablement in the specification,
considered in light of the prior art, as investigated during
PTO examination. The notion that any reliance on a scien-
tific principle in the claimed subject matter affects eligibil-
ity under Section 101 itself warrants en banc rehearing.
The panel majority holds that some claims hereof are,
“without more,” a claim to a scientific principle, and that it
is irrelevant whether the application is new, non-obvious,
and enabled. This theory has found support in half of the
court, now declining en banc review. Our missteps are con-
spicuous in the panel majority’s treatment of “Hooke’s
law,” which is stated to be the basis for the majority’s rul-
ing of ineligibility, although we are not told Hooke’s law or
how it invalidates American Axle’s new automotive
driveshaft.
Hooke’s law is not defined in the parties’ briefs. How-
ever, it is reported in the Encyclopædia Britannica, at
https://www.britannica.com/science/Hookes-law:
Mathematically, Hooke’s law states that the ap-
plied force F equals a constant k times the displace-
ment or change in length x, or F = kx. The value of
k depends not only on the kind of elastic material
under consideration but also on its dimensions and
shape.
The panel majority does not explain how Hooke’s formula
F = kx for the compression of springs renders the ’911 pa-
tent’s automotive driveshaft ineligible for access to the pa-
tent system. One need only look at claim 1, the broadest
claim, to observe that this is a straightforward form of
claim, for which eligibility is routine:
1. A method for manufacturing a shaft assembly
of a driveline system, the driveline system fur-
ther including a first driveline component and
a second driveline component, the shaft
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assembly being adapted to transmit torque be-
tween the first driveline component and the
second driveline component, the method com-
prising: providing a hollow shaft member; tun-
ing at least one liner to attenuate at least two
types of vibration transmitted through the
shaft member; and positioning the at least one
liner within the shaft member such that the at
least one liner is configured to damp shell mode
vibrations in the shaft member by an amount
that is greater than or equal to about 2%, and
the at least one liner is also configured to damp
bending mode vibrations in the shaft member,
the at least one liner being tuned to within
about ±20% of a bending mode natural fre-
quency of the shaft assembly as installed in the
driveline system.
’911 patent, col. 10, ll. 10–27.
Our colleagues apparently find differences in eligibility
between claim 1 and claim 22:
22. A method for manufacturing a shaft assembly
of a driveline system, the driveline system fur-
ther including a first driveline component and
a second driveline component, the shaft assem-
bly 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 the 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 attenuat-
ing bending mode vibrations.
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’911 patent, col. 11, ll. 24–36. Our colleagues, writing to
support denial of rehearing en banc, propose that there is
a Section 101 distinction between claim 1 and claim 22, and
draw analogy to claim 8 of Samuel Morse’s telegraph pa-
tent, Judge Dyk explaining that “claim 8 of O’Reilly specif-
ically did not limit itself to the specification and for that
reason was found ineligible.” J. Dyk concurrence at 2 n.1.
However, claim 8 was not rejected because it was not lim-
ited to the specification, it was rejected because it proposed
to claim electromagnetism as a scientific principle. If the
panel majority is holding that eligibility to claim an inven-
tion employing a scientific principle depends on whether
the principle is mentioned in the specification, clear in-
structions must be given.
For the American Axle claims, neither the district court
nor this court considered the prior art or other patentabil-
ity factors including written description and enablement.
Yet it is apparent that these claims are for an automotive
driveshaft, not for an abstract idea or law of nature or
mathematical formula. We are not told how F = kx renders
these claims ineligible for patenting.
The distinction between basic scientific principle and
practical embodiment is the story of technology and indus-
try. The amici curiae 12 Law Professors remind us that:
“All inventions of practically applied processes and ma-
chines are reducible to mathematical abstractions and al-
gorithms; for example, a patentable method for operating a
combustion engine is really just an application of the law
of PV=nRT, the principles of thermodynamics, and other
laws of nature comprising the principles of engineering.”
12 Law Profs. Br. 9 (quoting Adam Mossoff, A Brief History
of Software Patents (and Why They’re Valid), 56 Ariz. L.
Rev. Syllabus 65, 71 (2014)).
