Dyk, Circuit Judge.
American Axle & Manufacturing, Inc. ("AAM") sued Neapco Holdings LLC and Neapco Drivelines LLC (collectively, "Neapco") alleging infringement of claims of U.S. Patent No. 7,774,911 ("the '911 patent").
I
The '911 patent generally relates to a method for manufacturing driveline propeller shafts ("propshafts") with liners that are designed to "attenuat[e] ... vibrations transmitted through a shaft assembly." '911 patent, col. 1, ll. 6-7. Propshafts are "employed [in automotive vehicles] to transmit rotary power in a driveline." Id. col. 1, ll. 38-39. Because these propshafts are typically made of a "relatively thin-walled steel or aluminum tubing [they] can be receptive to various driveline excitation sources." Id. col. 1, ll. 40-42. These excitation sources, in turn, can cause the propshaft to vibrate in three modes: bending mode, torsion mode, and shell mode. Id. col. 1, ll. 42-44. The '911 patent describes these vibration modes as follows:
Id. col. 1, ll. 44-52. These vibration modes correspond to different frequencies. Because such vibrations cause undesirable noise, "techniques [had, prior to the '911 patent,] been employed to attenuate vibrations in propshafts including the use of weights and liners." Id. col. 1, ll. 53-54.
AAM agreed that "[t]he methods for determining natural frequencies and damping are well known in the art." AAM Op. Br. 8. Some of these are described in the specification. Those techniques include "the use of weights and liners." Id. col. 1, l. 54. Elaborating, the patent first describes the use of "plugs or weights" that are inserted to frictionally engage a propshaft to damp certain vibrations. Id. col. 1, l. 53-col. 2, l. 4. It then describes several priorart dampers and "hollow liners." See, e.g., id. col. 2, ll. 5-37; col. 6, ll. 49-53. The specification describes prior art hollow liners as tubes made of a fibrous material (like cardboard) with outer resilient members that "frictionally engage the inner diameter of the [propshaft]." Id. col. 6, ll. 56-65.
Two types of attenuation are relevant here: resistive attenuation and reactive attenuation. "[R]esistive attenuation of vibration refers to a vibration attenuation means that deforms as vibration energy is transmitted through it ... so that the vibration attenuation means absorbs ... the vibration energy." Id. col. 1, ll. 61-65. A liner that is properly tuned to attenuate shell mode vibration through resistive attenuation "matches" the shell mode vibration (i.e., a particular natural frequency) of the propshaft such that it absorbs, through friction damping, the shell mode vibration of the propshaft. J.A. 1933, 2000-02. "[R]eactive attenuation of vibration refers to a mechanism that can oscillate in opposition to the vibration energy [of the propshaft]
According to the '911 patent's specification, prior art weights, dampers, and hollow liners that were designed to individually attenuate each of the three propshaft vibration modes—bending, shell, and torsion —already existed. '911 patent, col. 1, l. 53-col. 2, l. 38. But these prior art damping methods were assertedly not suitable for attenuating two vibration modes simultaneously. See id. Thus, the patent identified "a need in the art for an improved method for damping various types of vibrations in a hollow shaft" that "facilitates the damping of shell mode vibration as well as the damping of bending mode vibration" simultaneously. Id. col. 2, ll. 39-43. AAM argues that the invention is the tuning of a liner in order to produce frequencies that dampen both the shell mode and bending mode vibrations simultaneously. It argues as well on appeal that the use of liners to dampen bending mode vibration is itself inventive.
The district court treated independent claims 1 and 22 of the '911 patent as representative of the asserted claims (claims 1-6, 12, 13, 19-24, 26, 27, 31, 34-36). Those two claims recite methods of manufacturing:
'911 patent, col. 10, ll. 10-27; id. col. 11, ll. 24-36.
AAM sued Neapco on December 18, 2015, alleging infringement of the '911 patent. The parties filed cross-motions for summary judgment as to patent eligibility under § 101. On February 27, 2018, the district court granted Neapco's motion for summary judgment, and denied AAM's cross-motion. Applying the two-step analysis of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014), the court held that the asserted claims of the '911 patent are invalid because they claim ineligible subject matter under § 101.
The district court construed the claim 1 limitation "tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member" to mean "controlling
At step 1 of the Mayo/Alice analysis, the district court concluded that the Asserted Claims, "considered as a whole," are "directed to the mere application of Hooke's law," treating claims 1 and 22 as representative. J.A. 4-5, 11. The district court held that the claims' direction to tune a liner to attenuate different vibration modes amounted to merely "instruct[ing] one to apply Hooke's law to achieve the desired result of attenuating certain vibration modes and frequencies" without "provid[ing] [a] particular means of how to craft the liner and propshaft in order to do so." J.A. 17. The district court made no distinction between claims 1 and 22 in its analysis. See J.A. 15 n.3.
Hooke's law is an equation that describes the relationship between an object's mass, its stiffness, and the frequency at which the object vibrates. Friction damping is a natural phenomenon whereby damping "occur[s] due to the resistive friction and interaction of two surfaces that press against each other as a source of energy dissipation." J.A. 1604.
At step 2 of the Mayo/Alice analysis, the district court determined that the claimed "additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community... and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately." J.A. 16 (quoting Mayo, 566 U.S. at 79-80, 132 S.Ct. 1289). The district court concluded that the claims were not patent eligible. Id.
AAM appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We review a district court's grant of summary judgment de novo, applying the same test on review that the district court applied. Summary judgment is appropriate where "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The issue of patent eligibility under § 101 is a question of law, reviewed de novo. In re BRCA1- and BRCA2- Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 759 (Fed. Cir. 2014). "While patent eligibility is ultimately a
DISCUSSION
Section 101 provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" may be eligible to obtain a patent. 35 U.S.C. § 101. But the Supreme Court has long recognized that § 101 "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 133 S.Ct. 2107, 186 L.Ed.2d 124 (2013) (brackets omitted) (quoting Mayo, 566 U.S. at 70, 132 S.Ct. 1289). The Supreme Court has stated that "without this exception, there would be considerable danger that the grant of patents would `tie up' the use of such tools and thereby `inhibit future innovation premised upon them.'" Id. (quoting Mayo, 566 U.S. at 73, 132 S.Ct. 1289).
