SCOTUS Declines To Answer Calls For Clarification In American Axle v. Neapco

• Published date: 15 July 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Mintz
• Author: Mr Brad Scheller, Andrew DeVoogd, Matthew Karambelas and Amanda Metell (Summer Associate)

The United States Supreme Court denied certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The Court's refusal to hear the case disappointed patent practitioners nationwide'and likely also members of the Federal Circuit Court of Appeals, which itself has been clamoring for guidance. For now, at least, this means that lower courts and practitioners remain without much-needed clarity on the proper application of the Mayo/Alice test for determining statutory subject matter under 35 U.S.C. ' 101.

In American Axle, the Federal Circuit held a patent claim not eligible for protection under Section 101, where it involved methods of reducing vibrations on a shaft assembly of an automobile (highlighted at 20, below). The patent explained that in the existing art, car shaft assemblies experienced vibrations resulting in movements according to three modes: lateral (bending mode), twisting (torsion mode), and circumferential (shell mode). According to the patent, existing methods of attenuating vibrations, such as weights and liners, were ineffective at attenuating more than one of those modes. The patent claimed an improvement for applying liners to the shaft, whereby the liners would be tuned according to mass and stiffness to account for bending mode and shell mode vibrations. See, e.g., Claim 22 of U.S. Patent No. 7,774,911.

Claim 22 of the '911 Patent recites:

A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly 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 attenuating bending mode vibrations.

Applying step 1 and step 2 of the Mayo/Alice test, the district court (in an opinion penned by Judge Stark, now on the Federal Circuit bench as of March 2022), held that "Hooke's law governs the relationship between mass, stiffness, and frequency" and that the "'tuning' claim limitation does nothing more than suggest that a[n]...engineer consider that law of nature when designing propshaft liners to...