Nonetheless, the majority deems irrelevant whether
the claimed subject matter meets the requirements of Sec-
tions 102, 103, and 112. We don’t know whether there are
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8 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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substantive issues of claim scope related to invalidity or in-
fringement. I take note of the protestations that this opin-
ion is limited, but if the court indeed intends to limit its
holding to driveshafts for automotive vehicles, en banc in-
struction is a necessity. Instead, the court furthers the de-
bilitation of Section 101. As stated by amicus curiae
Biotechnology Innovation Organization:
[T]here continues to be unabated uncertainty about
the patent eligibility of inventions across an ex-
panding range of technologies, including biotech-
nology. The unstable state of patent-eligibility
jurisprudence affects modern biotechnologies rang-
ing from biomarker-assisted methods of drug treat-
ment to companion diagnostic tests, fermentation
products, industrial enzyme technology, and
marker-assisted methods of plant breeding.
BIO Br. 1. Other amici curiae reinforce these concerns. As
summarized by amicus curiae Judge Paul R. Michel (Ret.),
“the § 101 rulings-at-issue threaten to undercut patent law
and its innovation-promoting goals. . . . The panel’s deci-
sion is legally incorrect and ill-advised.” Michel Br. 1. And
amicus curiae practitioner Jeremy C. Doerre states that
“the implicit judicial exception to 35 U.S.C. § 101 for natu-
ral laws is ill-suited to police overbroad [claims].” Doerre
Br. 4–5.
The need for judicial provision of stable and compre-
hensible patent law is of increasing urgency. “Legal pro-
tection of inventions and discoveries that once was a
defining characteristic of U.S. industrial policy has become
increasingly irrelevant, no longer providing adequate com-
fort to investors willing to make high risk commitments of
time and capital or to inventors who would leave secure
jobs to pursue visions of breakthrough technologies and
challenge entrenched incumbents.” Alliance of U.S.
Startups & Inventors for Jobs Br. 2–3 (showing survey re-
sults conducted by Professor Taylor at SMU, documenting
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AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS 9
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“[t]he growing unwillingness of inventors and investors to
rely on patents in tackling promising but risky new tech-
nologies harbingers badly for the United States”). Amicus
curiae Alliance states that “If left standing, the decision
has the potential for expanding ineligibility under Sec-
tion 101 to threaten most every invention for which a pa-
tent has ever been granted,” id. at 5,—as exemplified in the
case here before us.
The court’s notion that the presence of a scientific ex-
planation of an invention removes novel and non-obvious
technological advance from access to the patent system,
has moved the system of patents from its once-reliable in-
centive to innovation and commerce, to a litigation gamble.
It is essential to restore the incentive role of the system of
patents, for technology is the foundation of the nation’s
economy, trade, and strength.
There is no room for second best in our dependence on
correct, just, and wise application of the law. I respectfully
dissent from the court’s denial of the request for rehearing
en banc.
Case: 18-1763 Document: 133 Page: 34 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
STOLL, Circuit Judge, with whom NEWMAN, MOORE,
O’MALLEY, and REYNA, Circuit Judges, join, dissenting
from the denial of the petition for rehearing en banc.
I write to dissent from the denial of the petition for re-
hearing en banc because the majority’s decision extends
§ 101 to place in doubt the patent eligibility of historically
eligible mechanical inventions, and thus presents “a ques-
tion of exceptional importance” that warrants considera-
tion by the full court. Fed. R. App. P. 35(a)(2). I share
Judge Moore’s concerns about the majority’s “nothing
more” test and its application in this case, particularly on
this procedural posture. The majority has, to a limited ex-
tent, cabined the scope of its prior decision on panel
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rehearing, but I am concerned that its new decision only
serves to introduce additional questions—including how to
apply the “nothing more” test—that would benefit from fur-
ther development and contemplation through en banc re-
view.
The majority asserts that its “nothing more” test is not
new, and is instead firmly grounded in precedent such as
O’Reilly v. Morse, 56 U.S. 62 (1853). I disagree. The claim
held ineligible in O’Reilly is distinguishable on its face. It
was not limited to any particular machinery and was in-
stead broadly directed to the use of electromagnetism,
“however developed,” for transmitting information.
Id.
at
112. And as amici point out, several of Samuel Morse’s
other claims were held eligible in that very same case, and
they more closely resemble the claims at issue here. See
Law Prof. Br. 6–8; see also
O’Reilly, 56 U.S. at 85–86 (list-
ing claims). For example, one of the patent-eligible claims
expressly recites applying a natural law, “the motive power
of magnetism,” to produce a result, “telegraphic communi-
cation at any distances.”
O’Reilly, 56 U.S. at 85 (quoting
U.S. Reissue Patent No. 117). It is difficult to square that
outcome in O’Reilly with the majority’s application of the
“nothing more” test here.
