Case: 18-1763   Document: 133     Page: 1   Filed: 07/31/2020




    United States Court of Appeals
        for the Federal Circuit
                  ______________________

    AMERICAN AXLE & MANUFACTURING, INC.,
               Plaintiff-Appellant

                             v.

  NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                    LLC,
             Defendants-Appellees
            ______________________

                        2018-1763
                  ______________________

     Appeal from the United States District Court for the
 District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
 Leonard P. Stark.
                   ______________________

      ON PETITION FOR REHEARING EN BANC
               ______________________

     JAMES RICHARD NUTTALL, Steptoe & Johnson, LLP,
 Chicago, IL, filed a combined petition for panel rehearing
 and rehearing en banc for plaintiff-appellant. Also repre-
 sented by JOHN LLOYD ABRAMIC, KATHERINE H. JOHNSON,
 ROBERT KAPPERS; CHRISTOPHER ALAN SUAREZ, Washing-
 ton, DC.

      J. MICHAEL HUGET, Honigman LLP, Ann Arbor, MI,
 filed a response to the petition for defendants-appellees.
 Also represented by SARAH E. WAIDELICH; DENNIS J.
 ABDELNOUR, Chicago, IL.
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 2       AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
                                                      LLC




      MATTHEW ZAPADKA, Bass, Berry & Sims, PLC, Wash-
 ington, DC, for amici curiae Jonathan Barnett, Richard A.
 Epstein, Christopher Michael Holman, Daryl Lim, Adam
 Mossoff, Kristen J. Osenga, Michael Risch, Ted M. Sichel-
 man, Brenda M. Simon, Jonathan Stroud, David O. Taylor,
 Saurabh Vishnubhakat. Also represented by SCOTT A. M.
 CHAMBERS, Porzio, Bromberg & Newman, PC, Washington,
 DC.

      MARK J. ABATE, Goodwin Procter LLP, New York, NY,
 for amicus curiae Intellectual Property Owners Associa-
 tion. Also represented by ALEXANDRA D. VALENTI; HENRY
 S. HADAD, Bristol-Myers Squibb Company, Princeton, NJ;
 KEVIN H. RHODES, 3M Innovative Properties Company, St.
 Paul, MN.

     JEREMY COOPER DOERRE, Tillman Wright PLLC,
 Charlotte, NC, as amicus curiae, pro se.

      AARON BARKOFF, McAndrews, Held & Malloy, Ltd.,
 Chicago, IL, for amicus curiae Biotechnology Innovation
 Organization. Also represented by CHRISTOPHER SINGER;
 MELISSA A. BRAND, HANSJORG SAUER, Biotechnology Inno-
 vation Organization, Washington, DC.

      ROBERT P. TAYLOR, Rpt Legal Strategies PC, San
 Francisco, CA, for amicus curiae Alliance of U.S. Startups
 and Inventors for Jobs.

      JOHN THOMAS BATTAGLIA, Alexandria, VA, for amicus
 curiae Paul R. Michel.
                 ______________________

      Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
     MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
             HUGHES, and STOLL, Circuit Judges.
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 AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS             3
 LLC


  DYK, Circuit Judge, with whom WALLACH and TARANTO,
  Circuit Judges, join, concurs in the denial of the petition
                    for rehearing en banc.
    CHEN, Circuit Judge, with whom WALLACH, Circuit
    Judge, joins, concurs in the denial of the petition for
                     rehearing en banc.
   NEWMAN, Circuit Judge, with whom MOORE, O’MALLEY,
  REYNA, and STOLL, Circuit Judges, join, dissents from the
        denial of the petition for rehearing en banc.
    STOLL, Circuit Judge, with whom NEWMAN, MOORE,
  O’MALLEY, and REYNA, Circuit Judges, join, dissents from
      the denial of the petition for rehearing en banc.
  O’MALLEY, Circuit Judge, with whom NEWMAN, MOORE,
  and STOLL, Circuit Judges, join, dissents from the denial
           of the petition for rehearing en banc.
  LOURIE, Circuit Judge, dissents without opinion from the
        denial of the petition for rehearing en banc.


 PER CURIAM.
                         ORDER
     Appellant American Axle & Manufacturing, Inc. filed a
 combined petition for panel rehearing and rehearing en
 banc. A response to the petition was invited by the court
 and filed by appellees Neapco Holdings LLC and Neapco
 Drivelines LLC. Several motions for leave to file amici cu-
 riae briefs were filed and granted by the court. The petition
 for rehearing, response, and amici curiae briefs were first
 referred to the panel that heard the appeal, which granted
 the petition in part as indicated in the accompanying order.
 Thereafter, the petition was referred to the circuit judges
 who are in regular active service. A poll was requested,
 taken, and failed.
     Upon consideration thereof,
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 4        AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
                                                       LLC


       IT IS ORDERED THAT:
       1) The petition for rehearing en banc is denied.
       2) The mandate of the court will issue on September
          8, 2020.


                                     FOR THE COURT

     July 31, 2020                   /s/ Peter R. Marksteiner
        Date                         Peter R. Marksteiner
                                     Clerk of Court
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

    AMERICAN AXLE & MANUFACTURING, INC.,
               Plaintiff-Appellant

                              v.

  NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                    LLC,
             Defendants-Appellees
            ______________________

                         2018-1763
                   ______________________

     Appeal from the United States District Court for the
 District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
 Leonard P. Stark.
                   ______________________

 DYK, Circuit Judge, with whom WALLACH and TARANTO,
 Circuit Judges, join, concurring in the denial of the petition
 for rehearing en banc.
      We agree that en banc review was not warranted. The
 panel opinion is both consistent with precedent and narrow
 in its scope. Claim 22 and related claims instruct only the
 use of mass and stiffness to match relevant frequencies to
 tune a propshaft liner so that the liner, when used, will
 produce certain results (reducing two modes of vibration
 from the propshaft). Contrary to Judge Stoll’s dissent,
 these claims in no way “recite the process and machinery
 necessary to produce the desired effect of reducing vibra-
 tions in a shaft assembly.” Stoll Dissent Op. at 2–3.
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 Because claim 22 contains no further identification of spe-
 cific means for achieving those results, but merely invokes
 the natural law that defines the relation between stiffness,
 mass, and vibration frequency, it is ineligible under a long
 line of cases beginning at about the time of O’Reilly v.
 Morse, 56 U.S. (15 How.) 62 (1853), which held ineligible a
 claim to “printing intelligible characters . . . at any dis-
 tances” by the use of “electro-magnetism,” precisely be-
 cause, unlike the other upheld claims in O’Reilly, it lacked
 any identification of specific means to use electromag-
 netism. 1 Id. at 113–20.
     “Morse’s eighth claim would have covered, among other
 things, telephone, radio, television, microwave, wireless,
 and Internet communication, although they were all in-
 vented by others much later.” Jay Dratler, Jr., Alice in
 Wonderland Meets the U.S. Patent System, 38 Akron L.



     1     Judge Stoll’s dissent suggests that “several of Sam-
 uel Morse’s other claims [in O’Reilly] were held eligible in
 that very same case, and [that] they more closely resemble
 the claims at issue here.” Stoll Dissent Op. at 2. Unlike
 claim 8, however, the other claims in O’Reilly all incorpo-
 rated by express reference descriptions and illustrations
 from the specification of the patent addressed by the Court.
 The specification contained a number of detailed technical
 drawings and corresponding descriptions. See Reissue Pa-
 tent No. 117 (issued June 13, 1848) (Figure 1–5 and pages
 2–3). In contrast, claim 8 of O’Reilly specifically did not
 limit itself to the specification and for that reason was
 found ineligible. O’Reilly, 56 U.S. at 62 (“Eighth. I do not
 propose to limit myself to the specific machinery, or parts
 of machinery, described in the foregoing specifica-
 tion . . . .”). In the Telephone Cases, the Supreme Court ex-
 plained that O’Reilly’s singling out of claim 8 rested on this
 exact distinction. Dolbear v. Am. Bell Tel. Co., 126 U.S. 1,
 534 (1888).
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 Rev. 299, 321 (2015). Allowing the patentability of such
 broad claims impairs rather than promotes innovation and
 denies patent protection to real inventors—those who dis-
 cover particular ways to achieve the desired result.
 “[T]here is a danger that the grant of patents that tie up
 the[] use [of laws of nature] will inhibit future innova-
 tion premised upon them, a danger that becomes acute
 when a patented process amounts to no more than an in-
 struction to ‘apply the natural law,’ or otherwise fore-
 closes more future invention than the underlying discovery
 could reasonably justify.” Mayo Collaborative Servs. v. Pro-
 metheus Labs., Inc., 566 U.S. 66, 86 (2012).
     The inventors here may well have invented a specific
 means of achieving the claimed result, but they chose not
 to include such means in the claims we hold ineligible.
 Those claims, which invoke only a natural law, are ineligi-
 ble under O’Reilly and other cases invalidating claims that
 merely state a result without providing specific detail as to
 the “how”—the means for achieving the result. See Mayo,
 566 U.S. at 71–73 (“[T]o transform an unpatentable law of
 nature into a patent-eligible application of such a law, one
 must do more than simply state the law of nature while
 adding the words ‘apply it.’”); Parker v. Flook, 437 U.S. 584,
 586 (1978) (invalidating a claimed method that did not
 “purport to explain how to select . . . any of the . . . varia-
 bles” involved, or “purport to contain any disclosure relat-
 ing to the chemical process at work, the monitoring of
 process variables, or the means of setting off an alarm or
 adjusting an alarm system”); Mackay Radio & Telegraph
 Co. v. Radio Corp. of Am., 306 U.S. 86, 94–101 (1939);
 O’Reilly, 56 U.S. at 112–17 (holding a claim for “use of the
 motive power of the electric or galvanic current . . . for
 marking or printing intelligible characters . . . at any dis-
 tances” ineligible because “it matter[ed] not by what pro-
 cess or machinery the result [wa]s [to be] accomplished”);
 Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852) (hold-
 ing that claiming a concept without the particular steps of
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 carrying it out “would prohibit all other persons from mak-
 ing the same thing by any means whatsoever,” and that
 such claims are ineligible for patentability); Corning v.
 Burden, 56 U.S. (15 How.) 252, 268 (1853) (“It is for the
 discovery or invention of some practicable method or
 means of producing a beneficial result or effect, that a pa-
 tent is granted, and not for the result or effect itself.”),
 quoted by Diamond v. Diehr, 450 U.S. 175, 182 n.7 (1981). 2