Our analysis of § 101 follows the Supreme Court's two-step test established in Mayo and Alice. At step one of the Mayo/Alice test, we ask whether the claims are directed to a law of nature, natural phenomenon, or abstract idea. Alice, 573 U.S. at 217, 134 S.Ct. 2347 (citing Mayo, 566 U.S. at 77, 132 S.Ct. 1289). If the claims are so directed, we then ask whether the claims embody some "inventive concept"—i.e., whether the claims contain "an element or combination of elements that is `sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.'" Id. at 217-18, 134 S.Ct. 2347 (brackets omitted) (quoting Mayo, 566 U.S. at 72-73, 132 S.Ct. 1289).
We conclude that independent claim 22 of the '911 patent is patent ineligible under section 101 because it simply requires the application of Hooke's law to tune a propshaft liner to dampen certain vibrations. Independent claim 36 and asserted claims that depend from claim 22 are also ineligible. Because claim 1 also requires "positioning" in addition to tuning and may reflect a broader definition of tuning, we remand to the district court to address the eligibility of claim 1 and its dependent claims in the first instance.
I. CLAIM 22
We first address claim 22.
A
To determine what a claim is "directed to" at step one, we look to the "focus of the claimed advance." See, e.g., Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).
The Supreme Court's cases focus on the claims, not the specification, to determine section 101 eligibility. As the Supreme Court said in Mayo: "We must determine whether
Similarly, we have repeatedly held that features that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis. See, e.g., ChargePoint, 920 F.3d at 769 ("[A]ny reliance on the specification in the § 101 analysis must always yield to the claim language.... [T]he specification cannot be used to import details from the specification if those details are not claimed."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) ("The § 101 inquiry must focus on the language of the Asserted Claims themselves."); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (rejecting an alleged inventive concept because it was "not the invention
In contrast to a number of other natural law cases, the patentee here does not even claim to have discovered a previously unknown natural law. Instead, it defines a goal ("tuning a liner" to achieve certain types of vibration attenuation). Claim 22 explicitly provides for "tuning a mass and a stiffness of at least one liner." '911 patent, col. 11, l. 31. Under the district court's construction, "tuning a mass and a stiffness of at least one liner" in claim 22 means "controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies." J.A. 15, 1047. Thus, claim 22
In arguing that patent claim 22 does not merely claim a result and so is not directed to whatever natural laws make the result possible, AAM does not dispute that Hooke's law mathematically relates the mass and/or stiffness of an object to the frequency with which that object oscillates (vibrates). In fact, both parties' witnesses agree that Hooke's law undergirds the design of a liner so that it exhibits a desired damping frequency pursuant to the claimed invention. For example, Neapco's expert, Dr. Becker, stated that "the phrase `tuning a mass and a stiffness of at least one liner' claims Hooke's law." J.A. 1604. Dr. Sun, one of the named inventors of the '911 patent, stated in his deposition:
J.A. 1757 (92:15-25). AAM's engineering manager likewise admitted that "if [one] do[es] something to control the stiffness [or mass]" of a liner—the variables directly implicated by Hooke's law—that person is "directly controlling tuning." J.A. 2547 (20:23-21:1).
Rather, AAM asserts that tuning a liner such that it attenuates two different vibration modes (or just dampens bending mode vibrations) is complicated in practice, involving more than simple application of Hooke's law. AAM Op. Br. 19 ("Complicated objects—such as propshaft liners—cannot be simplified to a single degree-of-freedom massspring damper such that their behavior is governed simply by Hooke's law."); see also id. at 39-41, 43. AAM insists that the process of tuning a liner according to natural laws may involve extensive computer modelling, including finite element analysis ("FEA"), and experimental modal analysis (that is, trial and error).
But neither established processes nor "improved" processes for implementing
To be clear, we do not suggest that such specific novel computer or experimental processes could not be claimed. This case would be significantly different, if, for example, specific FEA models were included in claim 22. But they are not. What is missing is any physical structure or steps for achieving the claimed result. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work.
The breadth of claim 22 is illustrated by the testimony of AAM's expert "that tuning involves controlling the characteristics (e.g., mass and stiffness) of the liner through, for example, its design, manufacturing, and installation to reduce vibration at a relevant frequency," J.A. 169, and by AAM's admission during the claim construction hearing, where AAM argued one could infringe claim 22 of the '911 patent by whatever means will achieve the result "[e]ven if you didn't try to [tune] and didn't know you did it." J.A. 699. Thus, the problem is that claim 22's instruction to tune a liner essentially amounts to simply claiming a result.
B
Claiming a result that involves application of a natural law without limiting the claim to particular methods of achieving the result runs headlong into the very problem repeatedly identified by the Supreme Court in its cases shaping eligibility analysis. See Mayo, 566 U.S. at 71-73, 132 S.Ct. 1289; Parker v. Flook, 437 U.S. 584, 590-95, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94-101, 59 S.Ct. 427, 83 S.Ct. 506 (1939); O'Reilly v. Morse, 56 U.S. (15 How.) 62, 112-17, 14 S.Ct. 601 (1853). The Supreme Court has long held that claims that state a goal without a solution are patent ineligible. As early as Le Roy v. Tatham, 55 U.S. (14 How.) 156, 14 S.Ct. 367 (1852), the Court held that claiming a concept without the particular steps of carrying it out "would
Our cases as well have consistently rejected such claims as unpatentable. As "reflected repeatedly 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." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (collecting cases).
While many of these cases involved the abstract idea category, the same principle necessarily applies in natural law cases. In Mayo, the Court concluded that "to transform an unpatentable law of nature into a patent-eligible
The Supreme Court's decisions in Le Roy and O'Reilly may be viewed as applying this principle in the natural law context. For example, in O'Reilly v. Morse, 56 U.S. (15 How.) 62, 14 S.Ct. 601 (1853), the Supreme Court held claim for "use of the motive power of the electric or galvanic current ... for marking or printing intelligible characters ... at any distances" ineligible because "it matter[ed] not by what process or machinery the result [wa]s [to be] accomplished." Id. at 113-20. Both claim 8 in O'Reilly and claim 22 here recite a natural law (electromagnetism in O'Reilly and Hooke's law here) and a result to be achieved (printing characters at a distance in O'Reilly and producing a liner to dampen specific vibrations). And just as claim 8 in O'Reilly did not recite any engineering or techniques to achieve this result, claim 22 likewise provides no details. Thus, claim 22, like claim 8 in O'Reilly, is directed to a natural law because it clearly invokes a natural law, and nothing more, to accomplish a desired result.
