SCOTUS should wade in on patent eligibility, says SG
The US Supreme Court must hand down a clear decision on the patent eligibility issue at the heart of American Axle v Neapco, the US Solicitor general Elizabeth Prelogar has urged.
In an amicus curiae filed on Tuesday, May 24, Prelogar outlined her views in response to the SCOTUS’ request for input regarding the controversial case that has sent ripples throughout the patent community over the past seven years.
She noted that while the coverage of section 101 of the Patent Act is “expansive, it is not limitless”, stressing that: “In the view of the US, the petition for a writ of certiorari should be granted with respect to question 1 as framed in this brief.”
This question presented by American Axle in 2020 to SCOTUS asks: “what is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the court’s two-step framework for determining whether an invention is eligible for patenting under section 101”.
Background
The dispute arose in 2015 when the manufacturing company alleged that Neapco had infringed a patent, US number 7,774,911.
The patent relates 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.
But the US District Court for the District of Delaware sided with Neapco, holding that the claims of the patent are simply directed to the utilisation of a natural law and do not specify how to implement an invention.
On appeal, a split panel of the Federal Circuit in 2019 affirmed the lower court’s decision finding that there was no “inventive concept” other than “well-understood, routine, [and] conventional activities previously known to the industry.”
But following American Axle’s appeal for panel rehearing and rehearing en banc, the panel reissued its opinion and affirmed the district court, but withdrew its reasoning as to Claim 1 on the patent, sending it back to the district court in Delaware. Finally, the Federal Circuit denied the petition to rehear en banc by splitting 6-6.
A suitable vehicle
In her filing, Prelogar described the case as “a suitable vehicle for providing greater clarity”.
She wrote: “As the splintered separate opinions at the panel and rehearing stages illustrate, the Federal Circuit is deeply divided over the proper application of this court’s framework, and the content of that framework is central here.”
Speaking as part of WIPR ’s forecast series at the start of the year, Aziz Burgy, partner at Axinn predicted that the hotly-debated issue would need to be addressed before the end of 2022.
“In this case, the Supreme Court has the opportunity to clarify one of the most hotly contested areas of patent jurisprudence in patent eligibility,” he said, cautioning: “Unless SCOTUS can provide clarity in the upcoming case, many stakeholders believe that legislation will be needed to properly address the issue.”
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