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.”- Judge Moore dissent
On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued Orders granting a request for panel rehearing and denying a request for rehearing en banc in response to a joint petition filed by American Axle & Manufacturing (AAM). The CAFC also issued a precedential modified opinion of its October 3, 2019 opinion in American Axle & Manufacturing v. Neapco Holdings.
In the October 2019 decision, the CAFC affirmed the U.S. District Court for the District of Delaware’s finding that the asserted claims were ineligible under 35 U.S.C. § 101 and Judge Moore dissented, asserting that the majority’s decision improperly expanded the reach of Section 101 “well beyond its statutory gate-keeping function.” Following the decision, AAM filed a joint petition for panel rehearing or rehearing en banc and several amici weighed in by filing briefs in support of AAM’s request for rehearing en banc.
In the district court, AAM filed a suit against Neapco asserting infringement of U.S. Patent No. 7,774,911, which was directed to a method for manufacturing driveline propeller shafts that are designed to attenuate vibrations transmitted through a shaft assembly, includes independent claims 1, 22 and 36. The CAFC followed the district court’s lead in designating claims 1 and 22 as representative.
Claim 1 recites, in part:
A method for manufacturing a shaft assembly of a driveline system, the method comprising:
1) providing a hollow shaft member;
2) tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and
3) positioning at least one liner within the shaft member so that the liner is configured to dampen shell mode vibrations in the shaft member by at least 2%.
Claim 22 recites, in part:
A method for manufacturing a shaft assembly of a driveline system, the method comprising:
1) providing a hollow shaft member;
2) tuning mass and stiffness of at least one liner; and
3) inserting the now tuned resistive absorber liner into the shaft member to absorb attenuating shell mode vibrations and bending mode vibrations.
In its modified opinion, the three-judge CAFC panel first analyzed claim 22 by mirroring some of the reasoning from the October 3 opinion and adding additional case law and rationale. The Court explained that the claim limitation “tuning a mass and a stiffness of at least one liner” was construed to mean “controlling the mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies.” In analyzing step one of Mayo/Alice test, the CAFC noted that this phrase required the “use of a natural law of relating frequency to mass and stiffness— i.e., Hooke’s law.” The CAFC stated that claim 22 was “directed to the use of a natural law: Hooke’s law” and simply instructed “the reader to tune the liner to achieve a claimed result, without limitation to particular ways to do so.”
The CAFC acknowledged AAM’s argument that the claimed process of tuning a liner such that it attenuates two different vibration modes is complicated and requires more than a simple application of Hooke’s law, but asserted that the claims did not recite any “processes for implementing the underlying natural laws.” The CAFC explained that it did not intend to “suggest that such specific novel computer or experimental processes could not be claimed;” however, claim 22 did not recite “any physical structure or steps for achieving the claimed result.” Concluding its step one analysis, the CAFC stated that “[t]his holding…extends only where, as here, a claim on its face clearly invokes a natural law, and nothing more, to achieve a claimed result.”
With respect to step 2 of the Mayo/Alice analysis, the CAFC noted that “nothing in claim 22 qualifi[ed] as an ‘inventive concept’ to transform it into patent eligible [subject] matter.” Although AAM contended that claim 22 included several inventive concepts that were neither previously known, nor conventional or routine, the CAFC reasoned that claim 22 merely recited the achievement of results, which are ineligible for patent protection. Noting that claim 36 was virtually indistinguishable from claim 22, the CAFC concluded that claims 22 and 36 were not patent eligible under Section 101.
With respect to claim 1, the CAFC acknowledged that it was different from claim 22 in that it included a more general recitation of the term “tuning.” In particular, claim 1 recited “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”, which was construed by the district court to mean “controlling characteristics of at least one liner to configure the liner to match a relevant frequency or frequencies to reduce at least two types of vibration transmitted through the shaft member.” Since the construction of claim 1 only required controlling “characteristics”, as opposed to specifically “tuning mass and stiffness” as in claim 22, the CAFC noted that it was not merely directed to Hooke’s law. Thus, the CAFC vacated the prior judgment with respect to claim 1 and remanded to the district court to address the eligibility.