More recently, the Supreme Court's decision in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978), also exemplified this principle. In Flook, the Supreme Court considered the patent eligibility of a method for updating alarm limits during catalytic conversion processes. 437 U.S. at 585, 98 S.Ct. 2522. The method involved an initial step of measuring temperature, a second step of using a formula to calculate an updated alarm-limit value, and a final step in which the alarm limit is adjusted to the updated value. Id.; see also id. at 596-98, 98 S.Ct. 2522 (quoting and describing claim). What was missing from the claimed method reflected what was missing from the patent application as a whole, which "d[id] not purport to explain how to select ... any of the ... variables" involved, or "purport to contain any disclosure relating to the chemical process at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system." Id. at 586, 98 S.Ct. 2522.
The Court in Flook held that the claimed method contained no patent-eligible invention. Id. at 594, 98 S.Ct. 2522. Though the Court recognized that the use of a mathematical formula or law of nature did not alone make a claim patent ineligible, it explained that what was required was "an inventive application of the principle." Id. at 593-94, 98 S.Ct. 2522. Such an
Diehr, on the other hand, involved a situation in which a patent application claimed a new and specific process of molding rubber products "which incorporate[d] in it a more efficient solution of the [Arrhenius] equation" (a natural law). 450 U.S. at 188, 101 S.Ct. 1048. Though the Supreme Court in Diehr explained that a mathematical formula itself was not patent eligible subject matter, it concluded that the alleged invention claimed in that case was patent eligible. The invention involved a new rubber-curing process with a specific and detailed series of steps (one of which included the use of a natural law) that limited the possibility of preempting the natural law itself. Id. at 187-88, 191-92, 101 S.Ct. 1048. In Diehr, unlike this case, "[t]hese other steps apparently added to the formula something that in terms of patent law's objectives had significance— they transformed the process into an inventive application of the formula." Mayo, 566 U.S. at 81, 132 S.Ct. 1289 (discussing Diehr, 450 U.S. at 187, 101 S.Ct. 1048). Nevertheless, the Court reaffirmed Flook's teaching that "[a] mathematical formula does not suddenly become patentable subject matter simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use" nor through the addition of "token postsolution activity." Diehr, 450 U.S. at 191-92 & n.14, 101 S.Ct. 1048.
Like the claims in Flook, claim 22 of the '911 patent is directed to the use of a natural law: Hooke's law. As in Flook, where the claimed method did not specify how variables were measured or how the alarm system functioned, claim 22 here does not specify how target frequencies are determined or how, using that information, liners are tuned to attenuate two different vibration modes simultaneously, or how such liners are tuned to dampen bending mode vibrations. Claim 22 here simply instructs the reader to tune the liner to achieve a claimed result, without limitation to particular ways to do so. This holding as to step 1 of Alice extends only where, as here, a claim on its face clearly invokes a natural law, and nothing more, to achieve a claimed result.
C
As to Mayo/Alice step 2, nothing in claim 22 qualifies as an "inventive concept" to transform it into patent eligible matter. AAM contends that claim 22 includes numerous inventive concepts that were neither previously known, nor conventional or routine. AAM's arguments in this respect essentially amount to an assertion that prior to the '911 patent, liners had never been tuned to damp propshaft vibrations or, at least, had not been used to damp two different vibration modes simultaneously (or perhaps just to damp
Claim 22 discloses no other inventive concept. The real inventive work lies in figuring out how to design a liner to damp two different vibration modes simultaneously, and no such inventive work is recited in claim 22. The remaining steps of claim 22, like the steps involved in the Flook patent, amount to no more than conventional pre- and post-solution activity. There is no other inventive concept at step two in the claims and no dispute of any material fact.
Claim 22 is not patent eligible. Claim 36
II. CLAIMS DEPENDING FROM CLAIM 22
Having determined that independent claim 22 is not patent eligible under § 101, we need not separately determine eligibility of the asserted dependent claims. The district court found independent claim 22 collectively representative of all claims dependent from this claim. AAM did not argue before the district court that the dependent claims change the outcome of the eligibility analysis. Nor did AAM make such an argument in its opening brief on appeal.
III: CLAIM 1
Claim 1 is different from claim 22. While it is true that both claims require "tuning," claim 1 is more general. It requires "tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member." '911 patent, col. 10, ll. 19-28. The district court construed this term to mean "controlling
In light of the district court's construction of claim 1, which requires only controlling characteristics and positioning the liner, we cannot conclude that it is merely directed to Hooke's law. In contrast with claim 22, which as construed recites nothing more than a desired result and an instruction to apply Hooke's law, we cannot say claim 1 as construed is directed to a particular natural law and nothing more. The mere fact that any embodiment practicing claim 1 necessarily involves usage of one or more natural laws is by itself insufficient to conclude the claim is directed to such natural laws. The district court's opinion suggests that the broader concept of tuning is an abstract idea, J.A. 16-17, and the same question may be raised about the broad concept of positioning. On appeal, Neapco relied on both the natural
IV
Some brief response to the dissent is required.
First, contrary to the dissent, we are not "depart[ing] from existing § 101 precedent," Dissent Op. 1309, but rather faithfully following it in the narrow circumstances of this case.
Second, the dissent argues that "[o]ne important difference between this natural law case and every other one ever decided is that these claims do not actually recite any particular natural law." Dissent Op. 1307. One problem with this argument is its characterization of this case as not involving a recitation of the natural law. Claim 22 expressly requires varying frequency attenuation (tuning) based on mass and stiffness, as the dissent recognizes (Dissent Op. 1317 (under claim 22, "the liner is tuned to a given frequency by adjusting its mass and stiffness")). As is undisputed, what Hooke's law does is precisely to relate frequency to mass and stiffness. See supra at 1291. In all but name, therefore, claim 22 recites Hooke's law. To be clear, however, our 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; our ruling as to claim 1 should make that clear enough. Rather, our holding is limited to the situation where a patent claim on its face and as construed clearly invokes a natural law, and nothing else, to accomplish a desired result.
