Hey Mechanical Engineers: Your Patents are Also Ineligible

by Dennis Crouch

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (Fed. Cir. 2019)

This case focuses on Neapco’s U.S. Patent 7,774,911 that D.Del. Judge Stark found to lack eligibility. On appeal a divided panel has affirmed — with Judges Dyk and Taranto supporting invalidity and Judge Moore writing in dissent.

The ‘911 patent covers a method of manufacturing a drive-shaft assembly with an internal-liner that is designed to reduce vibration problems. Yes –  the method of manufacture is not patent eligible because it is directed to a law of nature.

One way to see this case is as a battle between Parker v. Flook and Diamond v. Diehr.  The majority follows Flook and finds the patent is invalid.  As suggested below, the issue here also looks like Halliburton — where the patent “conveniently” uses functional language at the point of novelty.  The majority also suggests – but does not decide – that the claims lack enablement and written description.

Essentially, the claim are directed to functional improvement in drive-shaft technology — a drive shaft with an internal liner that has 2-way damping.  However, the claims do not require a particular approach to achieving the damping result. Further, according to the majority, the specification does not provide enough guidance to let readers know that something real (beyond a law of nature or abstract idea) is being claimed.

Claim 1 at issue:

A method for manufacturing a shaft assembly of a driveline system … adapted to transmit torque …, the method comprising:

providing a hollow shaft member;

tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and

positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell-mode-vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending-mode-vibrations in the shaft member,

the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.

Drive shaft technology has been around for a long time and the subject of many patents.  One of the earlier U.S. patents is this 1861 Mower Machine (U.S. Patent No. 32,908).  Throughout this time, a common problem has been vibration control and various solutions have been the subject of hundreds of patents.

In this case, the core innovation disclosed in the ‘911 patent is that the shaft-liner has been attuned to dampen two types of vibration (shell mode and bending mode) and the patent provides several example shaft liner designs to accomplish this goal:

Critical Over Claiming: Rather than claiming these particular liner shapes, the patent claims a liner that is “attuned” so as to have a particular dampening profile. This is the patentee’s critical error.  In addition, the patent does not claim a particular method for attunement — just the functional result.  In considering what’s being done here, the Federal Circuit found that the claim is broadly directed to the broad physics principles associated with vibrational frequency and dampening of vibrations:

[The claims] simply state that the liner should be tuned to dampen certain vibrations. Thus, the problem is that the claims’ instruction to tune a liner essentially amounts to the sort of directive prohibited by the Supreme Court in Mayo—i.e. “simply stat[ing] a law of nature while adding the words ‘apply it.’” . . . [T]he mechanisms for achieving the desired result—are not actually claimed.

Since drive shafts and internal liners were already known in the art, the majority found nothing-new there — no inventive step sufficient to transform the abstract idea into a patent eligible invention.

Judge Moore’s dissent is a good read and I’ll save a post on it for this weekend.

110 thoughts on “Hey Mechanical Engineers: Your Patents are Also Ineligible

  1. 15

    Does anybody here in this long thread advance any sort of suggestion at all, that this claim has in it an ounce of patentability? I mean, drive shaft makers have long known that they can sell their shafts profitably only if they take care in their design and manufacture to “tune” them, with an appropriate “liner”, to ameliorate all three of the well-known modes of shaft vibration. The claim is a grotesque charade.

    Or is the argument simply about which of the available statutory ways to knock the claim on its head is the appropriate one to use here?

    Perhaps any one of them will serve, when the claim is, upon critical review, an out and out no-hoper.

    1. 15.1

      That depends when the liner method became at all obvious… And when it was a non-obvious general solution with multiple possible untested specific implementations. Innovation and research into a general solution with many possible specific implementations that all get similar results—does deserve some protection for a time from copy.

      This is simply an example of the well-known shortcomings of the implementation of the U.S. patent law.

    2. 15.2

      We don’t know because it wasn’t briefed.

      It is one thing to critique a hypothetical claim or a pending claim or a denied claim.

      However, we should refrain from advocating for taking patents away from inventors based on our preliminary judgment. Instead, we should advocate for due process for all inventors, regardless of our personal opinions based on the public record.

    3. 15.3

      Does anyone here know how Max know so much about drive shaft manufactures prior knowledge.

      1. 15.3.1

        All I’m picking up on, Les, is the definition of “tune” in the patent. The shaft is “tuned” whenever its three inherent modes of vibration are damped. Thus, the drive shafts that manufacturers make and sell have always been “tuned”. And as to “liner”, they have always had liners too. And as to FEA, how far back in time must one go, to get back to the days when it was NOT used in making drive shafts?

        All I’m thinking, Les, is that expressing this age-old and purely conventional “tuning” as an inventive exercise of “tuning” the liner relative to more than one mode of vibration is a cunning exercise in bamboo….zling first the PTO Examiner and then a judge at the CAFC.

  2. 14

    Imagine that you’re a professor with a widely read blog. A case comes down and you are presented with a range of choices as to how to discuss the case, and how to title the post that discusses the case. What’s an ethical professor to do? Why, let’s give the post the most misleading title imaginable! Yay for false assertions! Yay for confusion!

    Heckuva job. Witness the “benefits” conferred by tenure, folks. No consequences for Dennis Crouch. Heck, it’s just the patent system … which limits the freedom of everybody in the country. Bygones!

    Okay, let’s move beyond Dennis’ recurring title failures and try to straighten a couple things out.

    First, for the sake of accuracy:

    1) The properly claimed inventions of mechanical engineers are no less eligible for patenting than they were before this case

    2) The fact that an invention was the work of a “mechanical engineer” has never conferred automatically eligibility to a claim that covers that invention

    Everybody got that? Great. You’re welcome, Dennis. I hope you enjoyed the hysterics from your peanut gallery of eternally suffering and oh-so-misunderstood patent attorneys (always doing the work of the angels). I know I did! LOL Great job of tr 0 lling them, assuming that was your intent (which I know it wasn’t).

