Supreme Court declines American Axle, leaving the result-only claim rule in place over the Solicitor General's advice

2022-06-30Supreme Court

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891 (U.S. June 30, 2022) (petition for certiorari denied), leaving in place American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. July 31, 2020) (modified opinion on panel rehearing) (Dyk, J., joined by Taranto, J.; Moore, J., dissenting), rehearing en banc denied, 966 F.3d 1347 (Fed. Cir. July 31, 2020)

The Supreme Court denied certiorari in American Axle's challenge to the Federal Circuit's holding that claim 22 of United States Patent No. 7,774,911, a method of manufacturing a driveshaft that recites "tuning a mass and a stiffness of at least one liner" to attenuate two modes of vibration, is ineligible under Section 101 of Title 35 of the United States Code. The Federal Circuit panel, in a modified opinion by Judge Dyk joined by Judge Taranto over a dissent by Judge Moore, held that claim 22 "simply requires the application of Hooke's law to tune a propshaft liner to dampen certain vibrations," that the claim "merely describes a desired result," and that a claim invoking a natural law to reach a result without saying how is ineligible under O'Reilly v. Morse; the panel remanded claim 1, which adds a positioning step. The full court divided six to six on rehearing en banc, with Judges Newman, Moore, O'Malley, Reyna, Stoll and Lourie dissenting from denial. After inviting the Solicitor General's views, the Court received the United States' brief on May 24, 2022, advising that "the petition for a writ of certiorari should be granted," arguing that claim 22 "recites a specific sequence of steps" and that the panel's analysis "blurs the two" inquiries by demanding detail "more appropriate to the enablement inquiry." The Court denied the petition.

What it changesNo correction is coming from the Supreme Court; the Federal Circuit's rule that a claim reciting a goal and the natural law or algorithm behind it, without the means of reaching the goal, is ineligible is, despite half the Federal Circuit and the Solicitor General, the law a patent program must draft to. Machine learning claims are the most exposed class, because a claim to training a model so that an outcome is achieved is a claim to a result as claim 22 was: it names the relationship the model exploits and the outcome wanted, and leaves the engineering to the reader. Put the how in the independent claim: the input representation, the loss or objective, the architecture choice, the sampling or filtering step, or the data pipeline that produces the improvement, stated so that a competitor who reaches the outcome a different way is outside the claim. An eligibility review of an existing portfolio should look first for claims whose only distinguishing limitation is an outcome.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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