Judge Moore’s Dissent
Circuit Judge Kimberly Moore again wrote separately from the majority to express her dissent, noting that 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.” Moore explained that the majority made three errors of law in determining claim 22 to be patent ineligible. First, she noted that the majority found claims “directed to” natural laws ineligible, even though they did not contain a natural law. Moore asserted that the majority effectively created a new test, i.e. “the Nothing More test,” for when claims are directed to a natural law despite not reciting a natural law. Second, Moore noted that the majority refused to consider the unconventional elements of the claims. Third, Moore wrote that the “majority has “imbued § 101 with a new superpower—enablement on steroids” by blending 112 analysis into the 101 analysis.
Moore noted that the previous majority opinion acknowledged that the claimed invention was “more complex than just a bare application of Hooke’s Law, and that other natural laws may be relevant”, but on rehearing, the majority changed course to conclude that “claim 22 is directed to Hooke’s law and only Hooke’s law.” She also explained that the majority’s holding conflicted with the CAFC precedent and 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.” Moore further noted that a claim cannot be directed to a natural law when there is no discernable natural law in the claims or accompanying specification. Moore’s dissent can be summed up by her statement that 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.” She concluded:
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.”
En Banc Rehearing Denial
In the Order Denying Rehearing En Banc, Judges Newman, Moore, O’Malley, Reyna, Lourie and Stoll dissented from the denial of rehearing en banc. Each of Dyk, Chen, Newman, Stoll and O’Malley wrote separately.
In Judge Newman’s dissent from the denial, she expressed concern over the majority’s holding and referred to the amici briefs, stating “[t]he amici curiae 12 Law Professors remind us that: ‘All inventions of practically applied processes and machines are reducible to mathematical abstractions and algorithms; for example, a patentable method for operating a combustion engine is really just an application of the law of PV=nRT, the principles of thermodynamics, and other laws of nature comprising the principles of engineering.’”
Judge Stoll also expressed concern over the consequences of the majority’s holding, asserting that “[w]hile the eligibility inquiry may take into account whether a claim has ‘the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it,’… the majority’s ‘how to’ analysis seems to go further, potentially incorporating a heightened enablement requirement into § 101.”
Judge O’Malley noted three problems with the majority opinion:
1.) the majority announces a new test for patentable subject matter without adequate briefing,
2.) rather than remand to the district court, the majority applied the test itself, and
3.) the majority “sua sponte construe[d] previously undisputed terms in a goal-oriented effort to distinguish claims and render them patent ineligible.”
Noting that the active judges of the CAFC “were evenly divided, 6-6, in our vote on whether to take this case en banc based on the serious substantive concerns the new majority opinion raises”, O’Malley concluded by expressing her dissent from “the full Court’s unwillingness to put us back on course and force adherence to the limitations imposed on us as a court of review.”
Join the Discussion
26 comments so far.
BAugust 11, 2020 07:27 pm
@TFCFM “ You have ignored the rational arguments and that is why in NOT a small degree your continued postings in a mindless repetition of what you feel without regard to the counterpoints put to you are insulted.”
Take my word. We don’t ignore your arguments. We dismiss them. There’s little in your arguments that is rational,
“ That is, section 101 does not prohibit judicially-recognized limitations on patent-eligible subject matter.”
You know who says you’re wrong? The Constitution’s separation of powers clause, 97% of legal scholars, and the Supreme Court. Of course with the SCOTUS they contradict themselves all the time b/c they can’t be bothered to read their own case law.
BAugust 11, 2020 07:09 pm
@TFCFM “ I reject your label.”
Who cares what you think? You’re a poorly informed pretender. That’s not so much an insult as a statement of stark reality. No one thinks you’re a patent attorney or even a patent agent.
AnonAugust 10, 2020 04:30 pm
I reject your label. You have ignored the rational arguments and that is why in NOT a small degree your continued postings in a mindless repetition of what you feel without regard to the counterpoints put to you are insulted.
Quite frankly, you act as if your version of law ‘must be,’ and that anyone who says any differently must not have anything rational to say.
You could not be further from the truth in your ‘opposite mode,’ as it is you that have no rational argument that includes any meaningful or inte11ectually honest rebuttal to those who have rejected your conclusory assertions.
This ‘picking on you’ is not new, and stretches well back to when you first started ignoring those that responded to you in good faith while mouthing how you were all for meaningful interactions (as you avoided all such interactions). While there is little doubt that you intend to wear this “oh, poor me, I am being picked on” mantle like some badge of honor, the more that you do so, the more disdain that you earn.