     2    See also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
 1161, 1167 (Fed. Cir. 2018) (holding that as “reflected re-
 peatedly in our cases,” to avoid ineligibility, a claim must
 “ha[ve] the specificity required to transform [the] claim
 from one claiming only a result to one claiming a way of
 achieving it”); Affinity Labs of Texas, LLC v. DIRECTV,
 LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (claim was di-
 rected to an ineligible abstract idea because “[t]here [wa]s
 nothing in the claim that [wa]s directed to how to imple-
 ment out-of-region broadcasting on a cellular telephone”);
 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed.
 Cir. 2016) (claims found ineligible and “directed to an ab-
 stract idea” because they “d[id] not claim a particular way
 of programming or designing the software to create
 menus . . . , but instead merely claim[ed] the resulting sys-
 tems”); Internet Patents Corp. v. Active Network, Inc., 790
 F.3d 1343, 1348 (Fed. Cir. 2015) (finding claim abstract be-
 cause it “contain[ed] no restriction on how the result [wa]s
 accomplished”); Secured Mail Sols. LLC v. Universal
 Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017) (finding
 claims abstract because they were “not limited by rules or
 steps that establish[ed] how the focus of the methods [wa]s
 achieved”); ChargePoint, Inc. v. SemaConnect, Inc., 920
 F.3d 759, 770 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 983
 (2020) (finding claims directed to abstract idea where
 broad claim language “would cover any mechanism for
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 implementing network communication on a charging sta-
 tion” rather than a specific way of doing so); Interval Li-
 censing LLC v. AOL, Inc., 896 F.3d 1335, 1345–46 (Fed.
 Cir. 2018) (claims ineligible “because they consist[ed] of ge-
 neric and conventional information acquisition and organ-
 ization steps that [we]re connected to, but d[id] not convert,
 the abstract idea . . . into a particular conception of how to
 carry out that concept” (emphasis added)); Innovation Sci.,
 LLC v. Amazon.com, Inc., 778 F. App’x 859, 863 (Fed. Cir.
 2019) (finding ineligible a claim reciting coverage “in
 merely functional, result-oriented terms”); Univ. of Fla. Re-
 search Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1364,
 1368 (Fed. Cir. 2019) (claims “directed to an abstract idea”
 where “[n]either the . . . patent, nor its claims, ex-
 plain[ed] how the drivers d[id] the conversion that [Appel-
 lant] points to.”); Two-Way Media Ltd. v. Comcast Cable
 Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)
 (claim directed to ineligible abstract idea where “[t]he
 claim require[d] the functional results of ‘converting,’ ‘rout-
 ing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’
 but d[id] not sufficiently describe how to achieve these re-
 sults in a non-abstract way”); Finjan, Inc. v. Blue Coat Sys.,
 Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (“Apple, Affinity
 Labs, and other similar cases hearken back to a founda-
 tional patent law principle: that a result, even an innova-
 tive result, is not itself patentable.”); McRO, Inc. v. Bandai
 Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
 2016) (“[In section 101 analysis w]e . . . look to whether the
 claims . . . focus on a specific means or method that im-
 proves the relevant technology or are instead directed to a
 result or effect that itself is the abstract idea and merely
 invoke generic processes and machinery.”).
     As the foregoing cases illustrate, the same concern is
 significant under the abstract idea branch of ineligibility
 analysis, which we leave for consideration as to the claims
 that are the subject of our remand.
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  6      AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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       The assertions that the panel decision holds that “any
  reliance on a scientific principle in the claimed subject mat-
  ter affects eligibility” or calls into question the patentabil-
  ity of basic inventions such as “the telegraph, telephone,
  light bulb, and airplane” are quite incorrect. Newman Dis-
  sent Op. at 5; Stoll Dissent Op. at 7. What the decision
  calls into question is claims, such as claim 8 in O’Reilly,
  that claim only a result (the telegraph, electric light bulb,
  the combustion engine) and disclose nothing more than a
  natural law (electromagnetic force, incandescence, chemi-
  cal combustion) to achieve that result. Nothing in the
  panel opinion suggests that claims that describe how the
  objective (light bulb, etc.) is to be achieved are patent inel-
  igible. Such claims have long been held patentable. Such
  claims continue to be patentable. A contrary result would
  deny a true inventor (an individual who determined a spe-
  cific means to achieve the claimed result) the fruits of his
  or her invention.
      Contrary to Judge Stoll’s dissent from denial of rehear-
  ing en banc, see Stoll Dissent Op. at 6–7, there is also no
  fact issue here. If the suggestion is that it is a factual ques-
  tion whether more than Hooke’s Law might be needed to
  make a device that actually produces the claimed result,
  that is not the proper eligibility question. In O’Reilly, it
  was plain from the specification and the other claims that
  more than electromagnetism was needed to produce the
  claimed result, but the Supreme Court held claim 8 ineligi-
  ble precisely because it omitted any such implementation
  means. The omission of needed specifics in the claim was
  the problem, not a reason to find eligibility.
      The step-one “directed to” inquiry in this case, as in
  O’Reilly, is what the claim says. As to that question, the
  panel does not suggest that there can never be a factual
  issue, but there is no such factual issue here. Both parties’
  witnesses agreed that Hooke’s law relates an object’s fre-
  quency of vibration to its mass and stiffness, see Maj. Op.,
  slip op. at 12–13, and neither party disputes the claim
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  construction given to the claim language “tuning a mass
  and a stiffness of at least one liner,” namely, “controlling a
  mass and stiffness of at least one liner to configure the liner
  to match a relevant frequency or frequencies,” J.A. 15,
  1047. Nor is there a conflict in evidence about what “mass”
  or “stiffness” means to the relevant skilled artisan. The
  claim language thus invokes the very relation between fre-
  quency and mass and stiffness stated by Hooke’s law, as
  the district court determined. J.A. 11 (“The claimed meth-
  ods are applications of Hooke’s law with the result of fric-
  tion damping.” (emphasis added)).
      Claim 22 does not name Hooke’s law, but the name is
  immaterial. The Supreme Court has not required reciting
  the natural law by name and has rejected a “draftsman’s
  art” approach to § 101 analysis. See, e.g., Mayo, 566 U.S.
  at 72, 77 (explaining that the “laws of nature” set forth in
  the claims are unnamed “relationships between concentra-
  tions of certain metabolites in the blood and the likelihood
  that a dosage of a thiopurine drug will prove ineffective or
  cause harm”).
       Judge O’Malley’s dissent suggests that the panel ma-
  jority “decide[s] questions on grounds that were neither ar-
  gued before the district court nor briefed on appeal” and
  that it “announces a new test for patentable subject matter
  at the eleventh hour and without adequate briefing.”
  O’Malley Dissent at 2. But there is no new ground here.
  Both in district court and on appeal, Neapco Holdings LLC
  and Neapco Drivelines LLC (collectively, “Neapco”) argued
  that the claims invoked a natural law, and nothing more,
  to accomplish a desired result. Neapco argued in summary
  judgment briefings that “the claims are ineligible because
  they are directed to laws of nature and/or natural phenom-
  ena related to controlling the natural frequency of an object
  and the physics behind vibration attenuation.” J.A. 4596.
  Neapco’s expert stated that “the asserted claims of the ʼ911
  patent do nothing more than attempt to claim well-known
  laws of nature or natural phenomen[a].” J.A. 2704.
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  American Axle & Manufacturing, Inc. (“AAM”) opposed
  this characterization of the claims in its briefing to the dis-
  trict court: “Neapco oversimplifie[d] the Asserted Claims to
  allege that they ‘do nothing more than attempt to claim
  well-known laws of nature or natural phenome-
  non . . . . [Its] arguments are without merit.” J.A. 4331
  (quoting Neapco’s expert’s testimony). Ultimately, the dis-
  trict court found that the claims “are directed to the mere
  application of Hooke’s law, and they fail to instruct how to
  design the tuned liners or manufacture the driveline sys-
  tem to attenuate vibrations.” J.A. 11–12. On appeal,
  Neapco reiterated that “[o]ther than providing the relation-
  ship set by the natural law itself, the claims tell those of
  skill nothing else about how to purportedly ‘tune’ a liner.”
  Neapco Br. 25; see also id. at 38 (“[T]he claims here specif-
  ically lack[] any instruction or disclosure for how to design
  or manufacture the tuned liners to attenuate vibration
  (other than telling an engineer to ‘apply’ Hooke’s law).”);
  Oral Arg. 13:38–56 (explaining that the invention “is a
  claim to a goal, the result . . . of tuning a liner to dampen
  two different modes of vibration”). 3 The panel opinion ap-
  propriately addresses the case as argued.
      There is also no “new test” in stating that claim 22 is
  “nothing more” than a natural law, i.e., that it contains no
  information as to how to achieve the claimed result. This
  linguistic formulation has previously been used by this




