Decision on American Axle Within the Week

by Dennis Crouch

The country is awaiting big non-patent cases from the U.S. Supreme Court that we expect sometime over the next week or so.  Most notably is the abortion case of Dobbs v. Jackson Women’s Health Org.  No patent decisions are expected, but the Court will consider whether to grant certiorari in the lingering eligibility petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891.  The American Axle received strong support from various amici filings, including an important recent brief from the US Solicitor General arguing that courts are now excluding inventions that have previously been at the core of eligibility. I look for an order granting or denying certiorari on June 27, 2022. Other pending petitions also ask the same or similar eligibility questions, including: Worlds Inc. v. Activision Blizzard Inc.;  and Spireon, Inc. v. Procon Analytics, LLC.  Over the past two years, the Court has been denying parallel pending eligibility petitions rather than holding them for resolution–suggesting to me that interest is not extremely high.

77 thoughts on “Decision on American Axle Within the Week

  1. 6

    Off-topic Question:

    An Examiner is citing a webpage as a reference but is not using Wayback Machine with time/date stamp.

    Instead, the Examiner is using Google Advanced Search with a Custom Date Range, and declaring that the webpages resulting from that search are printed publications from before the application’s priority date.

    Has Google Advanced Search with Custom Date Range been given equal footing with Wayback Machine for reliability of dates of a webpage for purposes of being a “printed publication” by the PTAB or Federal Circuit?

    1. 6.1

      Question within a question: is this for an application under a non-publication request?

      If so, your examiner may well have bigger problems.

      1. 6.1.1

        It’s for a design application so there is no publication. It’s supposed to remain confidential until allowance and remain so if there is abandonment.
        Is there a prohibition against Examiner’s using Google searches for applications under a non-publication request?

        1. 6.1.1.1

          Yes (unless Google has created a private version only for the patent office — which is doubtful).

          Definitely a call to the Ombudsman is in order.

        2. 6.1.1.2

          “Is there a prohibition against Examiner’s using Google searches for applications under a non-publication request?”

          No. There are restrictions on searches which could reveal confidential information, but examiners are expressly allowed to do some internet searches. See MPEP 904.2(c). So you should review the search history before raising a stink if you don’t want to appear to be only half a wit.

          1. 6.1.1.2.1

            Ben,

            Just because you may have been trained in a way that violates the non-publication request, does not mean that searching that reveals what is protected is proper (need I remind you that citing the MPEP is just not the same as citing controlling law and that the MPEP as written is rife with errors?)

          2. 6.1.1.2.2

            Hitting a filter…

            Your comment is awaiting moderation.

            June 22, 2022 at 8:17 am

            Ben,
            Just because you may have been trained in a way that v10lates the non-publication request, does not mean that searching that reveals what is protected is proper (need I remind you that citing the MPEP is just not the same as citing controlling law and that the MPEP as written is rife with errors?)

          3. 6.1.1.2.3

            35 U.S.C. 122 Confidential status of applications; publication of patent applications.

            (a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.

            (b) PUBLICATION.—

            “Ease of doing your job” does not rise to the “unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.

    2. 6.2

      Good question, though I would say first that if they’re not using wayback, first probably just plug it in wayback and see what it shows you. If it has great date then prob don’t try to challenge, if it has only a bad date then prob challenge. If no date, I would consult the examiner in an interview as to what the office’s official position is on the matter as opposed to any personal/individual position they are taking, if he happens to know.

      Personally I would say that it probably has not been given that status in any cases I’m aware of, or under any official proclamation of policy by the office, but I never use it so I may have just never paid attention.

      1. 6.2.1

        Thank you, 6.
        I had checked to see if the webpages had been archived by Wayback.
        One of the webpages was not archived by Wayback until AFTER the application’s filing date, and the other reference was not archived at all by Wayback.
        Both references are directed to Amazon.com webpages. For products sold on Amazon, there is a portion of the webpage that states “Date First Available” and gives a date that (presumably) is the date the product was first available for sale on Amazon. However, the Examiner insists that this “First Date Available” is the “publication date” of the webpage (instead of being just another piece of information the Examiner needs to show was available on that webpage prior to the filing date of the application (or earliest priority date, whichever applies)).
        I’m on my 5th consecutive Office Action (no RCEs) from this Examiner, with two different “Final” rejections withdrawn in favor of new Non-Final Office Actions citing new references. It’s been frustrating to say the least.
        Is the Ombudsman of any use in situations like this?

        1. 6.2.1.1

          “ Is the Ombudsman of any use in situations like this”

          Yes the Ombudsman is super useful for obtaining your invalid design patent.