The majority, along with Judge Dyk and Judge Chen
in their concurrences, contend that the O’Reilly Court held
these claims eligible because they include phrases such as
“substantially as set forth in the foregoing description,”
which, in their view, incorporated subject matter from the
specification into the claims. But O’Reilly does not ex-
pressly rely on any such incorporation by reference. In-
stead, it characterizes the ineligible claim as being directed
to “an effect produced by the use of electro-magnetism,” as
opposed to “the process or machinery necessary to produce”
that effect. 56 U.S. at 120. That distinction is entirely con-
sistent with the eligibility of the claims at issue here, for
they recite the process and machinery necessary to produce
the desired effect of reducing vibrations in a shaft
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assembly. And, although O’Reilly does describe the ineli-
gible claim as “outside” and “beyond” the specification
, id.
at 119–20, it does not necessarily follow that the other
claims were eligible because of any particular incorpora-
tion by reference. See Dolbear v. Am. Bell Tel. Co.,
126 U.S.
1, 534 (1888) (“The effect of [O’Reilly] was . . . that the use
of magnetism as a motive power, without regard to the par-
ticular process with which it was connected in the patent,
could not be claimed, but that its use in that connection
could.” (emphasis added)). Thus, the majority’s “nothing
more” test appears to be a new development with poten-
tially far-reaching implications in an already uncertain
area of patent law. On that basis alone, this case deserves
en banc review, including an opportunity for the parties
and other stakeholders, such as the U.S. Patent and Trade-
mark Office, to address the merits of the new “nothing
more” test.
Judge Chen also claims in his concurrence that the ma-
jority did not create a new test, characterizing the major-
ity’s decision as a “straightforward application” of the
“O’Reilly test” that is “consistent with long-standing prec-
edent.” E.g., Chen Concurring Op. 1, 4, 6. While I appre-
ciate the importance of O’Reilly as Supreme Court
precedent addressing eligibility, I note that Judge Chen
does not identify any prior court opinions or articles that
specifically refer to an “O’Reilly test,” nor am I aware of
any. To the extent that the Supreme Court has cited
O’Reilly, it has been for the general propositions that there
is an implicit exception to § 101 and that preemption is an
important concern in patent law. See, e.g., Alice Corp.
v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citing O’Reilly
in support of the implicit exception to § 101); Mayo Collab-
orative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 85
(2012) (discussing O’Reilly to illustrate preemption con-
cerns); Diamond v. Diehr,
450 U.S. 175, 187–88 (1981) (cit-
ing O’Reilly to underscore that an application of a law of
nature or mathematical formula may be patent eligible).
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Perhaps most notably, the district court opinion in this case
never even mentions O’Reilly. Finally, if this case pre-
sented such a straightforward application of the long-
standing “O’Reilly test,” why did the majority’s initial opin-
ion not even mention this test?
In his concurrence, Judge Dyk also suggests that the
“nothing more” test is not new because the same “linguistic
formulation” has been used by this court, the district court,
and by the parties. Dyk Concurring Op. 8–10 & n.4–7. In
doing so, the concurrence provides nothing to further elu-
cidate what the “nothing more” test entails, and in my
view, makes the test even more confusing and uncertain.
The fact that the phrase “nothing more” has been employed
a few times in our recent § 101 jurisprudence provides little
insight into its scope and application as a legal test. These
scattered references, furthermore, provide little assurance
that any legal test is being applied consistently and in ac-
cordance with the principles set forth by the Supreme
Court in cases like O’Reilly. Indeed, the fact that “nothing
more” has begun to appear in our § 101 precedent only fur-
ther confirms that it would be prudent to review its appli-
cation now. I am left even more convinced that we should
hear this case en banc.
The majority’s reasoning also introduces further uncer-
tainty by blurring the line between patent eligibility and
enablement. While the eligibility inquiry may take into ac-
count whether a claim has “the specificity required to
transform a claim from one claiming only a result to one
claiming a way of achieving it,” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1167–68 (Fed. Cir. 2018) (emphasis
added) (collecting cases), the majority’s “how to” analysis
seems to go further, potentially incorporating a heightened
enablement requirement into § 101. In my view, a claim
can be specific enough to be directed to an application of a
law of nature—which is patent eligible—without reciting
how to perform all the claim steps. The majority’s conclu-
sion that claim 22 is ineligible demonstrates the flaws in
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its “how to” test. Even assuming that claim 22 applies
Hooke’s law (or any other unnamed law of nature), the
claim seems sufficiently specific to qualify as an eligible ap-
plication of that natural law. The claim identifies specific
variables to tune, including “a mass and a stiffness of at
least one liner.” U.S. Patent No. 7,774,911 col. 11 l. 31. It
requires that the tuned liner attenuate specific types of vi-
bration, including “shell mode vibrations” and “bending
mode vibrations,” and further requires that the tuned liner
is inserted in a “hollow shaft member.”
