by Dennis Crouch
American Axle & Mfg. v. Neapco Holdings (Fed. Cir. July 31, 2020). 
When I talked with PTO Director Andrei Iancu a few months ago, he lamented that the Federal Circuit is now finding the manufacturing of Truck Axles and operation of Garage Door Openers ineligible for patenting. The Federal Circuit panel has rewritten its Axle decision — now holding that American Axle’s asserted claim 1 might be eligible; Claim 22 remains ineligible.
The court was evenly divided six-to-six on the en banc petition. That meant the en banc petition is denied for lack of majority. The minimal changes made by Judge Dyk to his original opinion were just enough to avoid full rehearing. Still, half of the court thought that the opinion went too far in expanding the ineligibility hammer.
I’ll post this here for now, but will follow up with more later today.
Documents:
- En Banc Denial with Five Separate Opinions. [AmericanAx En banc Denial].
- New Panel Decision penned by Judge Dyk and Joined by Judge Taranto; Judge Moore in dissent. [AmericanAx New Opinion].
- Original Panel Decision penned by Judge Dyk and Joined by Judge Taranto; Judge Moore in dissent. [AmericanAx Original Op].
- Crouch, Hey Mechanical Engineers: Your Patents are Also Ineligible, Patently-O (October 3, 2019).
- Crouch, Validity Goulash: Functional Claim Language, Patent Eligibility, and Pick-up Truck Drive Shafts, Patently-O (December 15, 2019).
- U.S. Patent 7,774,911.
link to patentscope.wipo.int
You can see the EPO file wrapper here where the argument made in the extended search report is repeated by th e CAFC. You can tell because D1 GB 1 462 170 A (Ford Motor Co) is nowhere in the US record but used by the CAFC in the same way as it is from the EPO.
So the CAFC adopted the EPO’s position on this application and (including also 112 arguments) and then put them into a 101.
Note that there is a pending response from the applicant at the EPO but that is very weak in my opinion. It is a repeat of the arguments and I’d give it a zero percent chance of success.
Paul repeats some of my arguments below and I elaborate on some of the arguments as well.
In my opinion, this is a case where 101 is used to invalidate claims the CAFC felt were obvious over the new art at the EPO and not enabled as argued by the EPO.
But rather than use the real arguments the CAFC used their secret weapon–Alice.
Night, I am still uncertain whether your grasp of the matter is accurate. Your Link at # 10 goes to the WIPO whereas mine at 8.1.1.1 goes to the EPO file, the List of Documents, of which the three at the top of the list present Applicant’s response to the EPO of November 2018. In that response there are interesting admissions such as:
“….tuning itself is well-established…”
which might indeed have encouraged the writer of the CAFC opinion to condemn the claims in suit.
But is this response of November 2018 the presentation of patentability that you dismiss as “very weak”? It does not strike me as “weak”. I wonder how it can be, that we are so far apart in our assessment of those papers.
I agree, of course, with your main point, that using 35 USC 101 as an expedient short cut, to get rid of claims that fail 102 0r 3 or 12, is inexcusible.
OK. I had the wrong link. Thanks for providing the proper one.
I did read all those documents. I did a deep dive on this.
Please re-read my post. What I said was “weak” was the applicant’s response to the office action. I think the patentability argument made by the EPO are very strong.
Interesting. I had another look at the EPO Action of May 2018 and the response of November 2018. I still don’t see the response as notably “weak” but perhaps that’s because I have not found the time or the motivation to study the application as filed and the prior art references in enough depth to reach my own solid opinion on the issues. I wonder if our differing assessment is because it so often happens, that what “works” at the EPO falls flat at the USPTO, and vice versa.
Let’s see how we stand, shall we, when we can read the next Communication from the EPO Examining Division.
The patentee’s argument has not really changed from what they presented before. You may wait or read more but I have made up my mind.
I suspect that you don’t really understand the issues.
Do you think there is any difference between “the issues” at the EPO and those in the USA? I am sure that I don’t “really” understand the issues in the USA. Are you sure that you really do understand “the issues” at the EPO?
And I wonder, relative to which “issues” are you judging Applicant’s response at the EPO to be “very weak”?