There is, moreover, a more fundamental problem with the dissent's argument about claim recitation of a natural law. It is true that in Mayo and many other cases the natural law itself was stated in the claim. See, e.g., Mayo, 566 U.S. at 74-75, 132 S.Ct. 1289. But the longstanding rejection of eligibility for a claim to a "result" or "effect," see Diehr, 450 U.S. at 182 n.7, 101 S.Ct. 1048; Corning, 56 U.S. at 268; Le Roy, 55 U.S. at 175, is not limited to claims that also state the natural law that produces the result or effect. Moreover, nothing in Mayo or any other case suggests that the natural law exception requires an express claim recitation of a natural law: the analysis is a substantive one about whether the claim is "directed to" ineligible matter and, if so, whether there is enough other than the ineligible matter itself to create eligibility. See Alice, 573 U.S. at 217-18, 134 S.Ct. 2347; Mayo, 566 U.S. at 72-73, 77, 132 S.Ct. 1289. If patentees could avoid the natural law exception by failing to recite the law itself, patent eligibility would depend upon the "draftsman's art," the very approach that Mayo rejected. Id. at 72, 132 S.Ct. 1289. Significantly, both Mayo and O'Reilly rely on a foundational English case, Neilson v. Harford, Webster's Patent Cases 295, 371 (1841), which involved this very situation, where the patent did not recite the natural law, because the inventor was "not aware of the nature and principle of his discovery." Id. at 344. "[T]he principle," "regarded as well known," "that hot air would promote the ignition of fuel better than cold," was not in the patent but was "embodied
Third, the dissent criticizes our analysis as improperly merging enablement and eligibility, arguing that the failure of the claims to designate how to achieve the desired result is exclusively an issue of enablement. Dissent Op. 1315-18. But we think the criticism rests on a failure to distinguish two different "how" requirements in patent law. The first such requirement, that of eligibility, is that the claim itself (whether by its own words or by statutory incorporation of specification details under section 112(f)) must go beyond stating a functional result; it must identify "how" that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim. The Supreme Court has so required dating back at least to the Court's rejection of Morse's claim 8 in O'Reilly v. Morse, and this requirement is an eligibility requirement we have applied repeatedly, as explained above.
The second, distinct "how" requirement applies to the specification, not the claim: once the required concrete physical structures or actions are set out in the claim, the specification must set forth enough information for a relevant skilled artisan to be able to make and use the claimed structures or perform the claimed actions. This is the enablement requirement, which is distinct from the eligibility requirement.
Fourth, the dissent argues that "[n]o party introduced evidence that the desired result of claim 22 (reducing two types of vibration) is accomplished by application of Hooke's law
As the dissent observes, the "directed to" inquiry does not look for all natural laws that are "involved" in a claimed method. Dissent Op. 1307-08. Yet that is the most one can say about friction damping in the language of claim 22. What claim 22 says is that "tuning a mass and stiffness of at least one liner" achieves both the attenuations stated in the "wherein" clauses— each of which requires a "tuned" liner.
Neapco has noted that friction damping is involved in a liner's functioning as "a tuned resistive absorber for attenuating shell mode vibrations," but AAM has consistently taken the position that the invention is the "tuning" that achieves this claimed result. AAM Op. Br. 13 ("The American Axle inventors ... conceiv[ed] of the novel and unconventional concept of `tuning' a liner to damp specific propshaft vibration modes." (emphasis added)).
Moreover, AAM could gain nothing by saying that claim 22 is directed to both Hooke's law and friction damping. That assertion would simply leave it with a claim directed to two identified natural laws. J.A. 11 (quoting AAM's expert, at J.A. 1930, stating that friction damping "is a property of physics experienced by any two surfaces in contact"). If claim 22's language could be properly interpreted in a way such that it invokes friction damping as it does with Hooke's law, the claim would still on its face clearly invoke natural laws, and nothing more, to achieve a claimed result.
Finally, the dissent argues that the majority rejected AAM's step two arguments "with no explanation at all" and that "[i]t is inconsistent with precedent to hold claims ineligible without analyzing the step two arguments." Dissent Op. 1314. The majority does apply step two. What it concludes is what this court has elsewhere concluded on earlier occasions: the only asserted "inventive concept" is ineligible subject matter. See BSG Tech, 899 F.3d at 1290; Trading Techs., 921 F.3d at 1385; ChargePoint, 920 F.3d at 775.
CONCLUSION
We affirm as to claim 22 and its asserted dependent claims, and as to claim 36, which claim ineligible subject matter under § 101. We vacate as to claim 1 and its dependent claims and remand for further proceedings consistent with this opinion.
COSTS
No costs.
Moore, Circuit Judge, dissenting.
The majority's decision expands § 101 well beyond its statutory gate-keeping function and collapses the Alice/Mayo two-part test to a single step—claims are now ineligible if their performance would involve application of a natural law. The majority makes three critical errors of law and in doing so, has inflated § 101 beyond the statutory language and Supreme Court precedent. First, the majority finds claims directed to natural laws, yet they clearly contain no such natural law. The majority creates a new test for when claims are directed to a natural law despite no natural law being recited in the claims, the Nothing More test. The majority refuses to ask the parties for supplemental briefing on the application of its new Nothing More test or to remand to the district court to assess the applicability of the new test in the first instance. The majority instead holds that we appellate judges, based on our background and experience, will resolve questions of science de novo on appeal.
The claims at issue contain a specific, concrete solution (inserting a liner inside a propshaft) to a problem (vibrations in propshafts). Although some degree of trial and error in modifying the mass, stiffness, and location of the liner to optimize the reduction in vibration of a given shaft could (if undue) create an enablement concern, that is not a § 101 problem. American Axle (AAM) and the many amici believe each of these errors of law are likely to create confusion for the district courts and to expand § 101 profoundly.
The majority claims this is a narrow decision—I think not. This case turns the gatekeeper into a barricade. Unstated natural laws lurk in the operation of every claimed invention. Given the majority's application of its new test, most patent claims will now be open to a § 101 challenge for being directed to a natural law or phenomena.
Finally, though not a legal question, I am troubled by the deprivation of property rights without due process. The majority declares claims representative despite the fact that no party argued below or to this court that there were representative claims, and AAM argued the import to the § 101 analysis of dependent claim limitations throughout these proceedings. And the majority finds against the patentee by reaching a claim construction issue of the majority's own creation. The majority concludes, though no party argued it at any point in this litigation or appeal, that the claim terms "positioning" and "inserting" have different meanings. And only because of its newly proffered, completely sua sponte construction, claim 22 is deemed ineligible. There is simply no justification for the majority's application of its new Nothing More test other than result-oriented judicial activism. This is fundamentally unfair. I dissent from this unprecedented expansion of § 101.
