TAKEAWAY: The U.S. Supreme Court denied certiorari in American Axle, a case that some hoped would clarify the Alice/Mayo patent eligibility framework.
On June 30, 2022, the U.S. Supreme Court denied the petition for certiorari in American Axle & Manufacturing v. Neapco Holdings, No. 2018-1763 (Fed. Cir. Oct. 3, 2019). Appellants and others framed this case as a means for the Court to provide long-awaited guidance on analyzing § 101 patent eligibility under the Alice/Mayo framework put in place by the Court in 2014.
American Axle originally sued Neapco in the District Court of Delaware in 2015, claiming Neapco infringed their patent for a method of production of noise-reduced propshafts. The District Court analyzed the case under the Alice/Mayo two-step framework, considering whether the claims are directed to a judicial exception, and if so, whether other aspects of the claims contain an inventive concept that transforms the nature of the claims. Under this framework, the District Court held that the claims were merely directed to a judicial exception—an application of Hooke’s law relating mass and stiffness to frequency—with no inventive concept.
The Federal Circuit affirmed on appeal with respect to some claims while remanding the others for reexamination. Judge Moore wrote a dissent criticizing the majority holding as causing confusion because the “patent does not recite any particular natural law. Every mechanical invention must apply the laws of physics—that does not render them all ineligible, or maybe it does now.”
American Axle filed a petition for a writ of certiorari with the U.S. Supreme Court; the U.S. Solicitor General representing the federal government filed an amicus brief on May 24, 2022, recommending the Supreme Court grant review. The amicus brief argued that the framework remains difficult to apply consistently, causes uncertainty, and has made it difficult for “inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent-eligible.”
While the denial of certiorari keeps the Alice/Mayo framework in place, the USPTO has provided considerable guidance in how it is applying patent eligibility during examination. The latest guidance documents are available at the USPTO’s subject matter eligibility site.