“I am sure that I don’t “really” understand the issues in the USA.”
That should be tattooed on your forward – in mirror image, so that every morning when you get up you are reminded of that BEFORE you venture your opinions on US patent blogs.
Really really.
“a pending response from the applicant at the EPO but that is very weak in my opinion.”
Please re-read Max.
As a final note one should be concerned that the patentee never had a chance to argue against the new reference D1 in the USA and that their arguments have not had a chance to be completely rejected at the EPO.
You can see what has happened with Alice. Rather than patentees having the law and procedure on their side, the CAFC may simply put you in the grave with Alice as they like.
1. I’m surprised to see Reyna dissent from denial of re-hearing en banc in this case.
2. As seen by the split here, women now make up the majority of the sane/intelligent judges on the CAFC.
What is striking is that Obama completely remade the court with anti-patent judicial activists who mainly don’t even have a science degree so are completely incapable of even remotely understanding the issues.
Wallach, Taranto, Chen, and Hughes are all Obama appointments.
O’Malley, Stoll, and Reyna are too.
Reyna is typically incredibly anti-patent. O’Malley was the first Obama appointment before Obama started appointing judges selected by SV.
Stoll seems to be having a bit of change of heart about patents but the problem is that Stoll was known to have serious personality problems as a partner at Finnegan and she is a wild card that could do anything.
Readers may note that the equivalent EP 1994291 is undergoing examination and that there has been an office action dated May 2018 and a response dated November 2018 in which the issue of vagueness was raised and addressed. It is unfortunate that owing to delay in the EPO there has been no further progress since it would be useful to know whether grant can be achieved and if so what the allowed claim scope would be.
Thanks, and let us all know what the allowed EPO claim will contain.
Paul , the Link below will take you to the document collection on the EPO file. The top three lines are the response docs of November 2018, on the basis of which Applicant has been waiting ever since, for a Notice of Allowance. Applt could ask for expedited examination (no fee required, no reason needed) but my guess is that there is no confidence that the amended docs serve as a basis for allowance.
See also the “Register Alert” box. You can instruct the EPO Register to alert you to each further progress step. again, no fee.
But as to reading the Nov 2018 response docs, you know the drill, I guess. Check the box to the left of each of those three lines, then click on “Selected docs” and the pdf will download for you.
link to theguardian.com
Oh dear. Sorry about that. The Link I provided is no use. Here is the one I intended:
link to register.epo.org
Profound thanks for posting this so quickly – the opinions demand detailed study before any informed comment can be made. But many thanks for the invaluable time-saving links to the various significant documents.
Does it REMOTELY occur to the judges that an enquiry into prima facie compliance as a matter of substance rather than mere outward presentation with one of the four ELIGIBLE categories might be an important step prior to consideration of the judicial exceptions. That is an approach to statutory construction that is, or should be, taught as an elementary and fundamental matter in law school. You don’t have to go to SCOTUS to become aware of this relevant principle.
I cannot refrain from observing that our profession is being shafted.
Interesting observation, Paul, on a US blog, that “our profession” is being “shafted”. You and I are not attorneys at law. Rather, we are British and European Patent Attorneys
Three thoughts therefore immediately occur to me: i) Which profession do you mean? ii) Who is doing the shafting?….and…iii) Much more important than whether our profession is being shafted is whether the over-riding objective of promoting the progress of the useful arts is being shafted.
Presumably , Paul, it is not the public, not the Congress, not the executive branch. Instead, I presume, it is our fellow jurists who are doing the shafting.
Below is a Link which will reveal the qualifications and experience which have put Professor Paul Cole in a uniquely advantageous position to recognise when his own profession is being shafted.
link to cipa.org.uk
This case is all about a drive shaft – hence the reference to shafting!
And I do not feel that we in Europe and my counterparts in the US are members of separate professions. Perhaps that is the result of many trips to the US including attendance at the AIPLA Annual Meeting for more than 20 years (it is a matter of profound sorrow that attendance this year will not be possible and the meeting will be virtual).