Id. at
col. 11 ll. 30–
36. With this level of specificity, claim 22 appears to be
properly directed to “the application of the law of nature to
a new and useful end,” not to the law of nature itself. Funk
Bros. Seed Co. v. Kalo Inoculant Co.,
333 U.S. 127, 130
(1948) (collecting cases). Yet this level of detail is insuffi-
cient in the majority’s view, and it remains unclear how
much more “how to” would have been sufficient to render
the claim eligible under the majority’s approach. Here too,
en banc review would provide an opportunity for the par-
ties and other stakeholders to address, and the full court to
consider, where eligibility analysis stops and enablement
analysis begins.
Beyond the uncertainty introduced by the majority’s
application of the “nothing more” and “how to” tests, the
result reached by the majority should also give us pause.
The majority invokes § 101 to hold ineligible a method for
manufacturing a drive shaft assembly for a car—a class of
invention that has historically been patent eligible. See,
e.g., Diehr, 450 U.S. at 184 (“Industrial processes . . . have
historically been eligible to receive the protection of our pa-
tent laws.”). In my view, the result in this case suggests
that this court has strayed too far from the preemption con-
cerns that motivate the judicial exception to patent eligi-
bility. The claims at issue here are far removed from the
canonical ineligible claim that “simply state[s] the law of
nature while adding the words ‘apply it.’”
Mayo, 566 U.S.
at 72 (citing Gottschalk v. Benson,
409 U.S. 63, 71–72
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6 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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(1972)). Indeed, the claims at issue do not recite any par-
ticular law of nature, much less preempt the use of Hooke’s
law in any particular context. Instead, they are directed to
a specific “method for manufacturing a shaft assembly”
with a liner that attenuates certain types of vibrations.
’911 patent col. 11 ll. 24–36. Even assuming that Hooke’s
law is required to tune the claimed liner (despite not being
mentioned anywhere in the specification or claims), so are
innumerable other laws of nature. And there remain innu-
merable ways to apply Hooke’s law to achieve the goal of
mitigating problematic vibrations in a shaft assembly—
perhaps, for instance, by using something other than a
liner tuned to attenuate at least two different kinds of vi-
brations.
I also believe that it is inappropriate for us to announce
this new “nothing more” test, and then resolve it on our
own when the resolution is subject to factual disputes. This
is particularly so here, on review of the district court’s sum-
mary judgment of ineligibility. As Judge Moore’s dissent
points out, significant evidence, including expert testi-
mony, contradicts the notion that the two types of vibra-
tions identified in the claims can be reduced by Hooke’s law
and “nothing more.” In my view, whether the claimed pro-
cess involves application of Hooke’s law, and whether it in-
volves “nothing more” than Hooke’s law, are both questions
of fact. Whether the claims in this case invoke Hooke’s law
is not purely a question of claim construction involving in-
trinsic evidence because nothing in the intrinsic evidence
even refers to Hooke’s law. As the Supreme Court has ex-
plained, we can evaluate certain evidence de novo (the in-
trinsic record, composed largely of legal documents), but we
must evaluate other evidence with deference due to fact
findings (everything extrinsic to the record, including ex-
pert testimony). See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 574 U.S. 318, 324–28 (2015). The scientific question
of whether Hooke’s law and “nothing more” reduces the two
types of vibration identified in the claims presents a
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question analogous to the conventionality of a particular
technology in eligibility analysis, inherency or anticipation
in prior art analysis, or the second (comparing) step in an
infringement analysis—all of which are factual inquiries.
See, e.g., Berkheimer v. HP Inc.,
881 F.3d 1360, 1368
(Fed. Cir. 2018) (the conventionality of a claim element is
a question of fact); Monsanto Tech. LLC v. E.I. DuPont
de Nemours & Co.,
878 F.3d 1336, 1342 (Fed. Cir. 2018)
(anticipation and inherent disclosure are questions of fact);
Ecolab, Inc. v. Envirochem, Inc.,
264 F.3d 1358, 1369
(Fed. Cir. 2001) (the comparing step of infringement anal-
ysis is a question of fact). If the “nothing more” test were
treated as involving questions of fact, as it should be, there
would be no question that this case would have to be va-
cated and remanded for fact development at the district
court.