      3   AAM argued that “[t]he district court [in its § 101
  analysis] . . . applied an erroneous legal standard finding
  that the asserted claims did not ‘disclose’ or ‘instruct how’
  to design tuned liners. There is no such standard, even un-
  der § 112, requiring the claims of the ’911 patent to ‘in-
  struct how to design the tuned liners or manufacture the
  driveline system to attenuate vibrations.’” AAM Op. Br. 54
  (quoting J.A. 11).
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  court in describing the test for § 101. 4 This “nothing more”
  formulation was also repeatedly used by Neapco, 5 by
  Neapco’s expert, 6 and by AAM to describe Neapco’s posi-
  tion. 7 The same linguistic formulation was used by the


      4     See, e.g., Rapid Litig. Mgmt. Ltd. v. CellzDirect,
  Inc., 827 F.3d 1042, 1048 (Fed. Cir. 2016) (“In recent cases,
  we found claims ‘directed to’ a patent-ineligible concept
  when they amounted to nothing more than observing or
  identifying the ineligible concept itself.” (emphasis added));
  ChargePoint, 920 F.3d at 769 (finding ineligible at step 1
  “claims      that    claim nothing more than     the    broad
  law . . . underlying the claims” (emphasis added)); Genetic
  Veterinary Scis., Inc. v. LABOKLIN GmbH & Co. KG, 933
  F.3d 1302, 1318 (Fed. Cir. 2019) (finding ineligible claims
  “directed to nothing more than ‘observing or identifying’
  the natural phenomenon of a mutation in the SUV39H2
  gene” (emphasis added)).
       5    Neapco Br. 12 (“The claimed ‘tuning’ is nothing
  more than a recitation of Hooke’s law . . . .” (emphasis
  added) (capitalization removed)); id. at 21 (“[T]he asserted
  claims do nothing more than recite the abstract concept of
  ‘tuning’ a liner according to a natural law.” (emphasis
  added)); id. at 32 (“The asserted claims ‘fail to provide any
  meaningful limits on the scope of the claim,’ and are thus
  ‘nothing more than applying a law of nature to a conven-
  tional method to achieve an abstract solution to a prob-
  lem.’” (emphasis added) (quoting J.A. 18)).
       6    J.A. 2704 (Neapco’s expert stating that “the as-
  serted claims of the ʼ911 patent do nothing more than at-
  tempt to claim well-known laws of nature or natural
  phenomen[a]” (emphasis added)).
       7    J.A. 4331 (AAM arguing that “Neapco oversimpli-
  fie[d] the Asserted Claims to allege that they ‘do nothing
  more than attempt to claim well-known laws of nature or
  natural phenomenon . . . . [Its] arguments are without
  merit.” (emphasis added) (quoting Neapco’s expert)).
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  district court. J.A. 15 (“Since Hooke’s law governs the re-
  lationship between mass, stiffness, and frequency, the ‘tun-
  ing’ claim limitation does nothing more than suggest that
  a noise, vibration, and harshness . . . engineer . . . [would]
  consider that law of nature when designing propshaft lin-
  ers to attenuate driveline vibrations.” (emphasis added));
  J.A. 18 (“Here, because the Asserted Claims are nothing
  more than applying a law of nature to a conventional
  method to achieve an abstract solution to a problem, the
  Asserted Claims fail to provide any meaningful limits on
  the scope of the claim.”).
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    United States Court of Appeals
        for the Federal Circuit
                    ______________________

     AMERICAN AXLE & MANUFACTURING, INC.,
                Plaintiff-Appellant

                               v.

   NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                     LLC,
              Defendants-Appellees
             ______________________

                          2018-1763
                    ______________________

      Appeal from the United States District Court for the
  District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
  Leonard P. Stark.
                    ______________________