    Now let’s just recognize the (main) issue here: assuming the facts as understood by the majority (and folks should feel free to contest that understanding if they have special knowledge of the facts) the issue is functional claiming at the point of novelty and whether that defect represents a failure under 101.

    The silliest “argument” against the ineligibility of claims that protect “functionalities” and “results” is the one made below by Buckets and Greg DeL. It’s one of those zombie arguments that refuses to go away because, on its fact, it’s so easy to “follow”. The “argument” is that “claims which protect functionalities shouldn’t be ineligible under 101 because that’s what 112 is for.” Why is this such a silly argument? Because both 101 and 112 serve the same purpose (shared by 102 and 103): claims that violate the public interest by protecting subject matter which does not promote progress but which merely siphon wealth into the hands of attorneys and opportunistic game-players should not be granted. Put another way: there is nothing “wrong” about a claim failing under multiple prongs of the patent statute simultaneously. We should, in fact, expect this to happen given what we know about human nature and human fallibility. It’s a feature, not a bug, of the system that the statutes overlap each other to a degree (the extent of overlap may change depending on the claim from which the statutes are being tested).

    Let’s take a sample claim to illustrate the silliness of Greg’s argument (and yes it’s fun to pick on Greg because he refuses to discuss patent law with people who don’t pat him nicely on the head simply because he engages in that cloying erudition that shallow thinkers equate with civility when it frequently indicates the opposite):

    1. A new useful man-made non-obvious mechanically engineered device.

    Does this claim fail 112? You bet it does. Does it fail 101 as well? Of course it does.

    It fails both statutes for reasons that are essentially indistinguishable (and it also fails both statutes for reasons that are possibly distinguishable). Is one statute “better” than the other? Only if you care about the precise words that are used, or you like the name of some particular case more than the name of some other particular case. Otherwise … who cares? Here’s who cares: that guy out there (almost invariably a guy with quite a lot of money, relatively speaking) who is “concerned” that the choice of statute will “destroy pioneering inventions and the ability to claim them broadly”. That guy will complain about whatever statute is in fact used. And then guess what happens if you take those complaints seriously? Well, as soon as the other statute is used to achieve the exact same result for pretty much the exact same reasons then that guy will complain just as loudly (or more loudly) about that statute. This is not mere speculation, by the way. This is the way that the patent maximalist types (not necessarily Greg, who is quite young relatively speaking, and can blame his present confusion on youthful naivety) have operated in broad daylight for many years now.

    So let’s put the zombie “wrong statute” “arguments” to rest, mkay? LOL I know it will never happen. Such is the nature of the zombie “argument”. [Kudos to Ben for at least recognizing that 112 jurisprudence is probably more ‘confused’ and worthless at this point than 101].

    Some other nonsense from down below that shows how far off the reservation the biggest crybabies can wander:

    Any claim can be “directed to” an abstract concept, and then the judge can just say there is nothing more.

    In fact, a judge can’t accurately (or legally) “say that” when, in fact, the claim recites non-obvious objective physical structure. And there is no case that suggest otherwise. None. Nada. What this commenter is doing is engaging in chicken little screeching, straight outa Big Jeans echo chamber. Might as well just ask for a million dollars from the government, straight up, because “I deserve it and life is unfair because I say so, so there nyah nyah.” Very compelling!

    And then there’s good ol’ Greggie DeLaughatus again, talking about “overturning Mayo.” What does that even mean, Greg? You can’t “overturn Mayo” because Mayo stands for a very simple proposition: lawyers can’t use words to do things which insult basic Constitutional principles. So please, Little Greggie, pull your f—-ing head out of your f——ing @$$ already. Thanks.

    1. 14.1

      MM:
      The irony of this and many other 101 cases is that you can use the Alice/Mayo test to invalidate any process claim. (Yes, I am open to challenges.)

      One settled rule of statutory interpretation is that “[a] statute should be construed so that effect is given to all its provisions, so that no part will be inoperative or superfluous[.]” The Alice/Mayo test violates this rule.

      1. 14.1.1

        Paul Johnson: MM: The irony of this and many other 101 cases is that you can use the Alice/Mayo test to invalidate any process claim. (Yes, I am open to challenges.)

        Dear Paul Johnson,

        I don’t think you are ig n0r ant enough to attribute a quote to me that I never said so I’m going to assume you are instead directing that silly (and laughably incorrect) statement at me. I’ve already responded to your silliness on the other thread. In a nutshell, your “challenge” was taken up and you were made a f 0 0 l of.

        If you want to get slapped down even harder, just ask. Maybe you should be more specific about how you get slapped down this time. You want to hit the ground face first? Maybe I can gently push your wheelchair down the stairs. Like I said, just ask.

        1. 14.1.1.1

          You are projecting (again) Malcolm, as it was your stilted “example” that was torn apart.

        2. 14.1.1.2

          MM:
          As Thomas Jefferson once said, it is safe to tolerate “error of opinion . . . where reason is left free to combat it”.

          1. 14.1.1.2.1

            That’s an apt quote, PJ, that you should really think about more deeply.

            When you opine that “every process claim is ineligible under Mayo”, upon what “reasoning” is that opinion based?

            And if I provide you with a counter-example claim that is eligible based on the reasoning expressly provided in Mayo itself, am I providing you with merely an “opinion”?

            There is certainly room for policy discussions in debates about 101. But you don’t get to create your own facts, and you don’t get to ignore the inherent issues that arise from our patent system’s reliance upon the use of words to “claim” inventions and the lack of any requirement on the patentee’s behalf to delineate what elements in the claim are in the prior art and what is new.

