Patent to dampen vibrations partially invalidated because it claims a natural phenomena. AAM v. NEAPCO

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention. In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention. A patent gives its owner the exclusive right to make, use, sell and import the invention in the United States.

Patent law is constantly evolving so even once a patent is granted, it can still be invalidated. One of the grounds for invalidating a patent is the subject matter to which the invention relates. A patent can be granted on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. This requirement is articulated in §35 U.S.C. 101 of United States Patent Law. There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas. Patents that have been granted in the past can be deemed invalid if court precedent changes the definition of these judicially created exceptions.

These exceptions exist because monopolizing the basic tools of scientific work tend to impede innovation more than to promote it. However, the United States Supreme Court has advised that these exceptions must be applied cautiously, because too broad an interpretation of these exceptions could eviscerate patent law.

Laws of nature and natural phenomena are not patentable, but applications and uses of such laws and phenomena may be patentable. A claim to otherwise statutory subject matter does not become ineligible by its use of a law of nature or natural phenomenon.

To distinguish claims to patent-eligible applications of laws of nature and natural phenomena from claims that impermissible claims, two-part test is used by courts. First, the claims are examined to see if they are “directed to” a law of nature or natural phenomenon. If the claims are directed to a natural phenomena, then the court will examine whether the limitations of the claim transform the nature of the claim into a patent-eligible application.

A case which illustrates the fine line between patent ineligible natural phenomena and the patentable application of natural phenomena is AMERICAN AXLE & MANUFACTURING, INC., v. NEAPCO HOLDINGS LLC, 2018-1763 (C.A.F.C. 2020).

Plaintiff in this case owns U.S. Patent No. 7,774,911 (“the ’911 patent”). The patent claims a method of manufacturing drive shafts with liners that reduce vibrations. There are three types of vibrations that can be produced in a drive shaft and various was to reduce a single type of vibration. Plaintiff claims that its patent allowed all three types of vibrations to be reduced by tuning the lining of the drive shaft. This was achieved by tuning the liners to the resonant frequency of the drive shaft vibration. Plaintiff sued Defendant for patent infringement. Defendant responded that the patent is invalid because the patent merely claims the result of Hooke’s law which is equation used to determine the frequency at which an object vibrates based on relates the mass and/or stiffness.

The District court focused on the independent claims 1 and 22. The court found that the claims were directed to a natural phenomena and that there were no limitations to transform the claim. Plaintiff appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit reviewed each claim in turn. For claim 22 the Federal Circuit found that the patent claimed no improved method of using natural laws were claimed. Claim 22 simply claimed a result without describing a method to achieve the result.

For claim 1 the Federal Circuit found that it differed from claim 22. Claim 1 included variables other than mass and stiffness that can be tuned in order to reduce vibrations. Claim 1 also included the limitations of “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member.” While the Federal Circuit did not definitely say the claim was patent eligible, it found that the claim was directed to something more than Hooke’s law.

The Federal Circuit affirmed the District Courts decision with respect to claim 22. With respect to claim 1 the Federal Circuit reversed and remanded for further proceedings.

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