        2. 6.2.1.2

          That reference sounds like it is in a grey region. MPEP 2182 says that (1) Wayback Machine archived content is prima facie prior art of as of the archival date, (2) content without any evidence of publication date cannot be used, and (3) that some internet content which isn’t Wayback Machine archived can sometimes be used, with a hypothetical of Social Media content of questionable date and availability considered.

          A page dated by google for a product dated by Amazon is far far weaker than a Wayback Machine dated reference, but it isn’t exactly no evidence of date.

        3. 6.2.1.3

          Bruh I don’t know about that. They usually don’t get much into the substance as I understand it, happy to be wrong there. Prob best to call an interview with them and the spe if they’re on board. If you think you’re being denied right to appeal (by the reopenings) then as far as I know all spes will make sure you can, but overall tough. I can’t discuss the individual case with you, have to just discuss generalities, but I would say that in some instances you have to consider “on sale date” as well as “pub date”.

          1. 6.2.1.3.1

            Those are good suggestions, but I’ve spoken with the SPE, the Primary, and the art unit “specialist”. They acknowledge In re SurgiSil and then kick the issue down the road with “we’re still waiting for Management to set policy”. Even if I were to file an appeal, it would still likely end with the rejection being withdrawn and yet another reference cited in its place.
            The only difference I’ve noticed is that they are now trying to find some generic commonality between the reference and the claimed design so that the Examiner can allege that the reference is analogous to the claimed design. This is frequently done in utility applications to allege that a cited reference is analogous art to the claimed invention, but first I’ve ever seen it done in the design art units.

  2. 5

    Does Las Vegas run odds on whether the SupCt. takes up a case ? Haha, I bet they do, its just a matter of numbers.

    Gentlemen, place your bets….

    1. 5.1

      It would seem by the Solicitor’s brief that the Scotus will take this.

      So I think I will agree with you that the Scotus is going to take this.

      1. 5.1.1

        I will further add that if the Scotus takes this that they will narrow Alice/Mayo.

        1. 5.1.1.1

          the awkwardness of the main claim, might be a sufficient reason to reject taking up cert.

          1. 5.1.1.1.1

            There are definitely lots of reasons not to take this because of all the problems which include the awkwardness of claim 1.

            Still, one thing I will say is that it is pretty clear what the invention is when you do a deep dive. You get what they are doing and it isn’t apparent that it is disclosed in the prior art.

            So, I could see the Scotus reversing the CAFC on 101 and remanding it for further considerations on the other issues.

            Frankly, I think it is weird that of all the cases that have petitioned for cert that this is the one the Scotus has given so much attention to. There were many better cases.

            Anyway…I’ll stick with what I said. My feeling is that they will take it based on the Solicitor’s brief being so strongly in favor of adjusting 101.

            Plus, this case does offer the opportunity to be fairly narrow in overturning the CAFC.

            1. 5.1.1.1.1.1

              It is difficult to imagine THIS Court crafting a partial – and thereby necessarily nuanced – refinement of their Gordian Knot.

            2. 5.1.1.1.1.2

              [I]t is weird that of all the cases that have petitioned for cert that this is the one the Scotus has given so much attention…

              +100

              Ariosa v Sequenom was a much better case to serve as a vehicle for course correction. When they passed on that one, I pretty much gave up hope that the Court would fix its own mess.

              1. 5.1.1.1.1.2.1

                Had the Court ruled in your favor in Ariosa, Greg, we’d quickly have another case that would effectively crush Ariosa into banality just as Mayo did to Diehr.

                Let me know if you need me to explain why. The Supreme Court has some very dense short-sighted people on it at the moment but somehow they still manage to see through the worst assertions of patent maximalists. Good for them and good for normal people.

              2. 5.1.1.1.1.2.2

                Well Greg (and anon and others) what is your prediction?

                Cert or no?

                Cabin Alice/Mayor a bit or not?

                1. no cert – (more or less going with the law of averages)

                  Sure, the Court did ask for the government to weigh in, and the government did so, but my gut tells me that the Court does not as of yet have the stomach to employ the Kavanaugh Scissors, and like I indicated, it is not likely that this Court would be able to provide a nuanced reasoning.

                  In fact, my feelings are HIGHER that if cert IS granted, then the Kavanaugh Scissors will be employed than cert actually being granted.

                2. I predict no cert. Bilski, Mayo, Myriad, and Alice were all unanimous in their holdings of ineligibility. In other words, there was a broad consensus against eligibility as recently as 2014.