            1. 14.1.1.2.1.1

              the lack of any requirement on the patentee’s behalf to delineate what elements in the claim are in the prior art and what is new.

              There you go again, confusing and conflating patent eligibility (under 35 USC 101) and OTHER sections of the patent law that DO set forth the requirements of “new.”

              Maybe YOU should be the one “thinking more deeply.

              As is typical (and an offshoot of your number one meme of Accuse Others), YOU really should try the advice that you are so eager to give out to others.

              Then again, it IS so very Trump-like to think that somehow YOU are above such things.

            2. 14.1.1.2.1.2

              As English poet John Milton suggested, “in a free and open encounter” truth will prevail.

              1. 14.1.1.2.1.2.1

                Yes, truth did prevail in Mayo v Prometheus. 9-0. Slam dunk.

                The myth that Prometheus claimed an “improved treatment method” was destroyed. 9-0.

                Now go take your vapid quotes and eff yourself with them, Paul Johnson.

                1. I wasn’t talking about Mayo v. Prometheus. Please re-read my comments so you’re not arguing against the wrong thing.

      2. 14.1.2

        One settled rule of statutory interpretation is that “[a] statute should be construed so that effect is given to all its provisions, so that no part will be inoperative or superfluous[.]” The Alice/Mayo test violates this rule.

        The entire point of Mayo is to “give effect” to 101 so that that subject matter eligibility can’t be scrivened around.

        My goodness, but the density of certain people is only outmatched by their hubris. It’s 2019 and we still have patent attorneys struggling with the basics. Or pretending to.

        It’s almost as if the whole point of this patent blog was to confuse people instead of educate them. Heckuva job.

        1. 14.1.2.1

          Your Accuse Others meme is noted.

      3. 14.1.3

        Go start your own blog, ya windbag.

        1. 14.1.3.1

          +1

        2. 14.1.3.2

          +1

        3. 14.1.3.3

          +1

        4. 14.1.3.4

          +1

          1. 14.1.3.4.1

            Poor little snowflakes. Rich Whitey and his thin skin. Boo hoo hoo, gotta have those entitlements and the gravy job writing those claims to Silly Con Vally Bro “apps” that nobody needs.

            1. 14.1.3.4.1.1

              “Whitey”…?

              Again with the Race card…

        5. 14.1.3.5

          -1

          With an explanation:

          Do we really want a “Malcolm” blog out there?

          I would much rather settle for Malcolm actually engaging in an inte11ectually honest manner with his blight simply (and effectively) constrained.

          There ARE other patent blogs that are far more effective with controls that alleviate the type of blight that Malcolm engages in (and HAS engaged in for more than 14 and a half years).

          I really don’t mind the fact that Malcolm wants a different set of patent laws. There could be some actual dialogue there. The problem is not that Malcolm wants a different set of patent laws, the problem is HOW Malcolm goes about his views. And it’s not even any sharp language in that “how” (per se). I can handle sharp language. Rather, it is the mindlessness and the utter lack of inte11ectual honesty that is galling.

          1. 14.1.3.5.1

            Yes, my comments here are so “mindless” that they regularly end up being the winning arguments in important cases.

            Meanwhile, Bildo’s comments … well … LOL

            1. 14.1.3.5.1.1

              YOUR comments are most definitely NOT the winning arguments.

              Conclusory parroting of Ends, absent any cogent and inte11ectually honest appreciation that the Score Board is broken does not constitute argument.

    2. 14.2

      “Why ‘little’ is the most brutal insult Trump can imagine”

      link to theweek.com

    3. 14.3

      Heck, it’s just the patent system … which limits the freedom of everybody in the country.

      Your cognitive dissonance is showing.

  3. 13

    Congress — where the heck are you?

    American innovation is burning — are we going to go into 2020 with this fire still raging?

    … and unless you want to stand by and watch as in continues to burn, please don’t replace Section 101 fuel for Section 112 fuel.

    112 fuel will burn just as hot.

    102, 103, and 112 — as is — are doing the job they’re supposed to be doing.

    They. Don’t. Need. Any. Changes.

    Don’t let Big Tech turn your eyes and ears away from what our great Country needs — they don’t give a d.a.m.n about America.

    We’re much better than that.

    Aren’t we?

    1. 13.1

      “they don’t give a d.a.m.n about America.”

      Presuming corporatist congresscritters do is lolable.

    2. 13.2

      Congress — where the heck are you?

      American innovation is burning

      We’re going to need a way, way bigger fainting couch for Rich Whitey.

      It’s too bad Dennis never tells his readers that the number of patent grants/year is at an all-time historic high.

      Oh wait: he just did that last week.

      1. 13.2.1

        … Whitey…

        There’s the R card.
        Again.

    3. 13.3

      ” please don’t replace Section 101 fuel for Section 112 fuel.”

      Uh-oh. Josh is saying the quiet part loud.

      1. 13.3.1

        ” please don’t replace Section 101 fuel for Section 112 fuel.”

        Uh-oh. Josh is saying the quiet part loud.

        ROTFLMAO

        The truth often leaks out of these guys.

        1. 13.3.1.1

          ..,says the guy MOST unaware of his own leakiness…

          (“gee, why do people compare me to Trump all the time”)

      2. 13.3.2

        Uh-oh. Josh is saying the quiet part loud.

        First, it’s not Josh.
        Second, it’s not the intimation that you suggest. There is no “quiet part.” This is a very loud “the suggested 112 changes are a Trojan Horse” warning shout.

        Ben — this is a prime example of you feeding your head with views that only satisfy the preconceived notion that you want to cling to, and you acting without critical thinking.

      3. 13.3.3

        Whoops. I mixed up Pro Se and Josh. Apologies.

