IP trade group pleads with Fed Circuit to review ‘ambiguous’ decision
The Intellectual Property Owners Association (IPOA) has asked the US Court of Appeals for the Federal Circuit to rethink one of its earlier decisions, which it says blurs the lines of US patent laws.
In an amicus brief filed on December 2, the IPOA, which represents 175 companies across a range of industries, said an earlier decision in American Axle & Manufacturing v Neapco may open the door to countless challenges to mechanical inventions.
In October, the Federal Circuit upheld a ruling that a patent owned by American Axle & Manufacturing (AAM) is ineligible and cannot be enforced, as reported by WIPR.
The court said the claims of the patent (US number 7,774,911) are simply directed to the utilisation of a natural law and do not specify how to implement an invention.
Additionally, the Federal Circuit said the ‘911 patent claims a natural law concept without specifying the means of how to implement the concept, making the patent ineligible.
But, the IPOA said the decision has the potential to “blur the lines between section 101 and 112 analysis” under US patent law.
It said AAM’s petition for en banc review of the case is warranted to clarify the relationship between sections 101 and 112 of patent law and to remove any ambiguity that may have resulted from the decision.
In Mayo and Alice Corp v CLS Bank International, the US Supreme Court ruled that under section 101, a court must determine whether the claims of a patent are directed to one of three patent-ineligible concepts; a law of nature, abstract idea, or natural phenomena.
If the claim is directed to one of these concepts, the court must then determine whether additional elements of the claim “transform” the claim into patent-eligible subject matter.
Under section 112—written description and enablement—the claims must adequately describe an invention and instruct the public on how to make and use it. Without this, the inventor is not entitled to a patent.
“In the years since the Alice/Mayo two-step test was announced, there has been confusion and uncertainty concerning its application,” the IPOA said.
“The American Axle decision adds to this ambiguity by apparently interjecting into the analysis the interplay between the test for subject-matter eligibility and the written description and enablement requirements under section 112,” it added.
The patent in dispute related to a method for manufacturing driveline propeller shafts with liners that are designed to attenuate the vibrations transmitted through the assembly of a shaft, because such vibrations cause high volumes of noise.
In its decision, the Federal Circuit said American Axle’s patent claims “simply instruct the reader to tune the liner … without the benefit of instructions on how to do so”.
The IPOA argued that whether a patent teaches or “instructs” a skilled artisan “how to” use the claimed invention is a question of enablement under section 112, not patent eligibility under section 101.
“The decision, as it currently stands, may open the door to countless challenges to mechanical inventions with underpinnings in one or more, potentially unnamed natural laws,” the IPOA said.
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