Home » Case Note: American Axle & Manufacturing, Inc., v. Neapco Holdings LLC (2022)

Case Note: American Axle & Manufacturing, Inc., v. Neapco Holdings LLC (2022)

Why Is This Case Under Discussion?

Recently, The Supreme Court of the USA declined a writ petition filed by American Axle and Manufacturing (AAM) in a bid to revive its patented technology for quieting driveshaft noise. Such rejection was quite unexpected, especially since the SC asked the Solicitor General to view this matter. Many had hoped this grant would remove the confusion caused by conflicting opinions of the Federal Circuit and the vague directive of the Alice test.

The Facts of the Case

In 2015 American Axle and Manufacturing (AAM) sued Neapco for infringement of a patent relating to a method for attenuating driveline vibrations. Chief Judge Stark of the District of Delaware, on summary judgment, found the asserted claims of U.S. Patent 7,774,911 ineligible for patent protection under Section 101 of the Patent Act.

AAM appealed this decision but in In October 2019, the U.S Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court of Delaware’s finding that the asserted claims were ineligible under 35 U.S.C. § 101. Although Judge Moore dissented, asserting that the majority’s decision improperly expanded the reach of Section 101 of the Patent Act.

AAM demanded a rehearing but that too was rejected. The CAFC particularly held Claim 22 of the patent application directed to natural law (Hooke’s Law) to achieve the desired result. As result, the application falls under the exceptions to patent eligibility.

So How Did the Federal Circuit Arrive at this Decision?

The Court of Delaware and the CAFC both applied the two-step eligibility guidelines provided by the Supreme Court in Alice Corp v. CLS Bank International (2014).

Step one of the Alice test is to check if the claim is directed to any of the exceptions of patent law i.e., natural law/natural phenomenon or abstract idea. If the answer is affirmative then in the second step one must check if any other element of the claim can be used to transform the exception into patent eligibility. In the AAM case, the CAFC found the manufacturing process to be directed to natural law.

The problem that arises is that there is no set method to determine what is meant by the phrase ‘to be directed to a judicial exception’. Simply because AAM uses a specific law does not mean that there is no inventive step involved. The United States Patent and Trademark Office itself, in trying to make sense of the law, has released some fact-specific applications for the test. Alice’s case ruling and subsequent decisions guided by it have created confusion and inconsistency that have led courts to cancel patents on inventions which ought to be protected.

Why Is Judge Moore’s Dissent Significant?

Judge Moore of CAFC strongly opposed the majority decision. She quite rightly noted that the major problem arose not because the claim was directed toward a natural law but because it did not clearly explain how to use the liner to dampen the shell and bending mode vibrations, i.e; it lacked details. It was not a Section 101 patent ineligibility problem a problem under Section 112.

Section 112 requires that the specification teach the person of ordinary skill in the art how to make and use the invention. The CAFC held that the Alice test could have survived had the patentee explained the steps and illustrated how to tune. While the Applicant did explain the term “tuning the liner to achieve the effects” it did not illustrate the steps that went into it.

The real question the Supreme Court should have asked was if the steps on how to tune a liner are necessary for a person skilled in that art to understand. If such steps are necessary and have not been provided then under Section 112 (a) the patent would be invalid on grounds of lack of disclosure.

Judge Moore very correctly held that the current case was the subject matter of Section 112 as the claims were not enabled. “We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability,”


The Federal Circuit’s denial and the SC’s refusal to give a clear explanation of Section 101 have taken away an opportunity to determine the patent eligibility requirement and to remove the ambiguity caused by the Alice test.

A variety of patent stakeholders expressed their discontentment over the American Axle judgement. They hold that AAM’s patent was for a fairly simple process and for centuries has been eligible for patents. However, the current ruling has stated that even a tangible thing can be denied a patent for merely using a natural law. It is now for the Courts and Federal Circuit to tackle a similar case in the future and finally dissolve all confusion related to the Alice test. Meanwhile, the USPTO has held that they shall be “making every effort to ensure that the U.S. patent system is as clear and consistent as possible.”

Author: Dipanwita Chakraborty, Associate Trainee at PA Legal.

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