You really do not f00l anyone.
TFCFMAugust 10, 2020 09:18 am
They who can’t present rational argument insult.
AnonAugust 9, 2020 09:45 pm
B-b-but, B, don’t you know that “law existed since before this nation existed” so whatever C R A P that TFCFM let’s loose ‘must be true.’
Where’s my “Sarcasm” sign….
BAugust 9, 2020 02:21 pm
“ Similarly, the fact that an applicant must satisfy the eligibility requirements of section 101 does not mean that an applicant can avoid judicial decisions further limiting eligibility.”
The courts have no power under the Constitution under the law to rewrite statues from the bench
BAugust 9, 2020 02:18 pm
@TFCFM “ The fact that no other section than 103 addresses obviousness does not mean that all judicial decisions regarding obviousness are irrelevant.”
No, but it does mean any all judicial decisions related to an obviousness determination should be based on section 103. Not 102, not 101, and not 112.
Go back to pretending you’re a fireman on another forum.
AnonAugust 7, 2020 12:36 pm
… and TFCFM, your insistence on reading patent law with views “recognized since before this nation existed” is evidence of your lack of knowledge of patent law.
But go ahead, post again and keep proving my points.
AnonAugust 7, 2020 10:16 am
Nice Strawman on 103, TFCFM.
You should note that I have drawn the distinction appropriate use of Common Law law writing (gap filling and interpretation) and inappropriate use (legislating from the bench).
As a (supposed) attorney, you should be able to grasp the difference.
As to another (supposed) attorney, albeit one that has avowed to be outside of the US law system, MaxDrei should also know well enough the Rule of Law, and his continued proselytization of “the EPO way” at the expense of confusing and conflating US jurisprudence speaks of either utter incompetence or utter moral bankruptcy. Not a great choice for him either way.
TFCFMAugust 7, 2020 10:03 am
Anon@#14: “There is NO OTHER SECTION that addresses eligibility.”
The fact that no other section than 103 addresses obviousness does not mean that all judicial decisions regarding obviousness are irrelevant. A patent applicant can’t simply ignore judicial decisions regarding obviousness that the applicant dislikes “because it’s not in the statute.”
Similarly, the fact that an applicant must satisfy the eligibility requirements of section 101 does not mean that an applicant can avoid judicial decisions further limiting eligibility. As noted, such judicial limitations on the conditions for patentability have been recognized since before this nation existed.
Prepare to be shocked, but our statutes and common law judicial system do not combine to mean that only judicial decisions that you happen to like — or only decisions that are literally written into the statutes — count.
(Your apparent belief to the contrary explains much of your shrillness and non-sensibility, though.)
BAugust 6, 2020 11:25 pm
@ Maxi Drei “ Me. I am of the view that Judge Moore, before writing her dissent, took the trouble to read through the said EPO file.”
Perhaps, but just as likely Moore could have simply read 101, 112(a), and 112(f).
BAugust 6, 2020 11:18 pm
@ Jam “ TFCFM’s comment @2 could easily be interpreted as sarcasm.”
It’s not. TFCFM makes stupid statements like that all the time.
AnonAugust 6, 2020 01:48 pm
“Section 101… identifies categories of subject matter that are eligible for patenting subject to any other limitations on eligibility.”
Please stop pretending that you understand patent law.
There is NO OTHER SECTION that addresses eligibility.
The only other limitation IN Section 101 has to do with utility (belonging to the Useful Arts).
There is nothing else.
Your notion that the section does not prohibit the Judiciary from ADDING new statutory requirements violates the basic principles of separation of powers.
Our Sovereign set out explicitly the delegation of power to write patent law. Your ‘version’ here has no semblance to that reality.
What you imagine was done in the Act of 1952 to curb the wayward Court (crafting both Section 101 and the NEW Section 103) is just that: your imagining.
Please do not speak of intentions when you have no clue as to what those intentions were.
TFCFMAugust 6, 2020 11:10 am
Jam@#11: “ No longer can a patentee simply declare that they are patenting a machine, rather, the patentee must argue an ever changing test that gets reinterpreted every time a competent patentee figures out how to persuasively argue the prior interpretation.