Who is being screwed? Those who draft and prosecute patent applications that are or are intended to be filed at the USPTO. Who is doing the screwing? Judges with an inadequate grasp of science, engineering and technical fact and an inability to focus and derive from prior judicial decisions the relevant and limited rules of law. As Polonius said to Claudius in Hamlet, brevity is the soul of wit, but judges are apt to prefer tediousness which are its limbs and outward flourishes, leading on both sides of the pond to long and rambling discussions of earlier cases which somehow do not get to the key point. It does not bother these judges that their interpretation of the law arguably places the US in breach of its obligations under the TRIPS treaty – who cares if we judges lead to breach of the treaty the US campaigned for? Have a look at the briefs I wrote in Athena, Ariosa and Recognicorp.
And have a look at Prometheus v Mayo. That case involved two claimed features which were admittedly known on the face of the document, and two other features which were informative but did not involve the hand of man in any way. The correct holding was that eligibility could not be derived from features of that character, and nothing more because that was what was needed to decide the case on its material facts. All the rest is bombast.
Shaft: to cheat or trick someone, or to treat someone unfairly (dictionary definition).
Somehow the link between unfair treatment and a case involving a drive shaft seems very apt. Perhaps when there is another doubtful 101 ineligibility holding we can simply say “another shafting case!”
Paul,
Those are not answers that MaxDrei was likely looking for (as they mirror the position of Night Writer, rather than the position of Paul F Morgan).
Noted. I’ll be sure to apply magic, rather than natural laws, for my inventions going forward.
Will listing the incantations and their proper order, along with the particular species of bird’s nest in the potion meet the enablement requirement? What if other magicians of ordinary cannot replicate the result?
Birds and their nests are products of nature, son.
Arguably, if your incantation worked, then magic would simply be another law of nature.
I think how you claim it would be important to consider.
A method comprising:
adding the a 5-17 grams of ground tarsus of a songbird to a brass bowl;
walking backwards 4-8 rotations around the brass bowl while making the upside down symbol of the cross;
adding 10-23 grams of pureed brain of a migratory goose to the brass bowl;
chanting “Redbull gives me wings” 7 times in a substantially monotone chant;
adding 200-437 mL of water from a birdbath after 7-10 pigeons have bathed to the brass bowl;
mixing for a duration of “Hips Don’t Lie”; and
pouring resultant potion of flying from the brass bowl into a bottle made from black sand.
What is the utility under the Useful Arts?
I carried out the method faithfully and drank some flying potion from the black sand bottle. To my great distress I remain earthbound.
However, I cheered myself up by re-reading The Owl and the Pussycat went into space in a modified Jupiter C …
link to sffworld.com
You might be better off describing what you did rather than what you want to happen.
Re: “You might be better off describing what you did rather than what you want to happen.”
Yes, that’s a good way of explaining why purely functional claims just to a desired end result with no other meat on those bones as to how runs into 101 rejections. But apparently, like “means function” claims, they are so much easier to write that they have been too tempting. Look how many years it took to get many patent attorneys to finally realize after repeated Fed. Cir. reminders that “means function” claims were not nearly as broad as they thought or invited indefiniteness rejections.
“But apparently, like “means function” claims, they are so much easier to write that they have been too tempting.”
I am happy to blame patent prosecutors for a lot of the ills of the patent system, but I don’t think that’s appropriate here.
The motivation to claim the result is not the ease of claim writing but the value of the resulting patent. A claim with “meat” will always be easier to get around. Patent prosecutors are just providing their clients with the most valuable claims available.
Instead we should blame the CCPA and CAFC for their interpretations of 112 which have made claiming a result tenable outside of the unpredictable arts.
Re: “Patent prosecutors are just providing their clients with the most valuable claims available.” Except that they are not. Not when purely functional claims just to a desired end result will get shot down on 101 as soon as they are sued on, irrespective of PTO guidelines for their allowance that have been rejected by the courts, and with no statutory change in the works.
This brings up another issue. There are indeed some companies that are more interested in just obtaining patents than whether they can be enforced. But only the latter is the hallmark of an effective patent system.
Paul you surmise that there are “some companies” that are:
“…more interested in just obtaining patents than whether they can be enforced.”