I. THESE CLAIMS ARE NOT DIRECTED TO A NATURAL LAW
A. The majority's expansion of "directed to"
The '911 patent, directed to a method of manufacturing a drive shaft assembly for a car, is the type of traditional manufacturing patent of automotive parts which has been eligible for patent protection since the invention of the car itself. "Industrial
The majority's holding that these claims to manufacturing an automotive drive shaft are ineligible has sent shock waves through the patent community. "It's unthinkable the courts found this invention, a manufacturing process for making a key automotive part, as patent ineligible." Rep. Doug Collins. American Axle is a "poster child for how the current test for patent eligibility is being applied to reach rather absurd results." Perry Cooper, Ball in Federal Circuit's Court on Patent Eligibility Clarity, Bloomberg News (Jan. 30, 2020) (quoting Professor David Taylor). "[I]f `industrial-process,' physically-based patents like these are ineligible under Mayo/Alice, then seemingly every patent is in ineligibility jeopardy." Michel Br. at 7. "`The optics are challenging for this, because you're talking about a way to make a drive shaft for a car, and that sounds like the kind of thing that's been getting patented for 100 years,' ... The decision brings to the foreground an issue that has been bubbling in patent eligibility cases for some time, which is that every invention at some level operates according to natural laws." Ryan Davis, Drive Shaft Ruling May Expand Challenges to Patent Eligibility, Law 360 (Oct. 24, 2019). "This is a specific, practical application of the laws of thermodynamics in an industrial process—an innovative process deemed patentable by the courts since the nineteenth century." Law Profs. Br. at 4. See also Michael Cicero, Patent Ineligibility Defense Expands to Mechanical Subject Matter, Bloomberg News (Dec. 4, 2019); Jonathan Osha, American Axle: The Latest Twist of Patent Eligibility Oshaliang Newsletter (Oct. 17, 2019) (American Axle is "a new low in patent eligibility jurisprudence... if a method of manufacturing a propeller shaft is not eligible subject matter, it is difficult to imagine where a future line might be drawn.").
In this case, the natural law which the claims are purportedly directed to has been a constantly moving target. Neapco argued and its expert testified that claim 22 was directed to the application of two natural laws working together to achieve the claimed reductions in vibration: Hooke's law (which reduces bending mode vibration) and friction damping (which reduces shell mode vibration). The district court held that claim 22 is directed to "law
Neapco Br. at 56 (emphasis in original). The prior majority opinion in this case explained that the claimed invention is
Changing course on rehearing, the majority now concludes claim 22 is directed to Hooke's law and only Hooke's law "because it simply requires the application of Hooke's law to tune a propshaft liner to dampen certain vibrations." Maj. at 1292. And revising history, the majority now claims that the district court itself held that the claims were directed to Hooke's Law and nothing more. Maj. at 1291. This is contrary to both parties' understanding about the district court's holding and the majority's own prior conclusion about the district court's holding:
Prior Maj. at 1291. Attempting to revise history is not good: "The past was erased, the erasure was forgotten, the lie became the truth." GEORGE ORWELL, 1984.
1. The majority's holding conflicts with precedent
The majority's holding is in direct conflict with our precedent and a dramatic expansion of § 101. As we have explained,
Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations omitted). "[A]t step one, it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is directed to." ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (internal citations omitted). A claim is not directed to a natural law simply because it touches upon, implicates, uses or involves a natural law.
The majority cites Diehr, Flook, O'Reilly, and Mayo as supporting its conclusion that these claims are directed to a natural law. But, in each of those cases, the natural law was undeniably, expressly articulated in the claim. "When a claim recites a mathematical formula (or scientific principle or phenomena of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract." Maj. 1297 (quoting Diehr). One important difference between this natural law case and every other one ever decided is that these claims do not actually recite any particular natural law and likely implicate many (as all mechanical inventions must comply with the laws of physics).
Claim 22 does not recite a natural law, about that there can be no doubt. Hooke's law is not mentioned by name or formula anywhere in the claims, specification or prosecution history. The majority overcomes this defect by articulating a new test (the Nothing More test) for when a claim is directed to a natural law despite not reciting one:
Maj. at 1298. The majority explains that claim 22 is directed to Hooke's law because the tuning element in claim 22 includes "controlling the mass and stiffness ... Thus, claim 22 requires use of a natural law." Maj. at 1293-94. Every mechanical invention requires use and application of the laws of physics. It cannot suffice to hold a claim directed to a natural law simply because compliance with a natural law is required to practice the method.
Section 101 is monstrous enough, it cannot be that use of an unclaimed natural law in the performance of an industrial process is sufficient to hold the claims directed to that natural law. The majority's only citation in support of this dramatic expansion of our law is an English case from 1841, Neilson v. Harford, Webster's Patent Cases 295, 371 (1841). There was no claim in Neilson as claiming practice did not exist and the English court actually held the patent eligible: "the plaintiff does not merely claim a principle, but a machine embodying a principle." Id.
The majority also attempts to justify its result by comparing claim 22 to claim 8 in O'Reilly. Claim 8 in O'Reilly reads:
56 U.S. (15 How.) 62, 112 (1854). The Supreme Court held claim 8 ineligible because the claim was not limited to "specific machinery or parts of machinery described," but instead claimed electromagnetism [(the natural phenomenon was actually articulated in the claim)] developed by any means to mark or print at any distance. Id. The Supreme Court's concern was not, as the majority contends, that an artisan would not know "how" to print at any distance using electromagnetism. The concern was that Morse's claim 8 was not limited to any specific "process or machinery," and that the expressly limitless claim would preclude "some future inventor ... [who] discover[s] a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification" from practicing his invention. Id. at 112-113. Unlike Morse claim 8, claim 22 does not
Amici are understandably troubled, as am I, by the majority's departure from existing § 101 precedent. "The panel seems to conclude that step one can be satisfied even if the natural law, or laws, at issue are not identified.... General and non-specific statements should not be enough to satisfy step one." IPO Br. at 8-9. "The specification invokes Hooke's Law no more than it does the law of gravity ... the majority elected to sweep into its analysis one or more unidentified natural laws in addition to Hooke's Law in order to assert that the claims were indeed `directed to' some number of natural laws." BIO Br. at 6. "Just because an invention operates according to laws of nature (as all inventions must) cannot mean that it is `directed to' these laws." BIO Br. at 7.