I believe you misconstrue section 101. Section 101 does not declare categories of subject matter that are eligible for patenting no matter what. Instead, the section identifies categories of subject matter that are eligible for patenting subject to any other limitations on eligibility. That is, section 101 does not prohibit judicially-recognized limitations on patent-eligible subject matter, and such limitations are essentially as old as the patent law itself — dating back at least to the English Statute of Monopolies in the early seventeenth century.
One of the worst modern shortcomings of patent-eligibility thinking is, in my opinion, the idea that there is or must be One And Only One Test for patent eligibility (moreover, one reducible to an easily-remembered catch-phrase).
Courts are permitted, and have been permitted throughout the history of patent law, to identify and enforce limitations on the types of subject matter that are eligible for patent protection, and section 101 does not, and was not intended to, change that.
The mere notion that a claim is directed to a “machine” does not end the eligibility inquiry. A claim directed to “A machine which achieves result X” is not eligible for patenting (regardless of how thorough and explanatory a specification accompanies it), nor is “A machine which operates according to [the new natural law I have discovered]” (again, no matter how well the accompanying spec describes the law and its operation and gives examples of such machines. The former claim is simply abstract, and violates the judicially-established limitation prohibiting eligibility for abstract subject matter, while the latter claim violates the judicially-established limitation prohibiting monopolization of natural laws (and is probably abstract, too).
ipguyAugust 5, 2020 02:40 pm
“the said EPO file”
It’s either “the EPO file” or “said EPO file”.
JamAugust 5, 2020 11:54 am
@ B re TFCFM
TFCFM’s comment @2 could easily be interpreted as sarcasm.
An issue with the “anything-and-everything-that-works” test is, who decides what the “recited outcome” is? A judge or examiner can easily decide that a five page claim with fifty steps “merely recites” the outcome of, e.g., Hook’s law or the mass energy equivalence principle (Einstein’s E=mc^2). E.g.: the claimed machine or process requires energy (to which the parties have not disagreed), and energy is nothing more than mass times the square of the speed of light, therefore the claims are directed to nothing more than the mass energy equivalence principle. Then throw in a bunch of case law cites to other decisions ignoring the literal language of the claims and avoid case law stating that the actual claim language must be considered.
Furthermore, the “anything-and-everything-that-works” test is superfluous in light of the Alice/Mayo two step, i.e., (1) ignore the literal claim language to fabricate a judicial exception (abstract idea or natural law) (2) reiterate that the claims are directed to nothing more than the fabricated judicial exception. Thomas’s note about treading carefully “lest it swallow all of patent law” was not a warning, rather, it was a marching order to the Federal Circuit paper up their 101 rejections with enough sophistry that the lay person will give up attempting to understand what is or is not patentable and leave it to the judges and lawyers.
The issue with 101 jurisprudence is not whether we have an appropriate test. Rather, it is how long the courts are going to continue the farce. If rejecting a claim requires the court to say that the sky is green and grass is blue, then the courts will unquestionably declare the sky is green, grass is blue, and that it is a draftsman’s trick to say otherwise. It is nothing more than outcome based judicial activism (as noted by Moore), which has entirely preempted 35 USC 101. No longer can a patentee simply declare that they are patenting a machine, rather, the patentee must argue an ever changing test that gets reinterpreted every time a competent patentee figures out how to persuasively argue the prior interpretation.
TFCFMAugust 5, 2020 10:39 am
Claim 22 recites, in relevant part:
Claim 22: “2) tuning mass and stiffness of at least one liner; and 3) inserting the now tuned resistive absorber liner …” [emphasis added]
Claim 22 includes no limitations whatsoever on “tuning” or “tuned” (including, for example, the degree of tuning that is included, which part(s) of the liner are altered to “tune” it, or how the “tuning” is accomplished. In other words, it recites the outcome of “tuned” and encompasses anything-and-everything that might be effective to achieve such “tuning,” whether disclosed (or even invented) by the applicant or not.
This is precisely the sort of “anything-and-everything that achieves result X” claiming that I believe the Federal Circuit is consistently finding to be “abstract” and therefore ineligible.
In the case of claim 22, the appellate court found “anything-and-everything-that-works” to be coextensive with the natural law and held the claim ineligible. It makes no difference whether calls this claiming-a-natural-law or claiming-abstract-subject-matter; the two conflate in this situation.