In my experience, I would suggest that it is not just “some” but, rather, more or less all companies. Everywhere outside the USA, it has ever been thus. Ever more so, with the rise of standards-essential technical fields. Within the USA, was it not IBM that showed the way?
Patent procurement and patent litigation are two different worlds. Europe has had a pan-European patent granting system since 1973 but still, even now, can’t put together a pan-European patent litigation court. What sort of “hallmark” do you have in mind, for an “effective” patent system. Europe’s patent system is doing very well, even without any pan-European patent court. Perhaps even because there is no such court. The competition between the courts of, for example, Holland and Germany, for the pan-European patent litigation business is intense.
Your argument relies on the probability of Alice somehow being altered being very low.
While you’re correct to note that there is no imminent statutory change coming up, I think this actually reveals a great deal of optimism on the part of patent prosecutors as an aggregate. Prosecutors didn’t support the 101-112f trade that was being considered in congress. I think that demonstrates that they expect for the problem to be resolved in a more favorable manner.
For a patent prosecutor who expects the law to resume its permissive stance in 5-10 years, it may be highly rational to draft claims in a result based format.
Ben, no question than many PTO application prosecutors seem to “expect for the [101] problem to be resolved in a more favorable manner.” Especially, many blog commentators here, and also PAE attorneys. However there are at least two reality check issues with that expectation. First, it heavily correlates with the same people who spent years erroneously predicting that IPRs and other things they disliked would be struck down as unconstitutional. Secondly, PTO application prosecutors and PAE attorney views on this subject do not correlate well with the huge companies patent-sued the most these days, having the biggest budgets for top attorneys, and having the largest lobbying organizations.
“and also PAE attorneys”
With all due respect, Paul
F
U
“However there are at least two reality check issues with that expectation.”
I don’t disagree. But their expectation, right or wrong, is what we should use to interpret their propensity for result-based claiming. If you believe that Alice is over in 5 years*, it’s not lazy to claim processors configured to achieve results. It’s simply effective prosecution.
*This is especially true now under the easier Iancu test for eligibility. I expect many prosecutors are thinking “Get that patent and wait for Congress to smack some sense into the courts.”
Josh — tried magic; didn’t work.
Next up: Voodoo!
You don’t understand how Magick works.
Let me put it this way:
It’s not the wand, it’s the Magician.
The wand serves to focus the Magician’s intentionality on the task.
The same is true when you are using incantations and the various accoutrements.
The Flash of Genius is a manifestation of Magick.
Night, I haven’t yet read the case “very carefully”. Nevertheless, I remain sceptical that the judges have adopted “the EPO’s opinion”. What specific”opinion” is that then?
What might be closer to the mark is that the judges have found influential the settled and clear boundary line that the EPO has arrived at, in its established case law, between what in general is patentable and what is not.
See another US-based patent blog today, in which Michael Borella sets out his assessment of what is the decisive difference between subject matter that is eligible and that which is not, namely, specificity, novelty and technical character. Readers will instantly grasp that “technical character” is a concept lifted straight out of the established case law of the Boards of Appeal of the EPO.
link to patentdocs.org
That is a genuinely cool post. Thanks for sharing.
You mean any post that seems to contradict me is “cool.”
Does my post “seem” to “contradict” yours? That was not my intention. Rather, I was just trying to pin down what you were thinking.
The key to this is likely that the majority says that there was already a liner that did both kinds of damping. And the tuning was relying on what was already known, but allegedly with different goals.
Probably would come out differently if the majority could not find a reference and make assertion that the damping was already known.
What I think is that the majority read the extended search report and the way the prior art was interpreted and realized that this should not have been patented in the USA. As well as the tuning not being specified. But the key is the interpretation of the prior art in the extended search report including two types of damping.
Please take your Ms. Cleo routine elsewhere.
Fwiw, I was referring to the linked post rather than Max’s comment itself. It’s worth a look independent of you two’s conversation.
Still think this is the reincarnation of MM.
It clearly is not, Night Writer.