  CHEN, Circuit Judge, with whom WALLACH, Circuit Judge,
  joins, concurring in the denial of the petition for rehearing
  en banc.
      I concur in the court’s decision not to rehear this case
  en banc because the principles applied by the district court
  and panel majority in holding claim 22 invalid are con-
  sistent with long-standing precedent. Contrary to the dis-
  sent’s view, the panel majority did not announce a new
  patent-eligibility test. Rather, its rationale is a straight-
  forward application of the Supreme Court’s decision in
  O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853). Moreover,
  the district court applied the same test as the panel
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  majority and for that reason no remand is required as to
  claim 22.
      What the dissent dubs the new “nothing more” test is
  actually a principle that has been part of patent law since
  at least 1853: a claim may be held ineligible if it invokes a
  natural law to achieve some desired result without reciting
  any further limitations as to the means for accomplishing
  that result. In O’Reilly, the Supreme Court ruled that
  Samuel Morse’s eighth claim, reciting nothing more than
  the use of electromagnetism to generate and send mes-
  sages at a distance, was ineligible. Id. at 112–13. Today’s
  panel decision tracks that precise reasoning. As construed,
  claim 22 calls for nothing more than the use of Hooke’s law
  to produce a particular result: the reduction of two types of
  vibration in a liner. The claim is devoid of any other ele-
  ment for producing that result. Because claim 22, as
  drafted and construed, is substantively the same as Mr.
  Morse’s claim 8, I do not see a way to logically distinguish
  O’Reilly in this case.
      Some amici suggest that the panel’s understanding of
  O’Reilly is undercut because other claims of Mr. Morse’s
  patent were found eligible and are analogous to AAM’s
  claims. See Law Prof. Br. 6–8. They suggest that Mr.
  Morse’s upheld claims merely begin with a natural law and
  end with a desired result without reciting any further re-
  quirements. To the contrary, each of Mr. Morse’s claims,
  with the exception of ineligible claim 8, limits itself to the
  specific implementation details disclosed in Mr. Morse’s
  specification. Take claim 1 for example:
      Having thus fully described my invention, I wish it
      to be understood that I do not claim the use of the
      galvanic current or current of electricity for the
      purpose of telegraphic communications generally;
      but [w]hat I specially claim as my invention and
      improvement is—
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      1. Making use of the motive power of magnetism
      when developed by the action of such current or
      currents, substantially as set forth in the foregoing
      description of the first principal part of my inven-
      tion, as means of operating or giving motion to ma-
      chinery which may be used to imprint signals upon
      paper or other suitable material, or to produce
      sounds in any desired manner for the purpose of
      telegraphic communication at any distances.
  U.S. Reissue Patent No. 117 (issued June 13, 1848) (em-
  phasis added). Claim 1 does not simply invoke “the motive
  power of magnetism” to produce the desired result of “tele-
  graphic communication at any distances,” but instead fur-
  ther confines the claim’s scope to the application of current
  “substantially as set forth in the foregoing description of
  the first principal part of [Mr. Morse’s] invention” to
  achieve the desired result. Id. The remaining claims like-
  wise incorporate implementation details from Mr. Morse’s
  specification. Id. (claiming what was “substantially as set
  forth in the foregoing description,” the “combination of ma-
  chinery herein described,” “substantially by the means
  herein described,” “substantially as herein set forth and il-
  lustrated,” and “as herein described”).
     In contrast, Mr. Morse’s claim 8 disavows any imple-
  mentation details from his specification:
      8. I do not propose to limit myself to the specific ma-
      chinery or parts of machinery described in the fore-
      going specifications and claims, the essence of my
      invention being the use of the motive power of the
      electric or galvanic current, which I call “electro-
      magnetism,” however developed, for marking or
      printing intelligible characters, signs, or letters at
      any distances, being a new application of that
      power of which I claim to be the first inventor or
      discoverer.
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  Id. (emphasis added). As the Supreme Court later ex-
  plained in Dolbear v. Am. Bell Tel. Co., the distinguishing
  feature of Mr. Morse’s invalidated claim 8 was that it
  claimed “the use of magnetism as a motive power, without
  regard to the particular process with which it was con-
  nected in the patent.” 126 U.S. 1, 534 (1888). In contrast,
  the Court explained that Mr. Morse’s claim 1, although also
  “making use of the motive power of magnetism,” was pa-
  tent eligible because that claim specified the use of mag-
  netism in connection with the particular process disclosed
  in the patent. Id. Following these principles, the Court in
  Dolbear held eligible a claim to “transmitting vocal or other
  sounds telegraphically, as herein described, by causing
  electrical undulations, similar in form to the vibrations of
  the air accompanying the said vocal or other sound, sub-
  stantially as set forth.” Id. at 532 (emphasis added).
       The amici’s understanding of Mr. Morse’s upheld
  claims as merely reciting the motive power of magnetism
  to produce telegraphic communication thus suffers from
  multiple grave problems. First, it ignores the claim lan-
  guage incorporating implementation details from the spec-
  ification. Second, if the amici’s reading were correct, it
  would render the O’Reilly decision hopelessly in conflict
  with itself, given that the Court invalidated claim 8.
  Third, the Court in Dolbear, in reiterating the principle
  that invoking a law of nature to achieve a result, without
  more, is not a patent-eligible claim, characterized Mr.
  Morse’s upheld claims in a way that is clearly incompatible
  with the amici’s views. Thus, nothing in O’Reilly helps
  AAM’s cause in this case.
      Contrary to the dissent’s position that a remand is
  needed to allow the district court to apply the O’Reilly test
  in the first instance, the district court here already applied
  the principles of O’Reilly in the same way and based on the
  same claim interpretation as the panel majority when it
  held claim 22 invalid as merely invoking Hooke’s law to ac-
  complish a desired result. The district court’s decision
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  noted that “Neapco asserts, in order to ‘tune’ the liner, one
  merely applies Hooke’s law and then measures the amount
  of damping.” J.A. 11. “[A]gree[ing] with Neapco,” the dis-
  trict court explained that “[t]he claimed methods are appli-
  cations of Hooke’s law with the result of friction damping.”
  Id. (emphasis added); see also J.A. 11–12 (finding the as-
  serted claims “are directed to the mere application of
  Hooke’s law, and they fail to instruct how to design the
  tuned liners or manufacture the driveline system to atten-
  uate vibrations.”) (first emphasis added); J.A. 15 (finding,
  under the court’s claim construction “controlling a mass
  and stiffness of at least one liner to configure the liner to
  match a frequency or frequencies,” that “this claim limita-
  tion is just the application of Hooke’s law”) (emphasis
  added); J.A. 17 (“Here, the Asserted Claims simply instruct
  one to apply Hooke’s law to achieve the desired result of
  attenuating certain vibration modes and frequencies. They
  provide no particular means of how to craft the liner and
  propshaft in order to do so.”) (emphasis added). Thus,
  while the district court initially identified the issue in the
  case as whether the asserted claims are directed to both
  “Hooke’s law and friction damping,” J.A. 10, the court ulti-
  mately concluded that claim 22 invokes Hooke’s law, with
  nothing more, to achieve a desired result. J.A. 11, 11–12,
  15, 17. Notably, this understanding of the claims directly
  follows from the undisputed claim construction that the
  claim calls for controlling mass and stiffness to control fre-
  quency. See J.A. 10–12 (analyzing why controlling mass
  and stiffness to control frequency is a reference to applying
  Hooke’s law). And given that the district court analyzed
  the content of the claim and found nothing other than this
  reference to Hooke’s law for accomplishing the claimed re-
  sults of attenuating shell mode and bending mode vibra-
  tions, its reasoning and conclusion as to claim 22’s
  invalidity follows the principle established by the Supreme
  Court in O’Reilly. The district court’s understanding of the
  claim and its rationale for holding claim 22 patent
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  ineligible thus are identical to the panel majority’s analysis
  and a remand is not necessary.
       While some question the correctness of the panel ma-
  jority and district court’s application of the O’Reilly test to
  AAM’s claim 22, the application of law to fact in the section
  101 context has always been a case by case judgment. Such
  context-driven analysis is made in many areas of patent
  law, for example in determining whether a claim is invalid
  for obviousness or construing a claim limitation in light of
  the specification. The same is true for the judicial excep-
  tions to section 101 and the legal assessment as to whether
  a claim is directed to a patent-ineligible concept or a pa-
  tent-eligible application of that concept. As Judge Learned
  Hand famously remarked about the similarly difficult
  problem in copyright law of distinguishing between idea
  and expression: “Nobody has ever been able to fix that
  boundary, and nobody ever can.” Nichols v. Universal Pic-
  tures Corp., 45 F.2d 119, 121 (2d Cir. 1930). In the present
  case, given (1) the claim language of tuning the liner’s mass
  and stiffness, (2) the undisputed construction of the rele-
  vant claim language as referring to tuning said mass and
  stiffness to match frequencies, (3) the undisputed mathe-
  matical relationship, per Hooke’s law, between mass, stiff-
  ness, and frequency, and (4) the district court’s analysis
  rejecting AAM’s arguments that claim 22, as construed, is
  not referring to Hooke’s law (J.A. 11–12), it seems reason-
  able to me for the panel majority to view claim 22 as on par
  with Mr. Morse’s claim 8 and thus likewise fall on the side
  of ineligibility.
      Importantly, the majority’s opinion in this case does
  not, and should not be read to, announce a new test for pa-
  tent eligibility. It holds that the O’Reilly test remains good
  law and applies when a claim recites a limitation that, as
  construed, expressly invokes a particular law of nature.
  Maj. at 26. The majority opinion emphasizes that its hold-
  ing “should not be read as an invitation to raise a validity
  challenge against any patent claim that requires the
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  application of an unstated natural law.” Id. That a claim
  implicitly or inherently requires compliance with a natural
  law for any embodiment to be operational is not a basis for
  concluding that the claim expressly invokes that natural
  law. In this case, the undisputed construction of claim 22
  tunes mass and stiffness to match frequency, which is the
  very formula for Hooke’s law.
       The narrow scope of the majority’s holding is illus-
  trated by the differences in the outcomes between claims 1
  and 22. If claim 22 had omitted any reference to mass and
  stiffness, such that the claim simply recited “tuning to
  match the relevant frequency or frequencies,” there would
  be no basis to say that the claim invokes Hooke’s law. This
  is the scenario of claim 1, which recites “tuning at least one
  liner to attenuate at least two types of vibration transmit-
  ted through the shaft member” and “positioning the at least
  one liner within the shaft member such that the at least
  one liner is configured to damp shell mode vibrations in the
  shaft member by an amount that is greater than or equal
  to about 2%, and the at least one liner is also configured to
  damp bending mode vibrations in the shaft member, the at
  least one liner being tuned to within about ±20% of a bend-
  ing mode natural frequency of the shaft assembly as in-
  stalled in the driveline system.” U.S. Patent No. 7,774,911
  at claim 1. Because claim 1 nowhere mentions “mass” and
  “stiffness,” it cannot properly be read to expressly invoke
  the Hooke’s law relationship between mass, stiffness, and
  frequency. As the specification confirms, tuning for a de-
  sired frequency can be accomplished through variables
  other than mass and stiffness. Id. at col. 7 l. 60–col. 8 l. 2.
  Thus, unlike claim 22, claim 1 cannot be said to expressly
  call for Hooke’s law. 1 Because of the differences between


      1  This distinction between claim 22, which expressly
  invokes Hooke’s law, and claim 1, which is entirely silent
  as to mass and stiffness, exists regardless of whether
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  the two claims, I cannot say it was wrong for the panel ma-
  jority to hold that the district court erred by treating the
  two claims in the same way. As evidenced by the majority
  opinion’s conclusion that claim 1 is not directed to a natural
  law, the narrow holding of this case should not be read to
  open the door to eligibility challenges based on the argu-
  ment that a claim is directed to one or more unspecified
  natural laws.
       To the extent AAM and amici contend that mechanical
  or industrial inventions can be categorically excluded from
  the ambit of section 101 concerns, I cannot agree. The ori-
  gins of the judicial exceptions to patent eligibility arise
  from such cases during the Industrial Revolution. Mr.
  Morse’s patent claimed the invention of the electro-mag-
  netic telegraph. O'Reilly, 56 U.S. at 77. In Wyeth v. Stone,
  Justice Story, riding circuit, considered the eligibility of a
  patent that described a particular apparatus for cutting
  ice, and a method for using the inventor’s apparatus to cut
  ice. 30 F. Cas. 723 (C.C.D. Mass. 1840) (finding ineligible
  a claim to “the art of cutting ice by means of any power,
  other than human power”). Likewise, in Tilghman v. Proc-
  tor, the Court evaluated the eligibility of a claim to “the
  manufacturing of fat acids and glycerine from fatty bodies
  by the action of water at a high temperature and pressure.”
  102 U.S. 707, 729 (1880). To exclude manufacturing meth-
  ods such as AAM’s from the section 101 inquiry would be
  inconsistent with longstanding Supreme Court precedent
  dating back to the origins of the eligibility inquiry.
      I also do not agree with the dissent’s assertion that the
  panel majority’s decision creates a heightened enablement
  provision. As the majority opinion explains, section 101