2. The majority's new Nothing More test leaves the science to the appellate judges to decide de novo
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. The majority has concluded that on appeal, as a matter of law, we judges can decide as a matter of physics whether claim 22's results—attenuating two types of vibration—are accomplished by Hooke's law and nothing more. To say this feels like a bit of an overreach is an understatement. Today, contrary to all arguments in the case, the record, the district court's decision, and its own prior opinion, the majority concludes that claim 22 is directed to "Hooke's law and nothing more," to accomplish the claimed results of reducing two kinds of vibrations.
The district court did not hold that claim 22's results—attenuated shell mode vibration and bending mode vibration in the propshaft—were achieved by Hooke's law and nothing more. In fact, as the majority previously recognized, the district court clearly held that they were achieved by the combination of Hooke's law and friction damping. Prior Maj. at 1291. Neither party argued that claim 22 is directed to Hooke's law and nothing more. Even Neapco argued it was the combination of Hooke's law and friction damping, "two separate natural laws" which accomplished the claimed vibration damping. Neapco Br. at 56.
No party introduced evidence that the desired result of claim 22 (reducing two types of vibration) is accomplished by application of Hooke's law and nothing more. In fact, both parties' experts expressly and
Lest there be any doubt, the accused infringer's (Neapco's) expert analyzes claim 22's three claim elements related to reducing vibrations:
J.A. 1602-05, ¶¶ 172-79. Neapco's expert testifies that the first two elements can be achieved by application of Hooke's law and nothing more:
However, when it comes to the third element (reducing shell mode vibration), this expert is crystal clear that it is not achieved by Hooke's law, but rather is achieved by application of a different natural law—friction damping:
Shell mode vibration, according to Neapco, is reduced by insertion of the liner into the propshaft in a manner to cause a press fit which will reduce shell mode vibrations by friction damping.
Neapco's expert directly contradicts the majority's current conclusion. His opinion is that claim 22 is directed to and requires application of two different natural laws to achieve the result of reducing two types of vibration in the propshaft:
Rather than address these, the parties' arguments, as we are bound to do as appellate
The majority also holds that determining whether a claim "invokes" a natural law, though no natural law is articulated in the claim is also a question of law for the court to decide. It is undisputed that claim 22 does not mention a natural law either by name or formula. Since Hooke's law is not mentioned by name or formula anywhere in the intrinsic record, how can we conclude, as a matter of law, the claim nonetheless clearly invokes Hooke's law?
As appellate judges, we are well-equipped to discern meaning from legal documents. But things get murkier as we muddle our way into the intersection of science and the law. Thus, the Supreme Court has wisely announced a line between that which we can evaluate de novo (the intrinsic record, composed largely of legal documents) and that which we cannot (everything extrinsic to the record, including expert testimony). See Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 324-28, 135 S.Ct. 831, 190 L.Ed.2d 719 (2015); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018); Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). Where, as here, nothing in the intrinsic record so much as mentions Hooke's law, we are unquestionably in the extrinsic category. There is nothing in the '911 patent that "clearly invokes a natural law." Yet the majority concludes, as if it would be apparent
If we are going to embark in a tumultuous area of law on a new test for ascertaining when claims are directed to unmentioned natural laws—we should do so with the benefit of briefing or even better, we should remand for the district court to apply the test in the first instance since it requires resort to extrinsic evidence. Future cases will use this case as a template for how judges can determine as a matter of law when a claim invokes an unmentioned natural law and nothing more. All aspects are henceforth a question of law and the record is irrelevant. We are the experts and we will determine when a claim invokes an unmentioned natural law and when nothing but that natural law is necessary to achieve the claimed results.
A disturbing amount of confusion will surely be caused by this opinion, which stands for the proposition that claims can be ineligible as directed to a natural law even though no actual natural law is articulated in the claim or even the specification. The majority holds that claims are directed to a natural law if performance of the claimed method would use the natural law. The majority has "open[ed] the door to countless challenges to mechanical inventions with underpinnings in one or more, potentially unnamed natural laws." IPO Br. at 9. Holding these claims ineligible under a purported natural law analysis "leaves patentees awash in a sea of uncertainty; how can one determine if a claim is directed to a natural law without a natural law being apparent either on the face of the claim, or under a proper claim construction?" BIO Br. at 5. And the majority's addition of its Nothing More test will add nothing more to the clarity. As we see in this case, the Nothing More test can be met even when all of the arguments and evidence are to the contrary and will not be finally resolved until we judges bring our scientific acumen to bear on the questions.
B. Claim 1 vs. Claim 22
The majority holds that claim 1 is not directed to a natural law (Hooke's law) because of the additional positioning limitation and the possible inclusion of variables other than mass and stiffness in the tuning limitation of claim 1. Maj. at 1300-01. I agree that claim 1 is not directed to a natural law. I would, however, reverse rather than vacate because under the second step of the Alice/Mayo test, there are at least factual questions regarding this claim's inventive concepts which preclude summary judgment. See infra Part II. Since we are remanding, the district court will have an opportunity to address these fact questions regarding claim 1 in the first instance.
To hold claim 22 ineligible, the majority holds that claim 22's inserting limitation is not equivalent to claim 1's positioning limitation "and AAM never argued otherwise." Maj. at 1300 n.13. The majority is sua sponte interpreting undisputed, unappealed claim terms with reference to nothing. They do not cite the patent, the prosecution history, or any briefs. Neither party ever suggested that the inserting and positioning limitations had different meanings. Claim 22 requires tuning and inserting wherein the liner will function as a tuned resistive absorber (damp shell mode) and a
II. UNCONVENTIONAL CLAIM ELEMENTS RENDER A CLAIM ELIGIBLE EVEN IF IT FAILS STEP ONE
Even if the majority's analysis of the claims satisfied step one of the Alice/Mayo test, which it did not, there is a step two. Step two is a required inquiry precedent to holding that claims are ineligible for patenting. The claims will not be held ineligible (remember § 101 is meant to be a gatekeeper) if the claims contain an "inventive concept." There are many here, articulated in the claims themselves, about which there exist at least questions of fact which should have precluded summary judgment. Argued below and throughout the appeal, AAM maintains that liners had never been used to reduce bending mode vibration. See AAM Br. at 12, 25-26, 27, 35, 57-60, 63, and 65 n.5; AAM Reply Br. at 2, 15 ("Prior art liners were used to provide general broadband damping of shell mode vibrations, but liners were not used to dampen bending mode vibrations prior to the claimed invention."); Id. at 19 ("It was inventive to use a liner to damp bending mode vibrations"); Id. at 24-25, and 29. The argument that liners were never before used to attenuate bending mode vibrations was AAM's first and one of its strongest non-conventionality arguments. Only to be bolstered by additional strong, fact-based, arguments such as the unconventional use of liners to attenuate multiple vibration modes and unconventional control of characteristics (including mass, stiffness and location) to damp vibration. AAM's opening brief set these forth on the very first page of its step-two argument:
AAM Br. at 57-58.