But I will remind you of the DISQUS posting days of this blog when people could “upvote” or “downvote” comments and that there is as a particular person that nearly always upvoted everything that Malcolm posted (hint: the moniker used by that poster was “Ben,” and reflects most all of the current views of the poster that you comment upon).
You assume anon that MM wasn’t running multiple accounts. Ben’s personality is very much like MM’s. I am pretty sure they are the same person.
I assume no such thing, Night Writer.
Don’t forget, you are talking to the person that OUTED Malcolm for his own rampant use of s0ck puppets (after vociferously whin ing about theme here.
Note though, his use was NOT on this blog, and he generally did not use multiple monikers HERE. At Patent Docs, that was quite a different story.
His ‘playbook’ was extremely limited, and his writing was easily distinctive.
Ben is NOT Malcolm. While his views are often similar (being anti-patent, and dismissive of anyone with a different view, often in an odd way, given his own lack of grasp of the matter under discussion) – but the DISQUS days of this blog provides a much more likely explanation of that.
I am genuinely curious Ben – why exactly do you think this is ‘cool?’
link to patentscope.wipo.int
Just read the extended search report. The analysis is identical to what is in the initial opinion of the CAFC.
There is new prior art in the extended search report that interpreted as having two damping methods. That wasn’t anywhere in the US record and it is used by the CAFC so they obviously used the EPO.
Note too that the D did not cite to it and apparently did not do a great job as they didn’t even pick up on this. Some clerk at the CAFC read the extended search report and saw that there was a clear 112 issue and that the new prior art D1 GB 1 462 170 A (Ford Motor Co) did have two damping methods.
So that is my take. I agree with the extended search report and think that the CAFC just used 101 as it was all they had.
Ultra vires — in more than one way (if your surmise is accurate).
This should bother EVERY US attorney.
It is clear that this is what happened. As the argument used by the CAFC appears nowhere else but at the EPO.
What should really bother people is that a 103/112 argument is being used where the patentee never got a chance to respond to the argument in the USA.
The “judges” just used the argument from the EPO as indisputable fact.
Night, the thought that comes to my mind is that on the EPO file wrapper is not only the argumentation from the EPO but also the exhaustive response argumentation uploaded to the public file by the Applicant back in 2018.
True Max but the patentee should get a chance to make these arguments under USA law.
The PatentDocs “approach” is by ALL measures a truly mistaken and even asinine approach that abrogates the ethical duty of US attorneys to place the Constitution above the courts.
It really does make a difference to take a stand against the improper re-writing of statutory law by the courts (and it should be noted that the attempts so far have created a Gordian Knot of conflicted Common Law rewritten law).
The PatentDocs “approach” is by ALL measures a truly mistaken and even asinine approach that abrogates the ethical duty of US attorneys to place the Constitution above the courts.
It really does make a difference to take a stand against the improper re-writing of statutory law by the courts (and it should be noted that the attempts so far have created a Gordian Knot of conflicted Common Law rewritten law).
Newman:
“Our colleagues, writing to support denial of rehearing en banc, propose that there is a Section 101 distinction between claim 1 and claim 22, and
draw analogy to claim 8 of Samuel Morse’s telegraph patent, Judge Dyk explaining that “claim 8 of O’Reilly specifically did not limit itself to the specification and for that reason was found ineligible.” J. Dyk concurrence at 2 n.1. However, claim 8 was not rejected because it was not limited to the specification, it was rejected because it proposed to claim electromagnetism as a scientific principle. If the panel majority is holding that eligibility to claim an invention employing a scientific principle depends on whether the principle is mentioned in the specification, clear instructions must be given.”
That reads to me as playing dense. Seems like tossing read meat to your fans when you know nothing will come out of a case.
Of course, Ben, that is how it might “read to you.”
But that only exemplifies your lack of any real understanding of law.
(that’s not a good thing for you, by the way)
Should Prost’s and Hughes’ votes be listed?
We can infer their votes — otherwise the case would be en banc.
split one for each side…?
But whose would be split in what direction?
The opinions identify six judges arguing for en banc rehearing.
They only expressly identify four judges against en banc rehearing. The remaining two judges must have also voted against — otherwise we’d be getting the rehearing.