  “positioning” in claim 1 is construed to have the same, or
  different meaning to “inserting” in claim 22. While claim 1
  is not directed to Hooke’s law, the district court will ad-
  dress on remand whether it is directed to an abstract idea.
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  imposes a threshold constraint on the claims, whereas en-
  ablement applies a second, different requirement to the
  specification’s support of those claims. Maj. at 27–29.
  Moreover, the panel opinion goes no farther than what is
  required by O’Reilly, which the Supreme Court has repeat-
  edly identified as a case about the judicial exceptions to
  section 101. See Interval Licensing LLC v. AOL, Inc., 896
  F.3d 1335, 1343 (Fed. Cir. 2018) (citing Supreme Court sec-
  tion 101 opinions discussing O’Reilly). And as made clear
  by the lengthy list of both Supreme Court and Federal Cir-
  cuit cases cited in Judge Dyk’s concurrence, result-oriented
  claim drafting raises concerns under section 101 independ-
  ent from section 112. Dyk Concurrence Op. at 3–4 and n.2.
  The lesson to patent drafters should now be clear: while not
  all functional claiming is the same, simply reciting a func-
  tional result at the point of novelty poses serious risks un-
  der section 101. See, e.g., SAP Am., Inc. v. InvestPic, LLC,
  898 F.3d 1161, 1167 (Fed. Cir. 2018) (stressing that, as “re-
  flected repeatedly in our cases,” a claimed invention must
  embody a concrete solution to a problem having “the speci-
  ficity required to transform a claim from one claiming only
  a result to one claiming a way of achieving it”); Le Roy v.
  Tatham, 55 U.S. (14 How.) 156, 175 (1853) (“A patent is not
  good for an effect, or the result of a certain process,” for
  such patents “would prohibit all other persons from mak-
  ing the same thing by any means whatsoever.”); Athena Di-
  agnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d
  1333, 1344–49 (Fed. Cir. 2019) (Chen, J., concurring in de-
  nial of rehearing en banc) (explaining how the Supreme
  Court in Mayo Collaborative Services v. Prometheus Labor-
  atories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS
  Bank Int’l, 573 U.S. 208 (2014) resurrected the point of nov-
  elty inquiry from Parker v. Flook, 437 U.S. 584 (1978),
  which many, including this court, thought had been re-
  jected in Diamond v. Diehr, 450 U.S. 175 (1981)).
      Consider the example of an automaker CEO who an-
  nounces a stretch goal to her engineers to produce a car,
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  powered by electricity, that can be driven 1,000 miles with-
  out a recharge. That declaration from the CEO does not
  make her an “inventor” and the section 101’s judicial ex-
  ceptions bar the grant of a patent for such a claim, for it
  fails to recite any arguable act of invention to reach the
  claimed result. Like Mr. Morse’s claim 8, this claim recites
  a law of nature, and also like Mr. Morse’s claim 8, the
  claim’s fundamental problem is there is no there there.
  Without any content in the claim that can even be arguably
  regarded as some form of a means or method beyond the
  use of electricity, the claim is invalid under O’Reilly with-
  out having to consider other validity grounds, such as ena-
  blement, for example.
      Assessing claim validity under section 101 is difficult
  work and our court over a series of many decisions in recent
  years has attempted to extract principles articulated in Su-
  preme Court opinions, both old and new. Differences of
  opinion within our court on how to apply those principles
  to a particular case inevitably arise from time to time,
  given the inherently imprecise nature of the legal frame-
  work. But today’s panel majority decision is consistent
  with both Supreme Court and our court’s precedent and its
  decision as to claims 1 and 22 does not strike me as war-
  ranting en banc intervention.
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    United States Court of Appeals
        for the Federal Circuit
                    ______________________

     AMERICAN AXLE & MANUFACTURING, INC.,
                Plaintiff-Appellant

                               v.

   NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                     LLC,
              Defendants-Appellees
             ______________________

                          2018-1763
                    ______________________

      Appeal from the United States District Court for the
  District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
  Leonard P. Stark.
                    ______________________

  NEWMAN, Circuit Judge, with whom MOORE, O’MALLEY,
  REYNA, and STOLL, Circuit Judges, join, dissenting from
  denial of the petition for rehearing en banc.
      The court’s rulings on patent eligibility have become so
  diverse and unpredictable as to have a serious effect on the
  innovation incentive in all fields of technology. The victim
  is not only this inventor of this now-copied improvement in
  driveshafts for automotive vehicles; the victims are the na-
  tional interest in an innovative industrial economy, and
  the public interest in the fruits of technological advance. I
  share the concerns of my colleagues in dissent, and I write
  to emphasize the far-reaching consequences of the court’s
  flawed Section 101 jurisprudence.
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       The court’s new spin on Section 101 holds that when
  technological advance is claimed too broadly, and the
  claims draw on scientific principles, the subject matter is
  barred “at the threshold” from access to patenting. As here,
  where the invention is found to embody a principle of phys-
  ics called “Hooke’s law,” the court rules that the invention
  is ineligible for patenting as a matter of law.
      All technology is based on scientific principles—
  whether or not the principles are understood. The Su-
  preme Court long ago recognized that what is required for
  patentability is that the inventor describes the useful ap-
  plication of discovery. The Court then and now understood
  the distinction between the basic principles of science and
  their practical application. See, for example, Le Roy v. Tat-
  ham, 55 U.S. 156 (1852):
      The word principle is used by elementary writers
      on patent subjects, and sometimes in adjudications
      of courts, with such a want of precision in its appli-
      cation, as to mislead. It is admitted, that a princi-
      ple is not patentable. A principle, in the abstract,
      is a fundamental truth; an original cause; a motive;
      these cannot be patented, as no one can claim in
      either of them an exclusive right.
  Id. at 174–75 (emphasis in original). This understanding
  is fundamental to the system of patents, implementing the
  constitutional purpose of promoting the progress of science
  and useful arts. The Court further stated:
      [T]he processes used to extract, modify, and con-
      centrate natural agencies, constitute the invention.
      The elements of the power exist; the invention is
      not in discovering them, but in applying them to
      useful objects.
  Id. at 175. The Supreme Court has reiterated this balance
  between abstract principle and practical application:
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      [W]e tread carefully in construing this exclusionary
      principle lest it swallow all of patent law. At some
      level, “all inventions . . . embody, use, reflect, rest
      upon, or apply laws of nature, natural phenomena,
      or abstract ideas.” Thus, an invention is not ren-
      dered ineligible for patent simply because it in-
      volves an abstract concept. “Applications” of such
      concepts “to a new and useful end,” we have said,
      remain eligible for patent protection.
  Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (in-
  ternal citations and alterations omitted).
       Precedent illustrates application of these principles to
  evolving technologies; for example, radio: “While a scien-
  tific truth, or the mathematical expression of it, is not pa-
  tentable invention, a novel and useful structure created
  with the aid of knowledge of scientific truth may be.” Mac-
  kay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S.
  86, 94 (1939). See also, e.g., Diamond v. Diehr, 450 U.S.
  175 (1981):
      Our earlier opinions lend support to our present
      conclusion that a claim drawn to subject matter
      otherwise statutory does not become nonstatutory
      simply because it uses a mathematical formula,
      computer program, or digital computer. . . . It is
      now commonplace that an application of a law of
      nature or mathematical formula to a known struc-
      ture or process may well be deserving of patent pro-
      tection.
  Id. at 187 (emphasis in original). Until recently, Federal
  Circuit precedent appropriately implemented the law; for
  example, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
  1335 (Fed. Cir. 2016) (“The ‘directed to’ inquiry, therefore,
  cannot simply ask whether the claims involve a patent-in-
  eligible concept, because essentially every routinely pa-
  tent-eligible claim involving physical products and actions
  involves a law of nature and/or natural phenomenon—after
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  all, they take place in the physical world.”); see also In re
  TLI Comm’cns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
  Cir. 2016) (“But in determining whether the claims are di-
  rected to an abstract idea, we must be careful to avoid over-
  simplifying the claims because ‘[a]t some level, ‘all
  inventions . . . embody, use, reflect, rest upon, or apply
  laws of nature, natural phenomena, or abstract ideas.’’”
  (quoting Alice Corp., 573 U.S. at 217)).
       However, the case now before us departs from these
  rulings, adding to the concerns of amici curiae that “[t]he
  panel majority’s decision reflects a five-year trend of courts
  severely narrowing the range of inventions and discoveries
  eligible for patent protection under the two-step Mayo-Al-
  ice inquiry, contrary to historical practice and precedent.”
  12 Law Profs. Br. 2.
      Section 101 of the patent statute is designed as an all-
  encompassing introduction to the subject matter of inven-
  tion and discovery:
      35 U.S.C. § 101. Whoever invents or discovers any
      new and useful process, machine, manufacture, or
      composition of matter, or any new and useful im-
      provement thereof, may obtain a patent therefor,
      subject to the conditions and requirements of this
      title.
  A valid patent must meet the “conditions and require-
  ments” of the patent statute; eligibility under Section 101
  is not the same as patentability under the substantive stat-
  utory provisions of novelty (§ 102), non-obviousness
  (§ 103), and description and enablement (§ 112). Yet the
  court accepts the argument made by defendant Neapco, the
  admitted copier of the American Axle invention, that “it al-
  ways has been, the breadth of a claim is critically material
  to the § 101 inquiry. The fact that breadth is also material
  to enablement (and written description, novelty, and obvi-
  ousness as well) does not mean that it cannot be relevant
  to § 101.” Neapco Br. 4. That is incorrect.
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       Breadth of claiming is a matter of the scope and con-
  tent 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 scien-
  tific principle in the claimed subject matter affects eligibil-
  ity under Section 101 itself warrants en banc rehearing.
       The panel majority holds that some claims hereof are,
  “without more,” a claim to a scientific principle, and that it
  is irrelevant whether the application is new, non-obvious,
  and enabled. This theory has found support in half of the
  court, now declining en banc review. Our missteps are con-
  spicuous in the panel majority’s treatment of “Hooke’s
  law,” which is stated to be the basis for the majority’s rul-
  ing of ineligibility, although we are not told Hooke’s law or
  how it invalidates American Axle’s new automotive
  driveshaft.
      Hooke’s law is not defined in the parties’ briefs. How-
  ever, it is reported in the Encyclopædia Britannica, at
  https://www.britannica.com/science/Hookes-law:
      Mathematically, Hooke’s law states that the ap-
      plied force F equals a constant k times the displace-
      ment or change in length x, or F = kx. The value of
      k depends not only on the kind of elastic material
      under consideration but also on its dimensions and
      shape.
  The panel majority does not explain how Hooke’s formula
  F = kx for the compression of springs renders the ’911 pa-
  tent’s automotive driveshaft ineligible for access to the pa-
  tent system. One need only look at claim 1, the broadest
  claim, to observe that this is a straightforward form of
  claim, for which eligibility is routine:
      1. A method for manufacturing a shaft assembly
         of a driveline system, the driveline system fur-
         ther including a first driveline component and
         a second driveline component, the shaft
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          assembly being adapted to transmit torque be-
          tween the first driveline component and the
          second driveline component, the method com-
          prising: providing a hollow shaft member; tun-
          ing at least one liner to attenuate at least two
          types of vibration transmitted through the
          shaft member; and positioning the at least one
          liner within the shaft member such that the at
          least one liner is configured to damp shell mode
          vibrations in the shaft member by an amount
          that is greater than or equal to about 2%, and
          the at least one liner is also configured to damp
          bending mode vibrations in the shaft member,
          the at least one liner being tuned to within
          about ±20% of a bending mode natural fre-
          quency of the shaft assembly as installed in the
          driveline system.
  ’911 patent, col. 10, ll. 10–27.
     Our colleagues apparently find differences in eligibility
  between claim 1 and claim 22:
      22. A method for manufacturing a shaft assembly
          of a driveline system, the driveline system fur-
          ther including a first driveline component and
          a second driveline component, the shaft assem-
          bly being adapted to transmit torque between
          the first driveline component and the second
          driveline component, the method comprising:
          providing a hollow shaft member; tuning a
          mass and a stiffness of at least one liner; and
          inserting the at least one liner into the shaft
          member; wherein the at least one liner is a
          tuned resistive absorber for attenuating shell
          mode vibrations and wherein the at least one
          liner is a tuned reactive absorber for attenuat-
          ing bending mode vibrations.
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  AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS            7
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  ’911 patent, col. 11, ll. 24–36. Our colleagues, writing to
  support denial of rehearing en banc, propose that there is
  a Section 101 distinction between claim 1 and claim 22, and
  draw analogy to claim 8 of Samuel Morse’s telegraph pa-
  tent, Judge Dyk explaining that “claim 8 of O’Reilly specif-
  ically did not limit itself to the specification and for that
  reason was found ineligible.” J. Dyk concurrence at 2 n.1.
  However, claim 8 was not rejected because it was not lim-
  ited to the specification, it was rejected because it proposed
  to claim electromagnetism as a scientific principle. If the
  panel majority is holding that eligibility to claim an inven-
  tion employing a scientific principle depends on whether
  the principle is mentioned in the specification, clear in-
  structions must be given.
       For the American Axle claims, neither the district court
  nor this court considered the prior art or other patentabil-
  ity factors including written description and enablement.
  Yet it is apparent that these claims are for an automotive
  driveshaft, not for an abstract idea or law of nature or
  mathematical formula. We are not told how F = kx renders
  these claims ineligible for patenting.
      The distinction between basic scientific principle and
  practical embodiment is the story of technology and indus-
  try. The amici curiae 12 Law Professors remind us that:
  “All inventions of practically applied processes and ma-
  chines are reducible to mathematical abstractions and al-
  gorithms; for example, a patentable method for operating a
  combustion engine is really just an application of the law
  of PV=nRT, the principles of thermodynamics, and other
  laws of nature comprising the principles of engineering.”
  12 Law Profs. Br. 9 (quoting Adam Mossoff, A Brief History
  of Software Patents (and Why They’re Valid), 56 Ariz. L.
  Rev. Syllabus 65, 71 (2014)).
      Nonetheless, the majority deems irrelevant whether
  the claimed subject matter meets the requirements of Sec-
  tions 102, 103, and 112. We don’t know whether there are
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  8     AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
                                                     LLC


