Recent cases highlighting patent eligibility under35 U.S.C. 101 at the Federal Circuit
The Federal Circuit recently decided two patent eligibility cases under 35 U.S.C. 101.
American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Appeal No. 2018-1763 (Fed. Cir. July 31, 2020).
AAM’s U.S. Patent No. 7,774,911 claimed methods for manufacturing a drive shaft assembly comprising tuning a liner that is placed within a hollow shaft to damp undesirable vibrations in the shaft. The prior art described damping the vibrations namely, “bending mode,” “torsion mode,” and “shell mode,” separately but not simultaneously.
The Federal Circuit modified and re-issued its October 3, 2019 opinion following a panel rehearing. Using the two-step analysis for Mayo/Alice, the Court affirmed the district court’s opinion in part by concluding that claim 22 was patent ineligible. Regarding claim 1, the Court vacated and remanded for further proceedings to determine its patent eligibility.
In applying Mayo/Alice step 1, the Court reasoned that claim 22 requires the natural law, Hooke’s law, and “confers patent coverage if the attenuation goal is achieved by one skilled in the art using any method.” AAM argued that tuning a liner such that it attenuates two different vibration modes is complicated in practice, involving more than the simple application of Hooke’s law. However, the Court responded that claim 22 does not recite these particular features. The Court found that claim 22 “is missing any physical structure or steps for achieving the claimed results,” thus, “claim 22’s instructions to tune a liner essentially amounts to simply claiming a result.” Regarding Mayo/Alice step 2, the Court included that claim 22 does not involve an “inventive concept” because claim 22 either recites the ineligible concept of Hooke’s law or recites only conventional activity.
Unlike more general claim 22, the Court held that claim 1 was not merely directed to Hooke’s law since, for example, claim 1 recited additional limitations such as “positioning the at least one liner” to achieve the results.
XY, LLC v. Trans Ova Genetics, LC, Appeal No. 2019-1789 (Fed. Cir. July 31, 2020).
In XY, LLC v. Trans Ova Genetics, LC, the district court held the claims of U.S. Patent No. RE46,559 as ineligible under 35 U.S.C. 101 and held XY’s patent infringement allegation as claim-precluded based on a prior lawsuit. On appeal, the Federal Circuit reversed the district court’s claim ineligibility opinion and vacated the claim-preclusion opinion.
The ’559 patent is directed to the use of flow cytometers to, for example, “separate X from Y bearing sperm,” an application useful in animal husbandry. The district court held that claim 1 of the ’559 patent was directed to the abstract idea of a “mathematical equation that permits rotating multi-dimensional data,” and that the asserted claims lacked an inventive concept because XY admitted that each claim element was known in the art. Applying the Mayo/Alice framework, the Federal Circuit determined that the ’559 patent claims implement or apply mathematical formula[s] in a structure or process which is performing a function which the patent laws were designed to protect. The Federal Circuit noted that “claim 1 of the ’559 patent recites an improved method of operating a flow cytometry apparatus to sort individual particles in the same sample in real time, and includes a detailed recitation of the means for doing so.”
Practical Prosecution Suggestions
When drafting claims for inventions that relate to natural laws or abstract ideas, reciting limitations to achieve the desired results is useful for patent eligibility. Citing the specification for the limitation without reciting the same in the claims is not sufficient to make claims patent eligible.