                  Cert. grant requires 4 votes. There have been 3 changes in personnel since Alice. Therefore, a grant of cert. requires you to imagine that: (1) all three of the new justices want a change on eligibility and one of the incumbent justices has had a change of heart; or (2) more than one of the incumbents has had a change of heart and some number of the new justices want a change.

                  Neither of those seem likely to me. For better or worse, the anti-eligibility consensus seems durable. I expect that one new justice (Gorsuch?) wants a change, and some of the other justices were willing to throw the new colleague a bone in requesting SG input simply to maintain cordial relations. They are willing to indulge a new colleague that far, but I expect that when the conference rolls around they will not be willing to grant cert. merely as a favor to one of their colleagues.

                3. Good analysis Greg.

                  I’ll still stick to my prediction, although you have made me less sure.

                4. After the Roe decision, everything is up for grabs. This court could just chuck Bilski/Mayo/Alice out the window…..and a lot of patent practitioners would likely be happy with that.

            3. 5.1.1.1.1.3

              I found the sg’s brief compelling. It boils down maybe to “what if they choose to deny” ? Is there a festering pain out there that will continue to fester ? How does it impact commerce within or without the United States ? If so, who / which segments of ppl or corps. are impacted by it, who is on the receiving end of continued inequitable detriments ?

              If the statement were “Nothing less than predictability in the US patent system is at stake”, can such a statement be supported ?
              I don’t know, I’m making this up as I go, except the first sentence. It seems to me there needs to be a strong, articulable underlying commercial compulsion present. If restoring a greater measure of predictability isn’t in the interests of the United States, I’d be surprised. !

              1. 5.1.1.1.1.3.1

                Chrissy,

                I am genuinely curious as to what art units you dealt with in your practice.

                You seem like an utter newbie on matters of 101.

                (no snark)

                1. Why are you even asking ? Everybody knows the pto search website permits the search characters lrep/whewell in the box. I know you know, so what’s your point ?

                2. another count filter….

                  Your comment is awaiting moderation.

                  June 22, 2022 at 6:58 pm

                  My point is that your expressed views on 101 would be far better if you boned up on the subject.

                  I “get” that everyone gets an opinion – informed opinions, though, help contribute to a better discussion.

        2. 5.1.1.2

          The only reason that I would want them to take this is for them to use the Kavanaugh Scissors.

          1. 5.1.1.2.1

            >>Kavanaugh Scissors.

            99 percent of the people on here have no idea what you are talking about.

            1. 5.1.1.2.1.1

              If — or when — the event occurs, that will only make me appear even more legendary.

              Further, it’s easy enough to find, as I would wager that even examiners could find my explication.

            2. 5.1.1.2.1.2

              “99 percent of the people on here have no idea what you are talking about.”

              Nice that I’m finally in the top 1% for something . . . 🙂

              1. 5.1.1.2.1.2.1

                +1 – that’s what happens when you pay attention.

            3. 5.1.1.2.1.3

              Nor should we care, honestly. Like Hunter Biden’s laptop — it’s meaningless.

              1. 5.1.1.2.1.3.1

                Baaaaaaa – says BobM.

            4. 5.1.1.2.1.4

              99 percent of the people on here have no idea what you are talking about.
              +1

              Further, it’s easy enough to find, as I would wager that even examiners could find my explication.
              If a reader has to perform a search to figure out your comment, you can safely assume that you’ve lost your reader.

              1. 5.1.1.2.1.4.1

                Some readers do not WANT to be found.

                Actually, that’s a rather large problem in that many — especially here — are just not interested in engaging on the merits.

                Were this different, perhaps then my explicating a matter in the first instance would be enough. Your comment mischaracterizes the situation in that you presume that “A” comment must be self-sufficient, but for many presentations of ideas, this is simply not going to be the case (and falls directly into the “Briar Patch” game that Malcolm and others so enjoyed playing: having someone repeat a multi-item view many many many times, and then jumping on even the slightest inconsistency.

                When one ‘entertains’ readers, it is critical to understand the forum that those readers are engaged in. Your comment does not appear to appreciate the forum OR the readers.

                Maybe you are thinking of a different forum, Wt.

