Chief Judge Stark Invalidates Patent Under Section 101
May 9, 2018
Publication| Intellectual Property
In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 15-1168-LPS (D. Del. Feb. 27, 2018), Chief Judge Stark granted the defendants’ motion for summary judgment of invalidity, holding that two representative claims of the patent at issue were not directed to patentable subject matter. The patent at issue was directed to damping various types of vibrations in vehicle components. Following claim construction, the parties filed cross-motions for summary judgment under 35 U.S.C. § 101.
Under step one of the Alice test for patentable subject matter, Chief Judge Stark held that the claims as a whole were directed to laws of nature. The defendants argued, and the Court agreed, that the asserted claims were mere applications of the physics of vibration damping—“tuning”—to prior art designs. The plaintiffs argued that the claims were directed to manufacturing processes, but the Court concluded that the claims did not instruct how to design the “tuned” components to dampen vibrations.
Under Alice step two, the Court held that the claim elements, either generally or as an ordered combination, did not add an inventive concept sufficient to make the claimed method patentable. Instead, according to Chief Judge Stark, the element of “tuning” the components to take advantage of the physics of vibration added nothing significant beyond an instruction to apply a law of physics, and claiming a “tuned” component was merely the result of the claimed method, not a step in the method.
Analysis: The Court analogized the claims at issue here, which were directed to reducing vibrations in vehicle components, to those found invalid in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), in that they referred to laws of nature and conventional, routine activity that in combination amounted to nothing more than an instruction to apply the law of nature.