The patent discloses prior use of plugs, weights, and dampers to attenuate bending mode vibrations, but stresses that liners were not used. '911 patent at 2:29-38. AAM explained that before the '911 patent, liners were not used to damp bending mode vibrations, instead car manufacturers shoved masses of wadded up cardboard into the propshaft. Oral Arg. 6:46-7:11. More than a dozen times in the briefs and during oral argument AAM argued that the use of liners to attenuate bending mode vibration was one of its inventive concepts. During oral argument, AAM corrected the court when a member of the majority tried to suggest that liners to attenuate bending mode were known in the prior art:
Oral Arg. 6:37-49. Even Neapco acknowledged that the patent states that liners had not been used to attenuate bending mode vibrations. See Neapco Br. at 8.
In its prior decision, the majority did address AAM's argument that one of its inventive concepts was to use liners to reduce bending mode vibrations: it suggested that AAM did not make this argument, Prior Maj. at 1308 n.3, it made its own fact finding based on evidence not of record that liners were used to attenuate bending mode vibrations, id., and then finally, it held (contrary to Alice/Mayo), "it makes no difference to the section 101 analysis whether the use of liners to attenuate bending mode vibrations was known in the art," id. Each of these positions has been abandoned today, but the result is the same—this time with no explanation at all. It is inconsistent with precedent to hold claims ineligible without analyzing the step two arguments.
In Mayo, the Supreme Court reflected on the process of updating alarm limits held ineligible in Flook. The Flook claims recited a mathematical formula and did not
According to the majority, "[w]hat is missing is any physical structure or steps for achieving the claimed result." Maj. at 1295. The majority never addresses whether a claim to using a physical, hollow liner inserted inside a hollow drive shaft to attenuate bending mode vibrations in the shaft (yes these are all express claim limitations), was conventional. Much less whether a claim to using the same physical liner to attenuate both bending mode and shell mode vibrations was conventional. The result is not, as the majority claims, a tuned liner; the result is the reduction of vibration in the propshaft. And these claims expressly require the reduction of bending mode and shell mode vibrations employing a liner positioned inside the hollow shaft, which according to AAM had never been done before. Goodness sakes, the dependent claims held ineligible by the majority specify the material the liner must be made of (cardboard or plastic or fiberglass or metal (claim 31)) and the actual physical form it must take (extending helically (claim 27), with fingers (claim 33), circumferentially wrapped (claim 29) or over-molded (claim 32)) and the place the liners must be positioned ("symmetrically about a bending anti-node" (claims 34, 35)). See also Oral Arg. at 29:39-57 ("The claims talk about not only specific locations you put it at anti-nodes for specific modes. The dependent claims also include that they have to be directed to the second bending mode or the second shell mode."). It is remarkable that the majority thinks that claims with all of these very physical, very concrete, very structural limitations are "missing any physical structure or steps." A fiberglass liner with a helically shaped resilient member extending circumferentially around the liner or over-molded to the structural portion of the liner certainly feels like the "physical structure" that the majority says is missing from the claims.
AAM alleges throughout that the concept of tuning a liner, i.e. controlling the characteristics of a liner to dampen vibration of a given system is also an inventive concept. See id. at 27-28 and 57-67; AAM Reply Br. at 2, 16, and 18-29. The particular characteristics of the tuned liner will depend on the characteristics of the propshaft it is being used in (for example the natural frequencies, which are inherent properties of each shaft). See '911 patent at 7:44-55; AAM Br. at 4, 6, 46, and 53. And the '911 patent's specification explains how to tune liners to attenuate those vibrations. The specification explains that different characteristics of the liners are controlled corresponding to the structure of the propshaft. '911 patent at 7:56-8:43. It even provides a working example of tuned liners for use in a propshaft with specific dimensions and frequencies. Id. at 8:2-23. The claims include limitations which get progressively more detailed about the structure and positioning of the liner inside the drive shaft, none of which are addressed by the majority.
AAM has at least raised factual questions about its asserted inventive concepts which should have precluded summary judgment in this case. Rather than confront AAM's actual claimed and argued unconventional elements (such as a liner
The majority never addresses the inventive concepts alleged by AAM and listed in the above bullets points directly from AAM's opening brief. The second step of Alice/Mayo cannot be disregarded in the eligibility analysis.
III. ENABLEMENT ON STEROIDS
"A more accurate statement of the majority's view would have been: `Section 101 can do everything 112 does and then some.'" BIO Br. at 9. The majority's new blended 101/112 defense concerns the biotech and pharmaceutical industries who "expend great effort during patent prosecution to meet the rigorous written description and enablement requirements." BIO Br. at 7.
Despite the fact that no party has argued that the claims are not enabled or that a skilled artisan would not know how to design a tuned liner and insert it into a given propshaft to reduce vibration, the majority nonetheless concludes the claims are ineligible because they don't teach how to tune a liner. The majority's concern is not preemption of a natural law (which should be the focus), but rather that the claims do not teach a skilled artisan how to tune a liner without trial and error. The majority's new blended 101/112 defense is confusing, converts fact questions into legal ones and eliminates the knowledge of a skilled artisan.