        1. 13.3.3.1

          Yeah like they are totally different people with super divergent views.

          Not.

          1. 13.3.3.1.1

            … yay One Bucketing !

        2. 13.3.3.2

          That was not your only mix-up, and by far, not the important one.

  4. 12

    I understand Moore’s point and position and while I understand why she is poppin’ off how she is, she is not understanding what the majority is taking issue with. It is not a failure of the claims to TEACH HOW that the majority is concerned about, though their rhetoric does imply it from a certain point of view. Rather, what the majority is concerned with is a failure of the claims to REQUIRE/BE LIMITED TO something more specific beyond a generic recitation of a result to try to reach and instead simply setting such forth and then implying “go forth and achieve it using ye olde natural lawls”. To be sure, this case may well overstep the line, but I don’t think I’d be joining the majority without a very clear showing as to how this was a happenin’ in real life embs as compared to what the claim was covering.

    Also just my 2 cents, the claims here are more for something relating to the mat sci aspect of mechanical engineering that mechanical engineering itself. They’re literally talking about how to dampen the vibrational waves of the propshaft material. It’s not really a case about how to put a propshaft to good use or whatever mechanical action being taken with a propshaft.

    “AAM urges both that it “conceiv[ed] of the novel and
    unconventional concept of ‘tuning’ a liner,” and that it
    AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS 7
    conceived of a tuned liner that “unlike previous dampers
    and absorbers . . . [can] dampen multiple types of vibration” simultaneously. AAM Op. Br. 13. AAM explains that
    “particular liners that are specifically tuned to match and
    damp multiple vibration modes and are utilized to manufacture improved propshafts . . . w[ere] entirely new and
    far from well-understood” at the time of the ’911 patent.
    AAM Op. Br. 27. Neither the claims nor the specification
    describes how to achieve such tuning. The specification
    also discloses a solitary example describing the structure
    of a tuned liner, but does not discuss the process by which
    that liner was tuned. ’911 patent, col. 8, ll. 4–23. ”

    I do think that is rather key to both what the majority is complaining about and what Moore would urge be complained about as well. I am not sure I would give a 101 because of this situation tho.

    “Because the district court determined
    8 AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
    that the claimed “additional steps consist of well-understood, routine, conventional activity already engaged in by
    the scientific community . . . and those steps, when viewed
    as a whole, add nothing significant beyond the sum of their
    parts taken separately,” it concluded that the claims were
    not patent eligible. ”

    This right here seems rather key to the 101 finding. I’m not 100% sure I would join them at that stage. |

    “The claims are directed to tuning liners—i.e., “controlling a mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies.” ”

    That is somewhat the real key to the 101 question as decided by the Federal Circuit (as opposed to the DC, at least according to the Federal Circuit’s summary of the district court’s rulin’).

    I think after having read the rest of it the Federal circuit misunderstood quite a lot of what was actually being said by the experts and testimonies given and ended up making a 101 bo bo because of the same. Likely because of the way the experts were speaking is why I would say this happened. While reading through the quoted parts of the testimonies it is easy to see where a non-materials science expert would go awry in their understanding of the complex things being discussed. Shame, probably bad lawlyering on one side. Overall I cannot say I would join the majority.

    With that being said, it also seems likely that they should have been able to draft a claim to the actual product that would have been eligible and covered all they wanted covered anyway that would have been ez to draft and all. So again, lawlyering dropping the ball.

    1. 12.1

      6 said: “I understand Moore’s point and position and while I understand why she is poppin’ off how she is, she is not understanding what the majority is taking issue with. It is not a failure of the claims to TEACH HOW that the majority is concerned about, though their rhetoric does imply it from a certain point of view. Rather, what the majority is concerned with is a failure of the claims to REQUIRE/BE LIMITED TO something more specific beyond a generic recitation of a result to try to reach and instead simply setting such forth and then implying “go forth and achieve it using ye olde natural lawls”.”

      I agree, and I typically find myself on the opposite side from you on eligibility. The claims here are not directed to an implementation of a solution, but a problem. Without knowing anything about the technology involved, one could hear that “driveline systems have a problem with two types of vibrations” and could draft a claim reciting “a component to attenuate at least two types of vibration”. Is that an invention, or just a recitation of the problem? More and more, the court is coming down on the side of the latter.

      Specifically, you could make the same claim about UFRF v. General Electric – problem: “it’s difficult to integrate physiological treatment data from different machines” and claim: “convert the physiological treatment data from a machine specific format into a machine independent format”
      ChargePoint – problem: “locally controlled chargers can be locally hacked” and claim: “communicate requests for charge transfer with a remote server”
      Cleveland Clinic – problem “how to identify an elevated MPO concentration” and claim: “compare measured MPO levels in a sample to a control sample from a healthy subject”
      In re: Morinville – problem “how to automatically generate a hierarchical functional structure” and claim “identify positions and generate a hierarchical functional structure based on them”
      Innovation Sciences – problem “online payments can be insecure” and claim “sending payment information, wherein transmissions of payment information are secured.”

      It’s distinct from enablement… The specification in O’Reilly v. Morse had plenty of detail for enabling some of the claims, but Morse also had the claim “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed…” The claim wasn’t directed to an implementation of a solution to a problem, but a problem itself – “how to use electro-magnetism” – and claimed “using it”.

      I would submit that a claim to “a solution to [problem]” is an abstract idea, in that it doesn’t actually recite a solution, but *any* solution, and that it doesn’t involve an inventive concept because the problem exists prior to any invention. I think the majority is also correct when they suggest that a claim that recited how the tuning was to be performed would be eligible, since that actually goes to how to achieve the solution, rather than just claiming the concept of solving a problem generally.