Finally, I remain concerned about the practical effect
of the majority’s decision, notwithstanding its newly intro-
duced warning that its “holding should not be read as an
invitation to raise a validity challenge against any patent
claim that requires the application of an unstated natural
law.” Maj. 26. In one colorful example, amici suggest that
the majority’s original approach would have placed the
combustion engine at risk of ineligibility—a proposition
that would have seemed absurd just a few years ago, but
now seems eerily plausible. Law Prof. Br. 9. Although the
majority has dialed back its original decision to some de-
gree on panel rehearing, one can still reasonably ponder
whether foundational inventions like the telegraph, tele-
phone, light bulb, and airplane—all of which employ laws
of nature—would have been ineligible for patenting under
the majority’s revised approach. See, e.g., id. at 5–9; IPO
Ass’n Br. 9. Despite the majority’s cautionary language,
the uncertainty introduced by its analysis will likely invite
eligibility challenges to many other patents directed to me-
chanical inventions or otherwise. See Michel Br. 7 (“[I]f ‘in-
dustrial-process,’ physically-based patents like these are
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8 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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ineligible under Mayo/Alice, then seemingly every patent is
in ineligibility jeopardy.”). Without clear direction from
this court, the Patent Office and district courts will likely
reach inconsistent results when assessing the patent eligi-
bility of mechanical inventions. Inventors, the patent sys-
tem, and our innovation-focused economy will bear the cost
of the resulting unpredictability. See BIO Br. 7–9; USIJ
Br. 8–11.
En banc review would provide this court with an oppor-
tunity to hear from the parties and various stakeholders,
including the Patent Office, which deals with § 101 issues
on a daily basis, about how the judicial exception to patent
eligibility should apply in the context of mechanical and
other inventions that employ unnamed laws of nature. By
declining to rehear this case en banc, we have abdicated
our responsibility to address patent eligibility head on. In
the face of our unwillingness to consider patent eligibility
as a full court, 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.”
Alice, 573 U.S. at 217 (citing
Mayo, 566 U.S. at 70–73). I
respectfully dissent.
Case: 18-1763 Document: 133 Page: 42 Filed: 07/31/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
O’MALLEY, Circuit Judge, with whom NEWMAN, MOORE,
and STOLL, Circuit Judges, join, dissenting from the de-
nial of the petition for rehearing en banc.
The revised majority opinion issued today attempts to
address the many concerns raised by American Axle &
Manufacturing, Inc. (“American Axle”) and the half-dozen
amici curiae who objected to the substance of the majority’s
original opinion. It does this, however, with little concern
for proper process—instead achieving its chosen result by
whatever means it could conjure. The Advisory Committee
on Appellate Rules recently forwarded to all Courts of Ap-
peals a letter from the American Academy of Appellate
Lawyers (“the Academy”). The Academy’s letter proposed
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a rule that would require us, as an appellate court, to “give
notice [when] considering a previously unaddressed ground
and provide [the parties] an opportunity to brief it.” Letter
from the Academy to Hon. Michael Chagares, Chair Fed-
eral Advisory Committee on Appellate Rules (April 26,
2019), available at https://www.appellateacademy.org/pub-
lications/Chagares_proposal.pdf. The Advisory Commit-
tee’s cover letter noted a growing belief among appellate
lawyers that Courts of Appeals have shown an increasing
tendency to decide questions on grounds that were neither
argued before the district court nor briefed on appeal. The
Advisory Committee explained that it felt the Academy’s
concerns were legitimate, but decided that, rather than im-
plement a mandate, it would ask Courts of Appeals, includ-
ing this one, to voluntarily correct course. It is my hope
that we, as an institution, will rise to the Advisory Com-
mittee’s challenge. 1 Thus, while I share all the substantive
and policy concerns raised by Judge Newman, Judge Moore
and Judge Stoll in their dissents, I write separately to em-
phasize the procedural norms that the majority ignores.