    2. 5.2

      I’d reckon the odds are above typical of 3-4 % and maybe around the 50% or so region. One good outcome might be that axle-stuffing, can be used as prior art against a bra-stuffing case for future bra stuffing inventions. Absurd ? No, there was a contested case over a 103 in bottle inspection, which was rightly rejected by PTO on a satellite telemetry case and the result was definitely right. Its hard to look ahead, we’re not trained to be visionaries but we have to develop it in our hobby time, at what appears to be one thing, today, can impact other tech in the future. Their claim language kinda sucks, and any cert or not will focus on the claims of course.
      Its in the realm, the supr’s will pull a slice on it, and address something not requested by the Petitioner. i.e., it appears the issue is one thing, but they might come down on definiteness, diff from what many might expect. Who knows ? !! Everything is subject to natural law, even the light bulb used ohms law, so, the presence of “natural law” might not even be a consideration. Here’s an easy Q…… do you think logarithms are natural, or were they “discovered” ? 🙂

      1. 5.2.1

        what appears to be one thing, today, can impact other tech in the future

        As you have shown some proclivity in the past for appreciation of historical events (and their story-telling), may I invite you to enjoy one of the shows that I enjoyed as a youngster that reflects your statement here?

        The show: Connections – hosted by James Burke – circa late 1970’s (with echoes in the mid-1990’s).

        1. 5.2.1.1

          Thanks, I jotted it down.

  3. 4

    In related but less exciting SCOTUS news, cert denied in Olaf Sööt Design, LLC v. Daktronics, Inc., covered at the link below. (The SG had recommending denying review, so this was not exactly a surprising development.)

    link to patentlyo.com

  4. 3

    The rule for Section 101 should be that any claims directed to non-viable abstract ideas can be aborted by the district court at any stage of the litigation, from the day the Complaint is filed until after the jury reaches a verdict. The penumbras are strongly emanating from Roe vs. Wade on this one, my friends.

    1. 3.1

      LOL – except in the opposite direction — Let’s see those Kavanaugh Scissors!

      1. 3.1.1

        Determining viability and “abstractness” are similar. If you don’t like something you can say its not viable or abstract, and get a quickie aborsh.

        1. 3.1.1.1

          Most likely, this will depend on the State you live in.

          Regardless – it very much misses the point that the Supreme Court ‘appears’ to be getting out of the “we write the law we want” business — which is why the Kavanaugh Scissors comes into play. It is this Method that may allow the Court to cut the Gordian Knot of 101 that it has created.

          1. 3.1.1.1.1

            “It is this Method that may allow the Court to cut the Gordian Knot of 101 that it has created.”

            Finger crossed. Prayers said.

            I mean, hey — if’n they can overturn Roe, Mayo / Alice should be a cakewalk.

            1. 3.1.1.1.1.1

              Correct – but they have to want to though.

              And THAT may be the tricky part – the Court has a L O N G addiction to thrusting their fingers into the wax nose of patent law – an u g l y habit that may be difficult for them to break.

              1. 3.1.1.1.1.1.1

                If the Block spills over into the District Court and every TN Atty. is either afraid or expects a get out of jail free card, why would they get involved otherwise. Seems either that or the Hobbs Act is in play. It has affected the District Court. Filing of cases in District Court by forgery makes it federal.

        2. 3.1.1.2

          The abortion problem is just another abstract ideas slope.

          An acorn is not an oak tree, until it is. When is that?

          “Viability” is a moving target. Technology etc.

          “Quickening” has substantial historic weight as a moral crossroads, but that’s is also a spectrum.

          Human life commencing at fertilization is a religious belief: no more, no less. Banning all abortion is a violation of the First Amendment, so its right there in the Constitution, but whatevs- it’s all about political power.

          We need to somehow -democratically pick a number between 0 and 41 weeks and apply it, in every state, without this literally endless moral war about it. It may take a real war, but I certainly hope not.

          My religious preference for the commencement of human rights is earliest possession of an EEG trace consistent with that of a human being, which is somewhere around 22 weeks.

          1. 3.1.1.2.1

            Banning all abortion is a violation of the First Amendment,

            More law that you are clue1ess about.

          2. 3.1.1.2.2

            An acorn is not an oak tree, until it is. When is that?

            An oak leaf is never an oak tree.

            So what?

            Is every acorn a viable future oak tree?
            What of acorns that have not germinated (yet)?
            Is a tap root enough?
            Is a seedling an oak tree?
            Is a sapling an oak tree?

    2. 3.2

      The rule for Section 101 should be that any claims directed to non-viable abstract ideas can be aborted by the district court at any stage of the litigation, from the day the Complaint is filed until after the jury reaches a verdict.
      … as articulated by those who support efficient infringement.

  5. 2

    OT, but a useful concise analysis of the various provisions of the latest bi-partisan IPR patent law reform bill is on todays Post-Grant blog at:
    link to patentspostgrant.com

    1. 2.1

      Thanks Paul. Wouldn’t have otherwise seen this.

    2. 2.2

      Thanks Paul, even before getting into the details, this raises an obvious Red Flag;

      includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.