      1. 12.1.1

        ” Without knowing anything about the technology involved, one could hear that “driveline systems have a problem with two types of vibrations” and could draft a claim reciting “a component to attenuate at least two types of vibration”. Is that an invention, or just a recitation of the problem? More and more, the court is coming down on the side of the latter.”

        Yes indeed so.

        However here, I’m afraid that if prior art ones only ever involved attenuation of the one kind of vibration at a time, and they actually built/designed one that actually does both then I’m afraid that is an invention.

        “I would submit that a claim to “a solution to [problem]” is an abstract idea, in that it doesn’t actually recite a solution, but *any* solution, and that it doesn’t involve an inventive concept because the problem exists prior to any invention.”

        A tough question to be sure. And a good argument to try to make if you’re wanting to 101 something. However, under precedent before today’s I’m afraid I would have to disagree that it would be a 101 problem, esp in the traditional arts. But it is certainly a colourable argument.

        “I think the majority is also correct when they suggest that a claim that recited how the tuning was to be performed would be eligible, since that actually goes to how to achieve the solution, rather than just claiming the concept of solving a problem generally.”

        That is def correct.

      2. 12.1.2

        iDan I think the majority is also correct when they suggest that a claim that recited how the tuning was to be performed would be eligible, since that actually goes to how to achieve the solution, rather than just claiming the concept of solving a problem generally.

        Well, it depends, doesn’t it? If the claim recites that this tuning problem is resolved by “using a tuner” or a “tuning means” or a “means for tuning” then the claim is still in the weeds.

        And that again gets us back to the “ultimate” question: what is new here? If these guys think they invented a new method of “tuning”, then they should claim it as such. Why put all the cr @p about “shaft assemblies” into the independent claim?

        1. 12.1.2.1

          “And that again gets us back to the “ultimate” question: what is new here?”

          The newly made workpiece (or newly designed) that dampens 2 modes of vibrations and the overall generic method of making it.

          “If these guys think they invented a new method of “tuning”, then they should claim it as such”

          It really is somewhat a failure of claim format.

          “Why put all the cr @p about “shaft assemblies” into the independent claim?”

          It might possibly help get over some art idk. It does help limit it down to a certain environment in terms of the art scope that it covers.

    2. 12.2

      6: it also seems likely that they should have been able to draft a claim to the actual product that would have been eligible and covered all they wanted covered anyway that would have been ez to draft and all

      Of course that’s true. They did, in fact, present concrete examples of such products in their specification. But gosh forbid somebody might have come up with a better one and they would have to compete … in the marketplace! Oh lordy that’s just unthinkable. Might as well just shovel pig man u re, or sit in front of a TV and eat chips until you die of obesity at age 25 if you have to actually try to sell stuff that is similar to stuff other people are selling. This is America, after all!

      1. 12.2.1

        I do hear what you’re saying but they do appear to have solved a rather stupendously long standing problem in this art and I am amenable to giving them their due scope. Here it does seem enabled across the full scope. These sorts of things are somewhat literally what patents are there to promote.

        1. 12.2.1.1

          “I do hear what you’re saying but they do appear to have solved a rather stupendously long standing problem in this art and I am amenable to giving them their due scope. Here it does seem enabled across the full scope. These sorts of things are somewhat literally what patents are there to promote.”

          Well, it’s certainly a long standing problem, but I’m not convinced they did actually invent it – at least going from what’s described and enabled in the spec. Specifically, to address one of Mal’s earlier comments, I dove in to the spec to try to draft a claim that I think would be eligible, like “a method of tuning a liner for attenuation in two modes, comprising…” and started looking for the steps of how that’s done… and it’s simply not there.

          You get the following descriptions:
          “With reference to FIGS. 1, 4 and 8, it will be further appreciated from this disclosure that the mass and the stiffness of the liner(s) 204 are tuned to the driveline 16 such that the liner(s) 204 acts or act as (a) a tuned resistive absorber for attenuating shell mode vibrations; and (b) as one or more of (i) a tuned reactive absorber for attenuating bending mode vibrations, and (ii) a tuned reactive absorber for attenuating torsion mode vibrations…”
          “Preferably, the liner(s) 204 is/are tuned to a natural frequency corresponding to at least one of a first shell mode, a second shell mode and a third shell mode. Where the liner(s) 204 is/are employed to attenuate bending mode vibrations, they are preferably tuned to a natural frequency corresponding to at least one of a first bending mode, a second bending mode and a third bending mode of the propshaft assembly 20 as installed to the driveline 16. Where the liner(s) 204 is/are employed to attenuate torsion mode vibrations, they are preferably tuned to a natural frequency of the driveline 16 in a torsion mode, such as to a frequency that is less than or equal to about 600 Hz…”
          “It will also be appreciated from this disclosure that various characteristics of the liner 204 can be controlled to tune its damping properties in the shell mode and in one or both of the bending mode and the torsion mode. In the particular example provided, the following variables were controlled: mass, length and outer diameter of the liner 204, diameter and wall thickness of the structural portion 300, material of which the structural portion 300 was fabricated, the quantity of the resilient members 302, the material of which the resilient members 302 was fabricated, the helix angle 330 and pitch 332 with which the resilient members 302 are fixed to the structural portion 300, the configuration of the lip member(s) 322 of the resilient member 302, and the location of the liners 204 within the shaft member 200.”

          So, how do you tune the liner? You adjust various characteristics until it’s tuned. Yes, that’s the definition of tuning a resonator. They don’t describe any specific process, such as adding mass by gluing weights to the sides, or reducing the length by shaving off a millimeter at a time, so how do they get the tuning they want? “Adjust things.” They don’t even identify any variables that have greater or lesser effect, or variables that can be fixed to avoid having to adjust them, thereby reducing the amount of trial-and-error adjustment required.
          What’s enabled by that disclosure?