According to the majority, even if the claims are enabled, they are still ineligible because the claims themselves didn't teach how (the majority calls this the first how requirement). It is certainly correct that "[a]n improved result, without more stated in the claim, is not enough to confer eligibility." Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir 2019); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (claims are directed to an ineligible abstract idea when they "purport to monopolize every potential solution to the problem"). But such is not the case here. The goal or the result of the claimed invention is not a tuned liner; it is a drive shaft with reduced vibrations. Claims 1 and 22 read:
The majority states the claim "must identify `how' that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness." Maj. at 1302. It is clear from the claims themselves that the functional result is a drive shaft assembly with reduced vibrations. "The present invention relates to ... a method for attenuating driveline vibrations transmitted through a shaft assembly." '911 patent at 1:4-7. It is undisputed that there exist many different ways to attenuate vibrations in a drive shaft such as dampers, plugs, weights, liners, even wadded up cardboard. The '911 patent claims one specific way to attenuate vibrations, a concretely identified physical structure—a liner inserted inside the propshaft. It does not just claim a result (reducing vibration)—it claims a specific means of accomplishing the result—a liner positioned in the shaft. Even the amount of required reduction in vibration is an element in some claims (claim 1). Claim 22 even specifies (as do others) that the liner is tuned to a given frequency by adjusting its mass and stiffness. And AAM alleges and the claims require that the liner's placement inside the shaft aids in reducing vibration. There is no question the claims identify a concrete structure and even specify precise variables (mass and stiffness) to be adjusted to tune the liner to the frequency of any given propshaft. The only remaining question (the majority's true concern with these claims) is would a skilled artisan know how to adjust the mass, stiffness, and positioning of the liner in order to damp vibration without undue experimentation. See Oral Arg. at 12:04-11 (Judge) ("Basically it is done by trial-and-error. You start with a computer program and then you do trial and error to come to the correct result, right?"); Oral Arg. at 29:20-36 (Judge) ("The claims themselves don't even provide you with a list of variables, there are a lot of different variables, done by trial and error, and all the claims are telling you is here is a desirable result and use trial and error to get there."). This is the question the majority has and this is a question of enablement, not eligibility.
I dissent from the majority's attempt to inject a heightened enablement requirement into the § 101 analysis. These claims contain a specific, concrete solution (inserting a liner into a propshaft) to a problem (vibrations in a propshaft). Some degree of trial and error in modifying the mass and stiffness of the liner to optimize the reduction in vibration of a given shaft, could (if undue) create an enablement concern, but it is not a § 101 problem. And if § 101 did require an analysis of whether too much trial and error would be required to reduce vibration of a given shaft at a particular frequency, surely this would be a question of fact and not something we decide for the first time on appeal.
I do not agree with the majority's conclusion that claims 1 and 22 are representative or that AAM waived its arguments as to the dependent claims. First, Neapco never argued that claims 1 and 22 are representative and in fact argued the dependent claims separately. See Neapco SJ Br. at 32-33. Second, AAM expressly argued that they are not representative. Oral. Arg. 30:50-31:07. AAM's statement that the dependent claims should not come out differently does nothing more than confirm that it believes all of the claims are patent-eligible. Third, the majority inaccurately states AAM did not argue limitations of the dependent claims. AAM's briefs provide multiple references to the type of material and other limitations found only in the dependent claims. See, e.g., AAM's Opening Br. at 13-14, 36, 57-58, and 64-65. I do not agree that AAM waived the dependent claims.
As for claim 34 and 35 in particular, there is an even stronger basis for concluding that the majority is wrong. At six locations in the Opening Brief, AAM argues that location of the liners is one of its inventive control characteristics. Id. at 63 ("controlling its characteristics (e.g., length, width, interference fit, location, etc.)"); Id. at 64-65 ("The '911 patent specifically teaches how to control the characteristics of a liner to not only match but damp relevant propshaft vibrations, including the thickness of the liner, the interference fit, the location of the liner"); Id. at 13 ("The specification of the '911 patent further explains that liners are tuned for damping by controlling `various characteristics' including ... location of the liners within the propshaft"); see also id. at 35-36 (same). "One liner characteristic that can be controlled—"location of the liners 204 within the shaft member 200—is independent of its structure, e.g., its mass and stiffness." Id. at 42. And during oral argument, AAM explained that it did argue dependent limitations in the Opening Brief:
Oral Arg. at 30:50-31:01.
Given that the majority now sua sponte holds that claim 22 does not contain a location limitation, it is unfair to refuse to review the dependent claims which unquestionably have detailed location limitations. Claim 34 states: "The method of claim 22, wherein a first one of the liners is positioned along the shaft member symmetrically about a bending anti-node." Claim 35 further limits the location of a second liner placed in the shaft. Under these circumstances, it is fundamentally unfair for the majority to hold that AAM did not present arguments regarding the dependent claim limitations in its Opening Brief. Finally, contrary to the majority's assertion (Maj. at 1300), the petition for rehearing did not simply state that AAM did not waive arguments related to dependent claims. It pointed to three separate places in the Opening Brief (13-14, 57-59 and 64-65) where it expressly argued location of the liner. Given the Opening Brief's repeated arguments about location and the majority's nascent determination that claim 22 does not have a location limitation, it is wrong to hold AAM waived its arguments regarding dependent claims which contain location limitations.
CONCLUSION
The majority holds that claims are directed to natural laws and are ineligible
Our job, our mandate from Congress is to create a clear, uniform body of patent law. Our inability to do so in the § 101 space has not been a mess of our making. But, the unfairness, confusion and uncertainty that will be caused by this opinion is all us. Today, we make a choice. I dissent from this choice to extend the notions of ineligibility and to extend the role of the appellate court. Section 112 adequately protects for exactly the concerns the majority expresses, though honestly, I see no enablement problem and none was raised by the defendant. I dissent from the majority's chimeric approach to § 101 which is inconsistent with precedent, a vast expansion of § 101, and bound to cause confusion in future cases.
I dissent from the conclusion that we judges are the true scientific experts. We should not be deciding technical questions, such as whether two types of vibration are reduced by application of Hooke's law and nothing more, as questions of law de novo on appeal.
FootNotes
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 attenuating at least one of bending mode vibrations and torsion mode vibrations.
'911 patent, col. 7, l. 60-col. 8, l. 2.
O'Reilly, 56 U.S. at 86 (emphasis added). Subsequently, the Supreme Court explained that claim 8 in O'Reilly was struck down precisely because it "was a claim `for a patent for an effect produced by the use of electro-magnetism, distinct from the process or machinery necessary to produce it,'" whereas other claims incorporated the descriptions of how to produce the effect. Dolbear v. Am. Bell Tel. Co., 126 U.S. 1, 534, 8 S.Ct. 778, 31 S.Ct. 863 (1888).
Id. at 56.
J.A. 1928. Experts for both sides agree that claim 22 is not directed to Hooke's law and nothing more.
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