By contrast, claim 1 recites “tuning” in a different, possibly more concrete manner, and also recites “positioning,” which is not asserted to be merely recitation of a natural law. Rather than holding them abstract in the absence of supporting argument and holdings (which were not performed in the appealed decision), the appellate court remanded the case so that claim 1 can be reconsidered to see if it is ‘abstract’ in claiming both “tuning” and “positioning” in an “anything-and-everything-that-works” manner. Once the district court decides whether those recited claim steps are “abstract,” the decision will be in a proper state for review (which it presently isn’t, because that issue wasn’t assessed below).
Night WriterAugust 5, 2020 09:52 am
I agree with your sentiment. When you read the EPO file wrapper you will realize that the CAFC just adopted the arguments at the EPO and used 101 to invalidate the claims, which is a terrible thing to do.
AnonAugust 5, 2020 09:39 am
Sadly, B, I think that TFCFM is an actual attorney – just not a true patent attorney (with a USPTO registration number and a technical background) – leastwise, not one with any actual innovation experience.
He has the taint of “Malcolm” and “Paul F. Morgan” – that is, knowing enough to be dangerous (and perhaps influence those less in the know) in a way that constantly seeks to weaken innovation protection, all the while being pompous and WAY too full of themselves.
MaxDreiAugust 5, 2020 09:36 am
Night is of the view that:
“You have to read the EPO file wrapper to understand this case.”
B is of the view that dissenter Moore is:
“..the most brilliant mind on the bench”
Me. I am of the view that Judge Moore, before writing her dissent, took the trouble to read through the said EPO file.
Here a Link: https://register.epo.org/application?number=EP07751339&lng=en&tab=doclist
Click the box on the left of each of the top three docs in the list, then on “Selected docs” to download them as a pdf.
BAugust 4, 2020 11:27 pm
@ TFCFM “I propose that we rename the majority’s purported test the “anything-and-everything-that-works” test and continue applying it to deny eligibility to claims which recite an outcome and encompass “anything and everything that works” to achieve that outcome, as the majority did here.”
Such functional claiming is limited in scope to the disclosure of a patent’s specification.
Because you’re a fake attorney and are completely clueless as to 35 USC 112(f), you have no idea just how lame you sound. 112(f) – formerly 112, 6th paragraph – was written to reverse a bad decision by the Supreme Court known as Halliburton v. Walker (1946).
So, go ahead an opine on people who actually have law degrees.
FWIW, Moore is the most brilliant mind on the bench. You aren’t even a remotely competent fake attorney
Night WriterAugust 4, 2020 05:38 pm
You have to read the EPO file wrapper to understand this case.
AnonAugust 4, 2020 12:31 pm
What (exactly) does “claims that recite an outcome” really mean?
There appears to be a lot of people (a lot of people with shall we say a tenuous grasp on the underlying technology) that will say dismissively, “you are just claiming a result.”
There is a seemingly unwitting desire to ignore context, ignore that a claim element that on its face says to “do something” is NOT claiming the result of that doing (as the word ‘result’ or ‘outcome’ is attempted to be portrayed).
Further, if what is actually wanted a finer detail of the “doing something” with MORE words of the ‘how’ of that doing, then anyone willing to have a critical mind will immediately see that you run smack into a ‘turtles all the way down’ problem in that ANY words chosen to provide that ‘more detail’ will be exactly prone to the same (recursive) complaint.
Here, the ‘problem’ appears to be the VERB ‘tuning’ being misapprehended to be the ‘outcome’ of ‘tuned.’
Looking at claims 1 and 22, there are two (apparent) differences.
Contrast claim 1’s “tuning… to attenuate” with claim 22’s “tuning X and Y.”
Contrast claim 1’s “positioning… so that” with claim 22’s “inserting… into… to.”
Neither of these are claiming an outcome – per se.
Both of these are claiming step elements that, taken as a whole, provide a method with utility.
Pro SayAugust 4, 2020 10:28 am
Petal to the ineligibility metal. Up next: SCOTUS.
TFCFMAugust 4, 2020 10:02 am
Article: Moore asserted that the majority effectively created a new test, i.e. “the Nothing More test,” for when claims are directed to a natural law despite not reciting a natural law.
I propose that we rename the majority’s purported test the “anything-and-everything-that-works” test and continue applying it to deny eligibility to claims which recite an outcome and encompass “anything and everything that works” to achieve that outcome, as the majority did here.
ipguyAugust 3, 2020 07:18 pm
As always, Judge Newman hit the nail on the head.