          1. 12.2.1.1.1

            I hear you — but do the Ends justify the Means?

            The point here is whether or not 35 USC 101 (as written by Congress) was correctly applied.

            No one is doubting that other (and read that as proper) means could be applied to the facts of the situation —- and if they are, such are a sideshow distraction and not what should be the focus.

          2. 12.2.1.1.2

            “so how do they get the tuning they want?”

            They can use either of the manners which you described or else just do it when they do the casting or whatever it is they’re doing to make the thing initially I would presume. But yes it would have been nice for them to go into some detail. Poor lawlyering all the way through, just leaning on the ol’ “but but we don’t have to teach all that old stuff”.

            “What’s enabled by that disclosure?”

            I am no expert in this sub-field but nobody seems to have challenged the enablement of the claim. I presume that their contrib is mostly “hey we did it”, here’s our one we made designed (*files patent app*).

            1. 12.2.1.1.2.1

              I submit that their contribution was “we built a properly tuned liner through extensive trial and error and undue experimentation, so now we’re claiming all tuned liners and argue that no trial and error or undue experimentation is needed.” They can’t have it both ways: if it was the product of pure trial and error, then they haven’t come up with a patentable solution; and if it wasn’t the product of trial and error, they haven’t describe it in sufficient detail such that a PHOSITA doesn’t need to undergo undue trial and error.

              1. 12.2.1.1.2.1.1

                “we built a properly tuned liner through extensive trial and error and undue experimentation, so now we’re claiming all tuned liners and argue that no trial and error or undue experimentation is needed”

                “through extensive trial and error and undue experimentation”

                That last part is pure speculatin’ on your part tho. If you could prove it by evidences then you have a 112 enablement case. They may well have just used their noggin’s of their people, and they may be the most expert in the biz. We don’t know. Again, nobody has brought that issue up.

                “They can’t have it both ways: if it was the product of pure trial and error, then they haven’t come up with a patentable solution”

                Nowhere is that written in the lawl.

                “and if it wasn’t the product of trial and error, they haven’t describe it in sufficient detail such that a PHOSITA doesn’t need to undergo undue trial and error.”

                Again a 112 issue.

                1. “They can’t have it both ways: if it was the product of pure trial and error, then they haven’t come up with a patentable solution”

                  Nowhere is that written in the lawl.

                  Actually, the opposite is written in the ‘lawl” at 35 USC 103:

                  Patentability shall not be negated by the manner in which the invention was made.

                  6, I am surprised that THAT was not your reply…

                2. “Actually, the opposite is written in the ‘lawl” at 35 USC 103:

                  Patentability shall not be negated by the manner in which the invention was made.

                  6, I am surprised that THAT was not your reply…”

                  I wasn’t really thinking about 103 at that moment, I was thinking about 101 judicial exceptions and 112 enablement. But yes when it comes to 103 at least then it does say that (depending on the interpretation of how far ranging the effect of the tail end of 103 a court chooses to interpret it as having).

  5. 11

    I actually went and looked up the decision to read awhile back when greg or whoever posted in the other thread. I didn’t get through the whole thing. Still, I understand the court’s reasoning but they kind of neglected the whole part in Alice about not really messing much with the traditional useful arts. I’m not sure I can join them on this in this particular instance.

  6. 10

    I can totally see myself writing a claim like this without any 101 concern – why should there be any? I guess I see the substantive goal of Dyk & Taranto here, but this feels like a real outlier and, more than normal, a misapplication of 101.

    I’d rather that this case turned on 112 instead, if the court really feels like the specific lining structures/characteristics needed to be claimed. I have no problems if the strength and scope of 112 is increased to invalidate overly-broad claims if that decreases the reliance of defendants and courts on using 101.

    1. 10.1

      Alas, there is a “turtles all the way down” problem with the (proposed) 112 “solutions” to date — a veritable mirage that is no real solution.

    2. 10.2

      112 – yep. Congress can’t end this madness soon enough.

      1. 10.2.1

        +1

        1. 10.2.1.1

          Crybabies unite! You guys make a great team of crybabies. What’s the total income I wonder between these crying rich white boys who can’t get enough junky patents fast enough?

          1. 10.2.1.1.1

            … white….?

  7. 9

    Nonsense.

    If the step were attach A to B at point C, would the court have said, “the claim doesn’t recite how to attach A to B?”

    Just because the judges don’t know how to tune a liner for two modes of vibration, even after the specification provides examples of tuned liners, that doesn’t mean tuning an aligner is any more abstract than attaching A and B.

  8. 8

    What would the result be if there was no tuning step, but just “[adding] at least one [tuned] liner to attenuate at least two types of vibration transmitted through the shaft member”?

  9. 7

    Isn’t the issue more or less the same as that which we find in Neilson v Harford 151 ER 1266, which has been cited several times by SCOTUS?

    1. 7.1

      Interesting footnote by Judge Chen in his concurring opinion denying en banc review in Athena:

      “Both Mayo and Flook rely on an 1841 English case, Neilson v. Harford, 1 Web. P. C. 295 (1841), as supporting an “inventive concept” requirement in which a law of nature is treated as something well-known. Mayo, 566 U.S. at 82–83, 132 S.Ct. 1289; Flook, 437 U.S. at 592, 98 S.Ct. 2522. There is reason to believe, however, that the decision in Neilson did not turn on such a premise. See Tilghman v. Proctor, 102 U.S. 707, 723–25, 26 L.Ed. 279 (1880) (describing Neilson’s reasoning as drawing “the true distinction between a mere principle … and a process by which a principle is applied to effect a useful result.”); see also Brief of Professors Jeffrey A. Lefstin and Peter S. Menell as Amici Curiae in Support of Petition for Writ of Certiorari at 15–21, Sequenom, Inc. v. Ariosa Diagnostics, Inc. (2016) (No. 15-1182) (Lefstin and Menell Br.). Moreover, no Supreme Court patent eligibility case for a process claim prior to Flook relied on an inventive concept inquiry or assumption that a scientific discovery should be regarded as well-known. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972); Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed. 1034 (1909); Dolbear v. Am. Bell Tel. Co., 126 U.S. 1, 8 S.Ct. 778, 31 L.Ed. 863 (1888); Tilghman, 102 U.S. 707; Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139 (1876); Corning v. Burden, 56 U.S. 15 How. 252, 14 L.Ed. 683 (1853); Le Roy v. Tatham, 55 U.S. 14 How. 156, 14 L.Ed. 367 (1853) (“A patent will be good, though the subject of the patent consists in the discovery of a great, general, and most comprehensive principle in science or law of nature, if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained.” (quoting Househill Coal & Iron Co. v. Neilson, 1 Web. P. C. 673, 683 (1843))); see also O’Reilly v. Morse, 56 U.S. 15 How. 62, 114–15, 118, 14 L.Ed. 601 (1853) (quoting same passage from Neilson quoted in Mayo and Flook, and then stating that “we see nothing” in Neilson “which would sanction the introduction of any new principle in the law of patents” and relying on “established principles in the American courts”). Importantly, Diehr’s reasoning, which post-dates Flook and was controlling authority for 30 years, is incompatible with the inventive concept approach.

      Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, 927 F.3d 1333, 1347 (Fed. Cir. 2019)

      1. 7.1.1

        Importantly, Diehr’s reasoning, which post-dates Flook and was controlling authority for 30 years, is incompatible with the inventive concept approach.

        But do not tell the emperor that he is not wearing any clothes.

    2. 7.2

      I’d say this has the most to do with Alice. Any claim can be “directed to” an abstract concept, and then the judge can just say there is nothing more. As Moore points out they did that in this case as a finding of fact with no evidence.

  10. 6

    Allow me:

    Is it a method? Yes

    Does the result of the method result only in an item of information? No

    The method is eligible.

    The only principled reason to invalidate this patent on S101 grounds is judicial efficiency. Means and ends. The legal procedure to get to s112 invalidity must be streamlined. The opinion states: the mechanisms for achieving the desired result—are not actually claimed in claim 1 or claim 22 of the patent , which clearly means the invention is not particularly described nor could a PHOSITA reproduce it.

    Until we distinguish abstract claims from abstract inventions, we will never get out of this mire.

  11. 5

    How about we let enablement and written description save us from 101 after the CAFC starts enforcing the “full scope” part of those requirements?

    1. 5.1

      Just decide to add “full scope” yourself as part of your agenda?

      1. 5.1.1

        Which of these requirements is satisified by supporting a fraction of the claim scope?

        1. 5.1.1.1

          Whoops. I realize I jumbled that a bit. So rephrasing: do you think the enablement requirement doesn’t require the full scope to be enabled, or that the WD requirement doesn’t require the full scope to be supported?

          1. 5.1.1.1.1

            Enablement is definitely necessary across the full claim scope, as is written description support. A rigorous enforcement of these requirements would be orders of magnitude a better way to police the issues that are currently policed by §101.

            Incidentally, §112(b) requires that one distinctly point out the subject matter that one regards as the invention. In other words, vaguely point out, or generally point out are not good enough. One must distinctly point out. Vigorously enforcing that requirement would also go a long way towards resolving the problems that are currently resolved with §101, only without the untoward (e.g., Sequenom) results of the §101 approach.

            1. 5.1.1.1.1.1

              Full scope is not part of the statute and the term full scope is another one of those terms that leads judges to commit mischief.

              1. 5.1.1.1.1.1.1

                “Undue experimentation” is not a term in the statute. “Demonstrate possession” is not a term in the statute. “Metes & bounds” is not a term in the statute.

                What is your point? Do you mean seriously to contend that Congress did not mean to require that one must enable the full scope of what is claimed?

            2. 5.1.1.1.1.2

              “Vigorously enforcing that requirement would also go a long way towards resolving the problems that are currently resolved with §101, only without the untoward (e.g., Sequenom) results of the §101 approach.”

              I agree, though this would require an even bigger shift in how the courts’ behavior than just enforcing 112(a).

              And you know, the patent bar’s response to such a shift would be viceral. I doubt such a shift would last.

              1. 5.1.1.1.1.2.1

                I’ve said it a million times. The scope of the claims should be the scope of enablement to one of ordinary skill.

                If it is more, then the claim includes portions that are not enabled.

                If it is less, then the claim does not include embodiments of the invention.

    2. 5.2

      “How about we let enablement and written description save us from 101 after the CAFC starts enforcing the “full scope” part of those requirements?”

      I think that’d be nice, but even as the majority here notes that, they fail to do anything with it:
      “The dissent suggests that the failure of the claims to
      designate how to achieve the desired result is exclusively
      an issue of enablement… Both the
      Supreme Court cases and our cases addressing section 101
      have held otherwise, as the earlier discussion demonstrates. Enablement is concerned with whether the “the
      specification of a patent… teach[es] those skilled in the art
      how to make and use the full scope of the claimed invention.”… Moreover, even
      if, as the dissent says, the specification gives one adequately concrete embodiment, which we need not decide,
      that is not enough: O’Reilly established long ago that an
      inadequately concrete claim is not saved from ineligibility
      by the presence of adequate concrete recitations in the
      specification or in other claims. ”

      They explicitly acknowledge that enablement is concerned with the full scope of the claims, then say that O’Reilly wasn’t about enablement despite having a claim for which the full scope was not enabled. And the decision in O’Reilly wasn’t based on eligibility of natural laws, but enablement and written description:
      “If this claim can be maintained, it matters not by what process or machinery the result is accomplished… In fine, he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.”

