Do Claims Do More Than Limit The Formula to a Particular Technological Environment?
United States District Court for the District of Delaware pours out tuning shaft liner claims under 35 U.S.C. § 101 because they are directed to patent ineligible subject matter.
- District Court held American Axle & Mfg. patent claims ineligible under Alice two-step because they simply applied Hooke’s law to a known process
- Preemption cannot be circumvented by attempting to limit the use of the formula to a particular technological environment, citing Parker v. Flook
- Decision turned on question: Do claims do more than recite Hooke’s law?
- To overcome Alice, craft claims to explain how the variables used in the formula are to be selected or relate to the processes at work, or the means by which they manipulate something real
In American Axle & Mfg. v. Neapco Drivelines LLC, decided February 27, 2018, the U.S. District Court for the District of Delaware granted summary judgment that claims of a patent directed to manufacturing driveline shaft assemblies are invalid under 35 U.S.C. § 101 because the claims are directed to unpatentable subject matter.
The patents in suit relate generally to an improved method for damping vibrations in a hollow shaft of a drive line using a liner in the hollow of the shaft tuned for absorption of shell mode vibration, bending mode vibration and/or torsion mode vibration.
The court found the claims patent ineligible under the Alice two-step because they simply applied Hooke’s law to a known process. Op. at 13. As explained by the court, the “tuning” claim limitation does nothing more than suggest that a noise, vibration, and harshness (“NVH”) engineer (D.I. 156 at 5) consider that law of nature when designing propshaft liners to attenuate driveline vibrations.” Id at 14. Tuning a liner to absorb vibrations in both bending and shell modes is the result that is achieved from performing the method rather than a step of the method itself. Id. at 14-15.
The analysis of the court hearkens back to the rationale employed by the Supreme Court in Parker v. Flook, which the court also cited in support of its finding. Id. at 13.
In Flook, a mathematical formula used for monitoring conditions during the catalytic conversion process in the petrochemical and oil-refining industries was limited so that it could still be freely used outside these industries. Nevertheless, the Flook Court rejected “the notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process.” Flook, at 591.
As the Supreme Court later stated in Diehr, “Flook stands for the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post solution activity.’” Diehr, at 191-192.
Still “while an abstract idea, law of nature, or mathematical formula could not be patented, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id. at 187.
The claims in Flook failed because the alarm limit calculated by the algorithm never did anything. The “patent application did not purport to explain how the variables used in the formula were to be selected, nor did the application contain any disclosure relating to chemical processes at work or the means of setting off an alarm or adjusting the alarm limit. Id. All the application provided was a “formula for computing an updated alarm limit.” Id.” Diehr, at Footnote 14.
So the real question in American Axle may be: does the application of Hooke’s law to a known process explain how the variables used in the formula were to be selected, contain any disclosure relating to vibration processes at work or the means of vibration absorption or adjusting the vibration absorption limit?
This is effectively the question the Supreme Court in Diehr indicated would have made the claims in Flook patent eligible, and which have been recrafted in the form above to apply to the American Axle case.
The lower court decision has been appealed to the Court of Appeals for the Federal Circuit. The decision on appeal will likely turn on two things. First, the two different absorbers recited in illustrative claim 22 – namely, tuning the liner with a resistive absorber for attenuating shell mode vibrations and a reactive absorber for attenuating bending mode vibrations.
And second, on the method of vibration absorption recited in illustrative claim 1 where the liner is both configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2% and tuned to within about +-20% of a bending mode natural frequency of the shaft system to damp bending mode vibrations in the shaft member.
The recitation of alternative kinds of aborbers and different ranges of tuning may amount to more than an attempt to limit the use of the formula to a particular technological environment, vibration damping in this case, as the Delaware court found.
The real take-away from American Axle may be heeding the guidance on Flook provided by the Supreme Court in Diehr. Don’t craft claims that only recite a formula as was done in Flook that was a “formula for computing an updated alarm limit.” Craft claims to explain how the variables used in the formula are to be selected or relate to the processes at work, or the manner by which they manipulate something real, like the means of either setting off an alarm or adjusting the alarm limit in Flook.
“Manipulation of something real or a representation of something real, though not the test for determining patent eligibility (the proper test being the Alice two-step), may nonetheless provide a valuable clue to the eligibility of a claim.”