The problems I perceive with the majority opinion are
threefold: (1) it announces a new test for patentable subject
matter at the eleventh hour and without adequate briefing;
(2) rather than remand to the district court to decide the
issue in the first instance, it applies the new test itself; and
(3) it sua sponte construes previously undisputed terms in
a goal-oriented effort to distinguish claims and render
them patent ineligible, or effectively so. These obstacle-
1 I confess that I have not always stayed on the cor-
rect side of the line the Academy would have us draw. That
does not free me from the obligation to work harder in the
future to avoid deciding cases on unbriefed grounds. And
it should not free us as an institution from attempting to
rein in egregious instances where our colleagues cross that
line.
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avoiding maneuvers fly in the face of our role as an appel-
late court.
First, the majority announces that a claim is patent in-
eligible if it “clearly invokes a natural law, and nothing
more, to accomplish a desired result.” Maj. 19. The major-
ity contends that this statement of law stems directly from
a 19th century Supreme Court case, O’Reilly v. Morse, 56
U.S. 62 (1853). As Judge Stoll explains in her dissent, how-
ever, this case does not present a clear-cut application of
O’Reilly. It is, instead, an expansion that would likely ren-
der ineligible claims found patent eligible by the O’Reilly
court itself. Despite this, the majority forges on, adopting
a test that was proposed by no one. One might ask why, if
appellate judges will reach their desired result regardless
of outside input and untethered from the arguments of oth-
ers, we should bother with the dog and pony show of the
full development of a trial record or our admonition to raise
all issues in one’s appellate briefs or suffer waiver? Just as
the majority was persuaded by the outcry of the public in
response to the original opinion, it may have benefited
from, or even changed course in view of, comments on this
new test. The parties and the public should have been
given a chance to weigh in.
Second, the majority’s choice to apply its new test to
this case, again without briefing, is troubling. As Judge
Moore and Judge Stoll each explain, the “nothing more”
test presents factual questions. Does the claim clearly in-
voke a natural law? Which one? How do we know there is
nothing more? Where, as here, the claims say nothing
about any natural law, these are scientific questions that
must be answered by reference to expert testimony—testi-
mony which, as developed to date in this case, does not an-
swer these questions as the majority now does. While the
district court made some general statements about Hooke’s
Law and friction damping, it was not applying the test ar-
ticulated by the majority today. The district court opinion
makes no mention of O’Reilly and certainly did not find
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4 AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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“nothing more.” See Am. Axle & Mfg., Inc. v. Neapco Hold-
ings LLC, 309 F. Supp. 3d 218, 225 (D. Del. 2018). Given
this, at minimum the majority should have remanded with
an instruction for the district court to consider the factual
record and decide the issue in the first instance. Or, as-
suming arguendo that the majority is correct to treat this
as question of law, it should have remanded for the district
court to consider the issue afresh using that lens. It seems
that the majority was just too deep in the § 101 hole it orig-
inally dug to give up control. Thus, rather than follow the
prudent path, the majority took it upon itself to invalidate
these claims today. The decision ignores that we are a
court of review and steps far outside the bounds of our role
as appellate judges.
Finally, the majority’s treatment of claim 1 is perhaps
most emblematic of the concerns raised by the Academy.
Sua sponte, and without the aid of supplemental briefing,
the majority construes claims 1 and 22 to have a patentably
distinct difference—“inserting” versus “positioning” of the
claimed liner. Maj. 25 n.13. No one argued that these
terms are meaningfully, much less patentably, different
and no one asked the trial court to compare or assess them.
While the majority points out that no one argued the terms
share the same meaning, that is irrelevant and unsurpris-
ing. That the parties failed to raise this argument only un-
derlies that this was not an important issue, either before
the district court or on appeal. The majority uses the minor
wording difference as a hook and notes that claim 1 is
“more general” than claim 22, so that it can set up the
framework for an abstract idea-based § 101 decision. It
then remands to the district court to effectuate that goal,
even though this issue was not argued to the district court
in the first instance. Maj. 24–26. This unrequested second
chance for Neapco Holdings LLC is unwarranted and
leaves American Axle trapped in § 101 purgatory. It is not
our role as an appellate court to direct the litigation
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strategy of the parties or to pressure the district court into
invaliding claims on grounds never argued to it before.
The active judges of this Court were evenly divided,
6-6, in our vote on whether to take this case en banc based
on the serious substantive concerns the new majority opin-
ion raises. In such circumstances, important institutional
concerns such as the ones discussed above should push the
vote over the line. I respectfully dissent from the full
Court’s unwillingness to put us back on course and force
adherence to the limitations imposed on us as a court of
review.