      Unfortunately, they’re not applying that now, and instead shoehorn it into 101.

  12. 4

    We keep reaching new levels of insanity.

    1. 4.1

      And always will, unless and until someone (be it the Court, be it Congress) overturns Mayo…

  13. 3

    Judges Dyk and Taranto. Of course. Why properly invalidate a patent on 102, 103 or 112 grounds when they can improperly say “I don’t like it” and assert it’s abstract and fails 101, even when there’s nothing at all abstract about the claim?

    Please, just retire already, and take Judge Prost with you.

  14. 2

    Judge Moore’s dissent is a great read. She has much the better end of this dispute.

    1. 2.1

      Just reading through this. Judge Moore dismantles the majority not only on the law, but just on a basic review of the record–calling them out for making several clear factual errors simply on what the record says. Dyk and Taranto should be embarrassed.

    2. 2.2

      Yes J. Moore’s dissent is something to read for sure. It shows the great fractures in the patent law legal system.

    3. 2.3

      “The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent”

      Judge Moore simply destroys the majority in this dissent.

      1. 2.3.1

        She also accuses the majority of making fact finding with no evidence.

        1. 2.3.1.1

          She also accuses the majority of making fact finding with no evidence.

          Brother, she does more than accuse. Judge Moore’s dissent has the goods. She d@#^ well convicts the majority of fact finding without substantial evidence.

          1. 2.3.1.1.1

            The funniest thing is that if Judge Moore we’re addressing Greg on this blog, Greg would have put Judge Moore on the “ig nore” list for being so mean.

      2. 2.3.2

        “Judge Moore derp simply destroys the derp majority in this dissent derp.”

        LOL

        You guys are hilarious.

        1. 2.3.2.1

          Your Derp Dance is showing.

  15. 1

    Good to know. We are directing our ventures without wasting precious capital on U.S. patents.

    1. 1.1

      Let’s hope the last patent examiner left turns out the lights when his/her job is eliminated.

      1. 1.1.1

        The light bills could pile up.

      2. 1.1.2

        It is funny to see the examiners on here cheer on the destruction of the patent system as if it won’t put them out of a job.

        1. 1.1.2.1

          You see the same Lemming attitude from the likes of TechDirt and Slashdot folks who lap up the “patents are bad” mantra served in huge buckets.

          The desire for “not protection” comes from an odd sense of “we want to copy” coupled with a “what me worry” lack of appreciation of Guild power (including trade secrets and employment agreement lock-downs).

        2. 1.1.2.2

          “they don’t give a d.a.m.n about America.”

          I haven’t seen that many examiners on here cheeringlol. And the numbers of patents issued seems to continually be going up.

          1. 1.1.2.2.1

            6 the numbers of patents issued seems to continually be going up.

            This is no time to bring up facts. This is a crying session!

            For years Bildo and Company were complaining that the PTO was run too inefficiently. You know, Big Government and all that. Star Chambers, even!

            This year the same tribe insists that we should be weeping for the inevitable massive purge of Patent Examiners (the world’s most oppressed class of human next to Rich White Guy at His Keyboard Innovator) that is sure to come unless the PTO grants more claims to “functionalities” and “results achieved by a method”.

            But they’re very serious people. We must pay attention to them!

            1. 1.1.2.2.1.1

              Tribe…?

              Your one bucketing is noted.

          2. 1.1.2.2.2

            As I have pointed out and others, the number of patents is going up because of foreign filings. That number could drop very quickly. The number of patents by large corporations is dropping and the number by inventions done in the USA is dropping.

            Basically, China has saved you from layoffs.

            1. 1.1.2.2.2.1

              Basically, China has saved you from layoffs.

              O.k., but that is still as much as to say that your 1.1.2 is nonsense. There will be no lay-offs. It is not as if China is going to stop filing any time soon.

              In any event—as Ben rightly points out—the examiner corps should tell the truth and shame the devil. Let the law be applied as written, and how that affects hiring at the PTO should be a matter of no concern to the ethical examiner.

              1. 1.1.2.2.2.1.1

                should tell the truth and shame the devil

                That is unless of course the devi1 is Greg and “shaming him” makes you into a “meanie.”

                If that happens (I suppose based on the Book of Greg), it’s “OK” to be an inte11ectual coward and snipe from the sidelines.

        3. 1.1.2.3

          “It is funny to see the examiners on here cheer on the destruction of the patent system as if it won’t put them out of a job.”

          I am perfectly aware that some of the things that I advocate would most likely put me out of a job. I would be happy enough with that outcome if the country was better off.

          I find it funny that you are so lacking scruples that you interpret acting against one’s interest as confusion.

          1. 1.1.2.3.1

            I would be happy enough with that outcome if the country was better off.

            Well said, Ben. This is one of the points that I admire about you. May we all come to such an enlightened view of our roles in society.

          2. 1.1.2.3.2

            if the country was better off.

            That’s the critical factor Ben because the the anti-patent things that you “up-vote” would NOT make this country better off.

            The fact that you merely feel that way and only feed yourself with things that reinforce your desired view while NOT employing critical thinking brings the very opposite of the adulation that the inte11ectual coward would lather you up with.

            1. 1.1.2.3.2.1

              Well said, anon. This is one of the points that I admire about you. May we all come to such an enlightened view of our roles in society.

              1. 1.1.2.3.2.1.1

                Ha! Well played, sir.

                1. ..and the really funny thing is that — as professed by Greg — he cannot even SEE the comment I made that Night Writer “played well” TO.

                  He cannot possibly comprehend JUST “how well played” the situation is.

                  Such is the destiny of the inte11ectual coward.

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