939 F.3d 1355
Fed. Cir.2019Background
- AAM sued Neapco for infringement of U.S. Patent No. 7,774,911, which claims methods of manufacturing hollow driveline shafts with "tuned" liners that attenuate both shell-mode and bending-mode vibrations.
- Representative independent claims (1 and 22) require providing a hollow shaft, tuning a liner (controlling mass and stiffness) to attenuate at least two vibration types, and positioning the liner to achieve specified damping metrics.
- The district court granted summary judgment for Neapco, finding the asserted claims ineligible under 35 U.S.C. § 101 as directed to natural laws (Hooke’s law and friction damping) and adding only conventional steps.
- On appeal the Federal Circuit majority affirmed: it concluded the claims are directed to natural laws and lack an "inventive concept" because they merely instruct tuning (a result) without claiming specific means or steps to perform the tuning.
- Judge Moore dissented, arguing the majority effectively conflates § 101 with enablement/§ 112, ignores factual disputes about novelty (e.g., use of liners for bending-mode damping), and improperly resolves fact questions at summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claims are directed to a law of nature under Alice/Mayo step 1 | Claims are directed to a practical manufacturing method using physical liners to damp vibrations, not to a natural law | Claims are directed to application of Hooke’s law/friction damping (natural laws) by "tuning" mass/stiffness | Held: claims are directed to natural laws (Hooke’s law and related physical principles) |
| Whether claims contain an "inventive concept" under Alice/Mayo step 2 | Tuning liners to attenuate two modes (and specific liner materials/positions in dependent claims) is novel and nonconventional | Tuning is conventional trial-and-error engineering; specification lacks concrete steps or novel mechanisms | Held: no inventive concept; claims add only conventional pre/post-solution activity and result-oriented limitations |
| Whether claim language sufficiently limits means/steps (preemption concern) | Claims recite physical structures and numerical limits; do not preempt all implementations | Claims are broadly result-oriented and would preempt the natural-law application without describing how to achieve it | Held: breadth and functional focus risk preemption; lack of claimed means/steps contributes to ineligibility |
| Whether independent claims are representative of all asserted claims | AAM: dependent claims and other limitations supply inventive concepts (e.g., cardboard liners, placement) | Neapco: independent claims are representative and no meaningful difference shown | Held: AAM waived meaningful argument that dependent claims change outcome; claims 1 and 22 treated as representative and found ineligible |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) (establishes framework that claims applying natural laws require an inventive concept beyond conventional activity)
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (articulates two-step test for patent eligibility and concept of "inventive concept")
- Parker v. Flook, 437 U.S. 584 (1978) (claims using a mathematical formula require an inventive application beyond post-solution activity)
- Diamond v. Diehr, 450 U.S. 175 (1981) (use of a natural law within a specific, inventive process can be patent eligible)
- Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1853) (patent cannot claim a result or principle without limiting means)
- O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) (claims must not preempt a natural principle by claiming it broadly)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (factual questions about whether aspects are "well-understood, routine, conventional" are for the factfinder)
- Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018) (claims that are result-focused and lack specifics can be ineligible under § 101)
- Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (abstractness and functional/result-oriented claim language is central to § 101 analysis)