Federal Circuit Finds Method of Manufacturing Patent Ineligible

In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. Oct. 3, 2019), the Federal Circuit affirmed the district court’s grant of summary judgment, finding American Axle’s claims covering “a method of manufacturing a shaft assembly” patent ineligible under 35 U.S.C. § 101.

The Federal Circuit applied the two-step test set forth in Mayo and Alice. At step one, it held that the claims covered a natural law—Hooke’s Law—noting “the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law.” American Axle argued that the claims covered more than the application of Hooke’s law because they are directed to tuning a liner that attenuates two different vibration modes, something it argued had not been done before. The Court rejected this argument, however, finding neither the claims nor the specification identified a means for tuning the liner in this way and, thus, focused only on the “desired result.” At step two, the Court held that the claims did not recite an inventive concept or identify more than conventional pre- and post-solution activity.

Judge Moore dissented. Judge Moore believed that the majority’s concern with the claims was more about enablement than about patent eligibility. Moreover, Judge Moore believed that the majority conflated the two steps of the Mayo/Alice test, and ignored fact questions at step two regarding whether the claims contain an inventive concept.