This post will briefly discuss the Fed. Cir.’s denial of rehearing en banc – which left the modified panel opinion stand. The lengthy panel opinion has been the subject of my last three posts, and you should read them before you read this one, since they contain lots of basic information about the split panel decision affirming most of the district court’s ruling that the AAM patent claims were not patent eligible.

The Fed. Cir. split 6/6 with Judges Wallach, Dyk, Taranto, Chen, Prost and Hughes voting to let the panel’s decision stand, and Judges Newman, O’Mallley, Reyna, Moore, Stoll, and Lourie voting in favor of rehearing en banc.

Judges Dyk and Chen wrote concurring opinions to deny rehearing en banc, while Newman, Stoll and O’Malley wrote for the dissenters.

The majority and the dissenters wrote opinions expanding, or attempting to explain, the majority’s opinion that the claimed method for attenuating vibrations in a hollow “propshaft”, e.g. a driveshaft, by inserting a tuned liner is patent ineligible as an attempt to patent a natural phenomenon, namely Hooke’s Law “and nothing more.” Claim 21 recites “tuning the mass and stiffness” of the liner while claim 1 did not recite “the mass and stiffness. The panel remanded claim 1 to the district court, noting that while claim 28 reciting “inserting” the tuned liner into the shaft, claim 1 recited “positioning the liner in the shaft to accomplish the recited vibration damping. The panel majority ruled that claim 1 did not “invoke” Hooke’s law, but suggested that it was probably patent ineligible as well, perhaps as an attempt to patent an abstract idea.

Both the majority and the minority of the full Fed. Cir. spent most of their opinions attempting to defend or advance two rules that Judge Newman had named the “nothing more” test for determining if a claim is directed to a natural law, and the “how to” test that Judge Newman called s. 112 “on steroids.” The dissent criticizes the “nothing more” test as untethered to the facts at issue – no one explained what Hooke’s law is, or how a formula involving the compression of springs invalidates AAM’s new automotive drive shaft. Although the term “s. 112 on steroids” was not employed by the dissenters, Judge Newman explains the fallacy of importing s. 112 standards into a 101 inquiry:

“A valid patent must meet the ‘conditions and requirements’ of the patent statute; eligibility under s. 101 is not the same as patentability under the substantive statutory provisions of novelty (s. 102), non-obviousness (s. 103) and description and enablement (s. 112). Yet the court accepts the argument made by defendant Neapco…that ‘it always has been, the breadth of the claims is critically important to the s. 101 inquiry. The fact the breadth is also material to enablement…does not mean that it cannot be relevant to s . 101’ That is incorrect.

Breadth of claiming is a matter of the scope and content of the description and enablement in the specification, considered in light of the prior art, as investigated during PTO examination. The notion that any reliance on a scientific principle in the claimed subject matter affects the eligibility under s. 101 itself warrants en banc rehearing.”

The dissenters also criticize the “nothing more” test as useful in evaluating mechanical claims. Judge Stoll writes:

“The majority asserts that its ‘nothing more’ test is not new, and is instead firmly grounded in precedent such as O’Reilly v. Morse…I disagree. The claim held ineligible in O’Reilly is distinguishable on its face. It was not limited to any particular machinery and was instead broadly directed to the use of electromagnetism ‘however developed’, for transmitting information…And as amici point out, several of Samuel Morse’s claims were held eligible in that very same case, and they more closely resemble the claims at issue here. …It is difficult to square that outcome in O’Reilly with the majority’s application of the ‘noting more’ test here.”

Underlying all of this analysis, the dissenters are deeply worried about the application of s. 101 as an increasingly high barricade to innovation. Judge Newman writes that the majority opinion furthers the “debilitation of Section 101” and cites the BIO amicus brief: “[T]here continues to be unabated uncertainty about the patent eligibility of inventions across an expanding range of technologies, including biotechnology.”

This article was originally published on Patents4Life.com.

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