  substantive issues of claim scope related to invalidity or in-
  fringement. I take note of the protestations that this opin-
  ion is limited, but if the court indeed intends to limit its
  holding to driveshafts for automotive vehicles, en banc in-
  struction is a necessity. Instead, the court furthers the de-
  bilitation of Section 101. As stated by amicus curiae
  Biotechnology Innovation Organization:
      [T]here continues to be unabated uncertainty about
      the patent eligibility of inventions across an ex-
      panding range of technologies, including biotech-
      nology. The unstable state of patent-eligibility
      jurisprudence affects modern biotechnologies rang-
      ing from biomarker-assisted methods of drug treat-
      ment to companion diagnostic tests, fermentation
      products, industrial enzyme technology, and
      marker-assisted methods of plant breeding.
  BIO Br. 1. Other amici curiae reinforce these concerns. As
  summarized by amicus curiae Judge Paul R. Michel (Ret.),
  “the § 101 rulings-at-issue threaten to undercut patent law
  and its innovation-promoting goals. . . . The panel’s deci-
  sion is legally incorrect and ill-advised.” Michel Br. 1. And
  amicus curiae practitioner Jeremy C. Doerre states that
  “the implicit judicial exception to 35 U.S.C. § 101 for natu-
  ral laws is ill-suited to police overbroad [claims].” Doerre
  Br. 4–5.
      The need for judicial provision of stable and compre-
  hensible patent law is of increasing urgency. “Legal pro-
  tection of inventions and discoveries that once was a
  defining characteristic of U.S. industrial policy has become
  increasingly irrelevant, no longer providing adequate com-
  fort to investors willing to make high risk commitments of
  time and capital or to inventors who would leave secure
  jobs to pursue visions of breakthrough technologies and
  challenge entrenched incumbents.”          Alliance of U.S.
  Startups & Inventors for Jobs Br. 2–3 (showing survey re-
  sults conducted by Professor Taylor at SMU, documenting
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  AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS            9
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  “[t]he growing unwillingness of inventors and investors to
  rely on patents in tackling promising but risky new tech-
  nologies harbingers badly for the United States”). Amicus
  curiae Alliance states that “If left standing, the decision
  has the potential for expanding ineligibility under Sec-
  tion 101 to threaten most every invention for which a pa-
  tent has ever been granted,” id. at 5,—as exemplified in the
  case here before us.
       The court’s notion that the presence of a scientific ex-
  planation of an invention removes novel and non-obvious
  technological advance from access to the patent system,
  has moved the system of patents from its once-reliable in-
  centive to innovation and commerce, to a litigation gamble.
  It is essential to restore the incentive role of the system of
  patents, for technology is the foundation of the nation’s
  economy, trade, and strength.
      There is no room for second best in our dependence on
  correct, just, and wise application of the law. I respectfully
  dissent from the court’s denial of the request for rehearing
  en banc.
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    United States Court of Appeals
        for the Federal Circuit
                    ______________________

     AMERICAN AXLE & MANUFACTURING, INC.,
                Plaintiff-Appellant

                               v.

   NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                     LLC,
              Defendants-Appellees
             ______________________

                          2018-1763
                    ______________________

      Appeal from the United States District Court for the
  District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
  Leonard P. Stark.
                    ______________________