      1. 2.2.1

        The indicated killed proposal to have IPRs add the handling of judicial obviousness type double patenting patent attacks is not something you would have wanted any more than bio/pharma.

    3. 2.3

      Reversing Aqua Prods is a terrible idea.

  6. 1

    Looks like the Supreme Court is relisting the case for next week’s conference. My understanding from SCOTUSblog reading over the years is that it’s becoming fairly routine for the Supreme Court to relist a petition for a week before granting certiorari.

    This doesn’t necessarily mean they will grant cert, but it definitely raises the chances that we either get a grant or some kind of dissent or concurrence in denial of certiorari.

    1. 1.1

      In this American Axle case reportedly the relisting for cert consideration occurred after finally getting the delayed brief from the US Solicitor General AND a brief from the opposing party Neapco Holdings. The latter reportedly arguing that disputing Alice-type [abstraction] unpatentability is not even properly appealable in this case because not ever decided below [only “laws of nature” type unpatentable subject matter]. But of course the Sup. Ct. might want to re-address that and/or proper claim scope. Who knows. I would only take bets on the Sup. Ct. NOT overruling all of its prior unpatentable subject matter decisions since Morse and making any claim called a 101 method or process patentable subject matter.

      1. 1.1.1

        Laws of nature are items of information. Abstract ideas are items of information.

        The problem is information. The information problem shows up intrinsically in processes that should not be eligible, and extrinsically in claims that do not complete a patentable invention.

        American Axle clearly turns on obviousness and/or WD rather than some broad understanding of what kind of inventions are allowed to be considered for patenting.

        1. 1.1.1.1

          “American Axle clearly turns on obviousness”

          If the only difference between the prior art and the claimed invention is some information in a signal then it’s definitely no so “clear” that there isn’t an eligibility issue.

          1. 1.1.1.1.1

            To my reading, the only difference between the prior art and the claimed invention is the use of different amounts and orientations of dampening materials- but the recipe is not disclosed, only the notion of doing it.

            1. 1.1.1.1.1.1

              Martin what do you mean by “different amounts and orientations” in the claim (that word string which is the definition of the invention, the definitive name of the game)? Are you not reading into the claim more than there actually is in there to read?

            2. 1.1.1.1.1.2

              I agree with your view that the real problem with American Axle that should have been addressed is that the only possible prior art distinction is in the use of different amounts, orientations, shapes or properties of the dampening materials stuffed into the hollow axle, and there are no such claim distinctions. Only baldly claiming the notion of someone doing whatever like that might work to achieve the known desired end result.

              1. 1.1.1.1.1.2.1

                The drafters of the patent presumably convinced themselves that the patentable invention was to conceive the idea of delegating to the known cardboard tubular vibration damping element (which lines the known driveshaft) the task of damping more than one mode of driveshaft vibration.

                Presumably, they continue fervently to cling even now to their fantasy, that i) the notion is new and not obvious and that ii) nobody has yet demonstrated to them that the known cardboard tube liners inherently can’t help but have a non-zero vibration-damping effect on more than one of the known modes of driveshaft vibration.

                Hence the claim in dispute is directed to shaft design steps rather than to the shaft itself.

              2. 1.1.1.1.1.2.2

                “I agree with your view that the real problem with American Axle that should have been addressed is that the only possible prior art distinction is in the use of different amounts, orientations, shapes or properties of the dampening materials stuffed into the hollow axle, and there are no such claim distinctions. ”

                Tough to make that argument when all of those are likely non-obvious and they have them all in the claim with some somewhat abstractish language.

            3. 1.1.1.1.1.3

              I’m not sure it’s properly before the Court, but contrasting claims 12-21 vs. claim 1 could allow them to clarify their statutory exception.

              (FWIW, I tend to agree that this should be a WD case or 112(b) case)

        2. 1.1.1.2

          Where did I put all of my “I Claim Information” claims….

    2. 1.2

      Looks like the Supreme Court is relisting the case for next week’s conference.

      Where are you seeing that? On the docket listing it is still showing as set for the day after tomorrow.

      1. 1.2.1

        Yes, it looks like it has not been relisted yet. If the “relisting” occurs after this Thursday’s conference, the case will be considered again at the last conference of the court’s term (which is usually the last day opinions are issued). As a result, while there may be a “cert denied” order on 6/27, if there is going to be a “cert granted” order, it likely won’t come out until the first part of July.

      2. 1.2.2

        You’re right. I misread Dennis’s post and thought it was considered at last week’s conference, and didn’t see it on the order list yesterday.

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