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35 USC § 101 may go to US Supreme Court (Again)

The US Solicitor General has filed a brief recommending the US Supreme Court review a Federal Circuit’s decision in American Axle v. Neapco Holdings. In that case, American Axle claimed a manufacturing method for an automobile drive shaft that uses one or more liners “tuned” to reduce the drive shaft’s vibration for noise reduction (see US 7774911 B2). In a divided ruling, the Federal Court ruled that the patent is ineligible under 35 USC § 101 because it was directed to a natural law (Hooke’s Law) and “nothing more.” The majority viewed the claims as simply requiring application of Hooke’s law without specifying how to achieve that result, and since it only recited the desired result the invention was not patentable.

Judge Kimberly Moore, in dissent, argued the majority was creating a new test (the “Nothing More” test), removing the second of the two steps from the Alice/Mayo test, with “the majority reject[ing] the notion that  claims which contain an “innovative concept” survive the gatekeeper.” Judge Moore believes that the majority is expanding 35 USC § 101 past the gatekeeping role, and has conflated it with the enablement requirement of 35 USC § 112.

American Axle petitioned for a rehearing, which the Federal court rejected with a “bitterly divided” 6-6 vote, with 2 concurring and 3 dissenting opinions. American Axel petitioned to be heard by the Supreme Court in December 2020, and in May 2021 the Court called for the views of the US Solicitor General. The Solicitor General has now responded positively, suggesting the Supreme court hear the case. The Solicitor General’s recommendation may hint at the current administration’s position on patent eligibility, which seems to be leaning towards a more patent-friendly interpretation of  35 USC § 101 (read the brief here), with comments such as emphasizing that all inventions rest at some level on laws of nature or other abstract ideas, meaning the principles of 35 USC § 101 must be applied carefully “lest it swallow all of patent law.”

More information here.

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