  STOLL, Circuit Judge, with whom NEWMAN, MOORE,
  O’MALLEY, and REYNA, Circuit Judges, join, dissenting
  from the denial of the petition for rehearing en banc.
      I write to dissent from the denial of the petition for re-
  hearing en banc because the majority’s decision extends
  § 101 to place in doubt the patent eligibility of historically
  eligible mechanical inventions, and thus presents “a ques-
  tion of exceptional importance” that warrants considera-
  tion by the full court. Fed. R. App. P. 35(a)(2). I share
  Judge Moore’s concerns about the majority’s “nothing
  more” test and its application in this case, particularly on
  this procedural posture. The majority has, to a limited ex-
  tent, cabined the scope of its prior decision on panel
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  2     AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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  rehearing, but I am concerned that its new decision only
  serves to introduce additional questions—including how to
  apply the “nothing more” test—that would benefit from fur-
  ther development and contemplation through en banc re-
  view.
      The majority asserts that its “nothing more” test is not
  new, and is instead firmly grounded in precedent such as
  O’Reilly v. Morse, 56 U.S. 62 (1853). I disagree. The claim
  held ineligible in O’Reilly is distinguishable on its face. It
  was not limited to any particular machinery and was in-
  stead broadly directed to the use of electromagnetism,
  “however developed,” for transmitting information. Id.
  at 112. And as amici point out, several of Samuel Morse’s
  other claims were held eligible in that very same case, and
  they more closely resemble the claims at issue here. See
  Law Prof. Br. 6–8; see also O’Reilly, 56 U.S. at 85–86 (list-
  ing claims). For example, one of the patent-eligible claims
  expressly recites applying a natural law, “the motive power
  of magnetism,” to produce a result, “telegraphic communi-
  cation at any distances.” O’Reilly, 56 U.S. at 85 (quoting
  U.S. Reissue Patent No. 117). It is difficult to square that
  outcome in O’Reilly with the majority’s application of the
  “nothing more” test here.
      The majority, along with Judge Dyk and Judge Chen
  in their concurrences, contend that the O’Reilly Court held
  these claims eligible because they include phrases such as
  “substantially as set forth in the foregoing description,”
  which, in their view, incorporated subject matter from the
  specification into the claims. But O’Reilly does not ex-
  pressly rely on any such incorporation by reference. In-
  stead, it characterizes the ineligible claim as being directed
  to “an effect produced by the use of electro-magnetism,” as
  opposed to “the process or machinery necessary to produce”
  that effect. 56 U.S. at 120. That distinction is entirely con-
  sistent with the eligibility of the claims at issue here, for
  they recite the process and machinery necessary to produce
  the desired effect of reducing vibrations in a shaft
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  assembly. And, although O’Reilly does describe the ineli-
  gible claim as “outside” and “beyond” the specification, id.
  at 119–20, it does not necessarily follow that the other
  claims were eligible because of any particular incorpora-
  tion by reference. See Dolbear v. Am. Bell Tel. Co., 126 U.S.
  1, 534 (1888) (“The effect of [O’Reilly] was . . . that the use
  of magnetism as a motive power, without regard to the par-
  ticular process with which it was connected in the patent,
  could not be claimed, but that its use in that connection
  could.” (emphasis added)). Thus, the majority’s “nothing
  more” test appears to be a new development with poten-
  tially far-reaching implications in an already uncertain
  area of patent law. On that basis alone, this case deserves
  en banc review, including an opportunity for the parties
  and other stakeholders, such as the U.S. Patent and Trade-
  mark Office, to address the merits of the new “nothing
  more” test.
       Judge Chen also claims in his concurrence that the ma-
  jority did not create a new test, characterizing the major-
  ity’s decision as a “straightforward application” of the
  “O’Reilly test” that is “consistent with long-standing prec-
  edent.” E.g., Chen Concurring Op. 1, 4, 6. While I appre-
  ciate the importance of O’Reilly as Supreme Court
  precedent addressing eligibility, I note that Judge Chen
  does not identify any prior court opinions or articles that
  specifically refer to an “O’Reilly test,” nor am I aware of
  any. To the extent that the Supreme Court has cited
  O’Reilly, it has been for the general propositions that there
  is an implicit exception to § 101 and that preemption is an
  important concern in patent law. See, e.g., Alice Corp.
  v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citing O’Reilly
  in support of the implicit exception to § 101); Mayo Collab-
  orative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 85
  (2012) (discussing O’Reilly to illustrate preemption con-
  cerns); Diamond v. Diehr, 450 U.S. 175, 187–88 (1981) (cit-
  ing O’Reilly to underscore that an application of a law of
  nature or mathematical formula may be patent eligible).
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  Perhaps most notably, the district court opinion in this case
  never even mentions O’Reilly. Finally, if this case pre-
  sented such a straightforward application of the long-
  standing “O’Reilly test,” why did the majority’s initial opin-
  ion not even mention this test?
      In his concurrence, Judge Dyk also suggests that the
  “nothing more” test is not new because the same “linguistic
  formulation” has been used by this court, the district court,
  and by the parties. Dyk Concurring Op. 8–10 & n.4–7. In
  doing so, the concurrence provides nothing to further elu-
  cidate what the “nothing more” test entails, and in my
  view, makes the test even more confusing and uncertain.
  The fact that the phrase “nothing more” has been employed
  a few times in our recent § 101 jurisprudence provides little
  insight into its scope and application as a legal test. These
  scattered references, furthermore, provide little assurance
  that any legal test is being applied consistently and in ac-
  cordance with the principles set forth by the Supreme
  Court in cases like O’Reilly. Indeed, the fact that “nothing
  more” has begun to appear in our § 101 precedent only fur-
  ther confirms that it would be prudent to review its appli-
  cation now. I am left even more convinced that we should
  hear this case en banc.
      The majority’s reasoning also introduces further uncer-
  tainty by blurring the line between patent eligibility and
  enablement. While the eligibility inquiry may take into ac-
  count whether a claim has “the specificity required to
  transform a claim from one claiming only a result to one
  claiming a way of achieving it,” SAP Am., Inc. v. InvestPic,
  LLC, 898 F.3d 1161, 1167–68 (Fed. Cir. 2018) (emphasis
  added) (collecting cases), the majority’s “how to” analysis
  seems to go further, potentially incorporating a heightened
  enablement requirement into § 101. In my view, a claim
  can be specific enough to be directed to an application of a
  law of nature—which is patent eligible—without reciting
  how to perform all the claim steps. The majority’s conclu-
  sion that claim 22 is ineligible demonstrates the flaws in
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  its “how to” test. Even assuming that claim 22 applies
  Hooke’s law (or any other unnamed law of nature), the
  claim seems sufficiently specific to qualify as an eligible ap-
  plication of that natural law. The claim identifies specific
  variables to tune, including “a mass and a stiffness of at
  least one liner.” U.S. Patent No. 7,774,911 col. 11 l. 31. It
  requires that the tuned liner attenuate specific types of vi-
  bration, including “shell mode vibrations” and “bending
  mode vibrations,” and further requires that the tuned liner
  is inserted in a “hollow shaft member.” Id. at col. 11 ll. 30–
  36. With this level of specificity, claim 22 appears to be
  properly directed to “the application of the law of nature to
  a new and useful end,” not to the law of nature itself. Funk
  Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130
  (1948) (collecting cases). Yet this level of detail is insuffi-
  cient in the majority’s view, and it remains unclear how
  much more “how to” would have been sufficient to render
  the claim eligible under the majority’s approach. Here too,
  en banc review would provide an opportunity for the par-
  ties and other stakeholders to address, and the full court to
  consider, where eligibility analysis stops and enablement
  analysis begins.
       Beyond the uncertainty introduced by the majority’s
  application of the “nothing more” and “how to” tests, the
  result reached by the majority should also give us pause.
  The majority invokes § 101 to hold ineligible a method for
  manufacturing a drive shaft assembly for a car—a class of
  invention that has historically been patent eligible. See,
  e.g., Diehr, 450 U.S. at 184 (“Industrial processes . . . have
  historically been eligible to receive the protection of our pa-
  tent laws.”). In my view, the result in this case suggests
  that this court has strayed too far from the preemption con-
  cerns that motivate the judicial exception to patent eligi-
  bility. The claims at issue here are far removed from the
  canonical ineligible claim that “simply state[s] the law of
  nature while adding the words ‘apply it.’” Mayo, 566 U.S.
  at 72 (citing Gottschalk v. Benson, 409 U.S. 63, 71–72
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  6     AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
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  (1972)). Indeed, the claims at issue do not recite any par-
  ticular law of nature, much less preempt the use of Hooke’s
  law in any particular context. Instead, they are directed to
  a specific “method for manufacturing a shaft assembly”
  with a liner that attenuates certain types of vibrations.
  ’911 patent col. 11 ll. 24–36. Even assuming that Hooke’s
  law is required to tune the claimed liner (despite not being
  mentioned anywhere in the specification or claims), so are
  innumerable other laws of nature. And there remain innu-
  merable ways to apply Hooke’s law to achieve the goal of
  mitigating problematic vibrations in a shaft assembly—
  perhaps, for instance, by using something other than a
  liner tuned to attenuate at least two different kinds of vi-
  brations.
       I also believe that it is inappropriate for us to announce
  this new “nothing more” test, and then resolve it on our
  own when the resolution is subject to factual disputes. This
  is particularly so here, on review of the district court’s sum-
  mary judgment of ineligibility. As Judge Moore’s dissent
  points out, significant evidence, including expert testi-
  mony, contradicts the notion that the two types of vibra-
  tions identified in the claims can be reduced by Hooke’s law
  and “nothing more.” In my view, whether the claimed pro-
  cess involves application of Hooke’s law, and whether it in-
  volves “nothing more” than Hooke’s law, are both questions
  of fact. Whether the claims in this case invoke Hooke’s law
  is not purely a question of claim construction involving in-
  trinsic evidence because nothing in the intrinsic evidence
  even refers to Hooke’s law. As the Supreme Court has ex-
  plained, we can evaluate certain evidence de novo (the in-
  trinsic record, composed largely of legal documents), but we
  must evaluate other evidence with deference due to fact
  findings (everything extrinsic to the record, including ex-
  pert testimony). See Teva Pharm. USA, Inc. v. Sandoz,
  Inc., 574 U.S. 318, 324–28 (2015). The scientific question
  of whether Hooke’s law and “nothing more” reduces the two
  types of vibration identified in the claims presents a
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  question analogous to the conventionality of a particular
  technology in eligibility analysis, inherency or anticipation
  in prior art analysis, or the second (comparing) step in an
  infringement analysis—all of which are factual inquiries.
  See, e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1368
  (Fed. Cir. 2018) (the conventionality of a claim element is
  a question of fact); Monsanto Tech. LLC v. E.I. DuPont
  de Nemours & Co., 878 F.3d 1336, 1342 (Fed. Cir. 2018)
  (anticipation and inherent disclosure are questions of fact);
  Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1369
  (Fed. Cir. 2001) (the comparing step of infringement anal-
  ysis is a question of fact). If the “nothing more” test were
  treated as involving questions of fact, as it should be, there
  would be no question that this case would have to be va-
  cated and remanded for fact development at the district
  court.
      Finally, I remain concerned about the practical effect
  of the majority’s decision, notwithstanding its newly intro-
  duced warning that its “holding should not be read as an
  invitation to raise a validity challenge against any patent
  claim that requires the application of an unstated natural
  law.” Maj. 26. In one colorful example, amici suggest that
  the majority’s original approach would have placed the
  combustion engine at risk of ineligibility—a proposition
  that would have seemed absurd just a few years ago, but
  now seems eerily plausible. Law Prof. Br. 9. Although the
  majority has dialed back its original decision to some de-
  gree on panel rehearing, one can still reasonably ponder
  whether foundational inventions like the telegraph, tele-
  phone, light bulb, and airplane—all of which employ laws
  of nature—would have been ineligible for patenting under
  the majority’s revised approach. See, e.g., id. at 5–9; IPO
  Ass’n Br. 9. Despite the majority’s cautionary language,
  the uncertainty introduced by its analysis will likely invite
  eligibility challenges to many other patents directed to me-
  chanical inventions or otherwise. See Michel Br. 7 (“[I]f ‘in-
  dustrial-process,’ physically-based patents like these are
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  ineligible under Mayo/Alice, then seemingly every patent is
  in ineligibility jeopardy.”). Without clear direction from
  this court, the Patent Office and district courts will likely
  reach inconsistent results when assessing the patent eligi-
  bility of mechanical inventions. Inventors, the patent sys-
  tem, and our innovation-focused economy will bear the cost
  of the resulting unpredictability. See BIO Br. 7–9; USIJ
  Br. 8–11.
      En banc review would provide this court with an oppor-
  tunity to hear from the parties and various stakeholders,
  including the Patent Office, which deals with § 101 issues
  on a daily basis, about how the judicial exception to patent
  eligibility should apply in the context of mechanical and
  other inventions that employ unnamed laws of nature. By
  declining to rehear this case en banc, we have abdicated
  our responsibility to address patent eligibility head on. In
  the face of our unwillingness to consider patent eligibility
  as a full court, I grow more concerned with each passing
  decision that we are, piece by piece, allowing the judicial
  exception to patent eligibility to “swallow all of patent law.”
  Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at 70–73). I
  respectfully dissent.
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    United States Court of Appeals
        for the Federal Circuit
                   ______________________

     AMERICAN AXLE & MANUFACTURING, INC.,
                Plaintiff-Appellant

                               v.

   NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
                     LLC,
              Defendants-Appellees
             ______________________

                         2018-1763
                   ______________________

      Appeal from the United States District Court for the
  District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
  Leonard P. Stark.
                    ______________________

  O’MALLEY, Circuit Judge, with whom NEWMAN, MOORE,
  and STOLL, Circuit Judges, join, dissenting from the de-
  nial of the petition for rehearing en banc.
      The revised majority opinion issued today attempts to
  address the many concerns raised by American Axle &
  Manufacturing, Inc. (“American Axle”) and the half-dozen
  amici curiae who objected to the substance of the majority’s
  original opinion. It does this, however, with little concern
  for proper process—instead achieving its chosen result by
  whatever means it could conjure. The Advisory Committee
  on Appellate Rules recently forwarded to all Courts of Ap-
  peals a letter from the American Academy of Appellate
  Lawyers (“the Academy”). The Academy’s letter proposed
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  a rule that would require us, as an appellate court, to “give
  notice [when] considering a previously unaddressed ground
  and provide [the parties] an opportunity to brief it.” Letter
  from the Academy to Hon. Michael Chagares, Chair Fed-
  eral Advisory Committee on Appellate Rules (April 26,
  2019), available at https://www.appellateacademy.org/pub-
  lications/Chagares_proposal.pdf. The Advisory Commit-
  tee’s cover letter noted a growing belief among appellate
  lawyers that Courts of Appeals have shown an increasing
  tendency to decide questions on grounds that were neither
  argued before the district court nor briefed on appeal. The
  Advisory Committee explained that it felt the Academy’s
  concerns were legitimate, but decided that, rather than im-
  plement a mandate, it would ask Courts of Appeals, includ-
  ing this one, to voluntarily correct course. It is my hope
  that we, as an institution, will rise to the Advisory Com-
  mittee’s challenge. 1 Thus, while I share all the substantive
  and policy concerns raised by Judge Newman, Judge Moore
  and Judge Stoll in their dissents, I write separately to em-
  phasize the procedural norms that the majority ignores.
       The problems I perceive with the majority opinion are
  threefold: (1) it announces a new test for patentable subject
  matter at the eleventh hour and without adequate briefing;
  (2) rather than remand to the district court to decide the
  issue in the first instance, it applies the new test itself; and
  (3) it sua sponte construes previously undisputed terms in
  a goal-oriented effort to distinguish claims and render
  them patent ineligible, or effectively so. These obstacle-



      1    I confess that I have not always stayed on the cor-
  rect side of the line the Academy would have us draw. That
  does not free me from the obligation to work harder in the
  future to avoid deciding cases on unbriefed grounds. And
  it should not free us as an institution from attempting to
  rein in egregious instances where our colleagues cross that
  line.
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  avoiding maneuvers fly in the face of our role as an appel-
  late court.
       First, the majority announces that a claim is patent in-
  eligible if it “clearly invokes a natural law, and nothing
  more, to accomplish a desired result.” Maj. 19. The major-
  ity contends that this statement of law stems directly from
  a 19th century Supreme Court case, O’Reilly v. Morse, 56
  U.S. 62 (1853). As Judge Stoll explains in her dissent, how-
  ever, this case does not present a clear-cut application of
  O’Reilly. It is, instead, an expansion that would likely ren-
  der ineligible claims found patent eligible by the O’Reilly
  court itself. Despite this, the majority forges on, adopting
  a test that was proposed by no one. One might ask why, if
  appellate judges will reach their desired result regardless
  of outside input and untethered from the arguments of oth-
  ers, we should bother with the dog and pony show of the
  full development of a trial record or our admonition to raise
  all issues in one’s appellate briefs or suffer waiver? Just as
  the majority was persuaded by the outcry of the public in
  response to the original opinion, it may have benefited
  from, or even changed course in view of, comments on this
  new test. The parties and the public should have been
  given a chance to weigh in.
      Second, the majority’s choice to apply its new test to
  this case, again without briefing, is troubling. As Judge
  Moore and Judge Stoll each explain, the “nothing more”
  test presents factual questions. Does the claim clearly in-
  voke a natural law? Which one? How do we know there is
  nothing more? Where, as here, the claims say nothing
  about any natural law, these are scientific questions that
  must be answered by reference to expert testimony—testi-
  mony which, as developed to date in this case, does not an-
  swer these questions as the majority now does. While the
  district court made some general statements about Hooke’s
  Law and friction damping, it was not applying the test ar-
  ticulated by the majority today. The district court opinion
  makes no mention of O’Reilly and certainly did not find
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  4     AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS
                                                     LLC


  “nothing more.” See Am. Axle & Mfg., Inc. v. Neapco Hold-
  ings LLC, 309 F. Supp. 3d 218, 225 (D. Del. 2018). Given
  this, at minimum the majority should have remanded with
  an instruction for the district court to consider the factual
  record and decide the issue in the first instance. Or, as-
  suming arguendo that the majority is correct to treat this
  as question of law, it should have remanded for the district
  court to consider the issue afresh using that lens. It seems
  that the majority was just too deep in the § 101 hole it orig-
  inally dug to give up control. Thus, rather than follow the
  prudent path, the majority took it upon itself to invalidate
  these claims today. The decision ignores that we are a
  court of review and steps far outside the bounds of our role
  as appellate judges.
      Finally, the majority’s treatment of claim 1 is perhaps
  most emblematic of the concerns raised by the Academy.
  Sua sponte, and without the aid of supplemental briefing,
  the majority construes claims 1 and 22 to have a patentably
  distinct difference—“inserting” versus “positioning” of the
  claimed liner. Maj. 25 n.13. No one argued that these
  terms are meaningfully, much less patentably, different
  and no one asked the trial court to compare or assess them.
  While the majority points out that no one argued the terms
  share the same meaning, that is irrelevant and unsurpris-
  ing. That the parties failed to raise this argument only un-
  derlies that this was not an important issue, either before
  the district court or on appeal. The majority uses the minor
  wording difference as a hook and notes that claim 1 is
  “more general” than claim 22, so that it can set up the
  framework for an abstract idea-based § 101 decision. It
  then remands to the district court to effectuate that goal,
  even though this issue was not argued to the district court
  in the first instance. Maj. 24–26. This unrequested second
  chance for Neapco Holdings LLC is unwarranted and
  leaves American Axle trapped in § 101 purgatory. It is not
  our role as an appellate court to direct the litigation
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  AMERICAN AXLE & MANUFACTURING V. NEAPCO HOLDINGS            5
  LLC


  strategy of the parties or to pressure the district court into
  invaliding claims on grounds never argued to it before.
      The active judges of this Court were evenly divided,
  6-6, in our vote on whether to take this case en banc based
  on the serious substantive concerns the new majority opin-
  ion raises. In such circumstances, important institutional
  concerns such as the ones discussed above should push the
  vote over the line. I respectfully dissent from the full
  Court’s unwillingness to put us back on course and force
  adherence to the limitations imposed on us as a court of
  review.
