This morning the Federal Circuit issued seven precedential opinions and orders in patent cases, along with one related nonprecedential opinion. These include the opinions and orders in the closely watched case of American Axle & Manufacturing v. NEAPCO Holdings LLC, which concerns the application of patent eligibility law. Notably, in that case the court vacated the prior panel opinion, issued a new panel opinion, and denied en banc rehearing by an evenly divided court. Here are the introductions to today’s opinions and text from today’s orders.
American Axle & Manufacturing v. NEAPCO Holdings LLC (Precedential Order)
IT IS ORDERED THAT: The Petition for Panel Rehearing is granted to the extent that the previous precedential opinion and judgment issued October 3, 2019, are withdrawn and replaced with the modified precedential opinion and judgment accompanying this order.
American Axle & Manufacturing v. NEAPCO Holdings LLC (Precedential)
American Axle & Manufacturing, Inc. (“AAM”) sued Neapco Holdings LLC and Neapco Drivelines LLC (collectively, “Neapco”) alleging infringement of claims of U.S. Patent No. 7,774,911 (“the ’911 patent”). The parties filed cross-motions for summary judgment as to the eligibility of the asserted claims of the ’911 patent under 35 U.S.C. § 101. The district court granted Neapco’s motion and held that the asserted claims are ineligible under § 101. We affirm in part and vacate and remand in part.
MOORE, Circuit Judge, dissenting.
The majority’s decision expands § 101 well beyond its statutory gate-keeping function and collapses the Alice/Mayo two-part test to a single step—claims are now ineligible if their performance would involve application of a natural law. The majority makes three critical errors of law and in doing so, has inflated § 101 beyond the statutory language and Supreme Court precedent. First, the majority finds claims directed to natural laws, yet they clearly contain no such natural law. The majority creates a new test for when claims are directed to a natural law despite no natural law being recited in the claims, the Nothing More test. The majority refuses to ask the parties for supplemental briefing on the application of its new Nothing More test or to remand to the district court to assess the applicability of the new test in the first instance. The majority instead holds that we appellate judges, based on our background and experience, will resolve questions of science de novo on appeal. We will determine whether Hooke’s law and nothing more results in a reduction of two types of vibration in a propshaft. The majority reaches this conclusion despite all of the briefing and record evidence contradicting it. Second, the majority refuses to consider the unconventional claim elements. Third, the majority has imbued § 101 with a new superpower—enablement on steroids. The majority’s blended 101/112 analysis expands § 101, converts factual issues into legal ones and is certain to cause confusion for future cases.
The claims at issue contain a specific, concrete solution (inserting a liner inside a propshaft) to a problem (vibrations in propshafts). Although some degree of trial and error in modifying the mass, stiffness, and location of the liner to optimize the reduction in vibration of a given shaft could (if undue) create an enablement concern, that is not a § 101 problem. American Axle (AAM) and the many amici believe each of these errors of law are likely to create confusion for the district courts and to expand § 101 profoundly. I agree.
The majority claims this is a narrow decision—I think not. This case turns the gatekeeper into a barricade. Unstated natural laws lurk in the operation of every claimed invention. Given the majority’s application of its new test, most patent claims will now be open to a § 101 challenge for being directed to a natural law or phenomena.
Finally, though not a legal question, I am troubled by the deprivation of property rights without due process. The majority declares claims representative despite the fact that no party argued below or to this court that there were representative claims, and AAM argued the import to the § 101 analysis of dependent claim limitations throughout these proceedings. And the majority finds against the patentee by reaching a claim construction issue of the majority’s own creation. The majority concludes, though no party argued it at any point in this litigation or appeal, that the claim terms “positioning” and “inserting” have different meanings. And only because of its newly proffered, completely sua sponte construction, claim 22 is deemed ineligible. There is simply no justification for the majority’s application of its new Nothing More test other than result-oriented judicial activism. This is fundamentally unfair. I dissent from this unprecedented expansion of § 101.
American Axle & Manufacturing v. NEAPCO Holdings LLC (Precedential 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 curiae 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,
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.
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 vibrations in a shaft assembly.” Stoll Dissent Op. at 2–3. Because claim 22 contains no further identification of specific 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 distances” by the use of “electro-magnetism,” precisely because, unlike the other upheld claims in O’Reilly, it lacked any identification of specific means to use electromagnetism. Id. at 113–20.
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 consistent with long-standing precedent. Contrary to the dissent’s view, the panel majority did not announce a new patent-eligibility test. Rather, its rationale is a straightforward 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 majority and for that reason no remand is required as to claim 22.
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 national 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.
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 rehearing 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 question of exceptional importance” that warrants consideration 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 extent, cabined the scope of its prior decision on panel 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 further development and contemplation through en banc review.
O’MALLEY, Circuit Judge, with whom NEWMAN, MOORE, and STOLL, Circuit Judges, join, dissenting from the denial 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 Appeals a letter from the American Academy of Appellate Lawyers (“the Academy”). The Academy’s letter proposed 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 Federal Advisory Committee on Appellate Rules (April 26, 2019), available at https://www.appellateacademy.org/publications/Chagares_proposal.pdf. The Advisory Committee’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 implement a mandate, it would ask Courts of Appeals, including this one, to voluntarily correct course. It is my hope that we, as an institution, will rise to the Advisory Committee’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 emphasize the procedural norms that the majority ignores.
LOURIE, Circuit Judge, dissents without opinion from the denial of the petition for rehearing en banc.
Takeda Pharmaceuticals U.S.A., Inc. appeals the decision of the United States District Court for the District of Delaware denying a preliminary injunction based on the court’s conclusion that Takeda failed to show that it was likely to succeed on the merits or that it would be irreparably harmed absent a preliminary injunction. For the reasons described below, we affirm.
NEWMAN, Circuit Judge, dissenting.
This appeal is from the district court’s denial of injunctive relief, despite the explicitly agreed provision for an immediate injunction on breach of the License Agreement. I respectfully dissent, for judicial refusal to enforce settlement terms violates fundamental principles of contract law and commerce, and negates the strong public policy favoring settlement of litigation on agreed terms.
Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc. (Nonprecedential)
Takeda Pharmaceuticals U.S.A., Inc., appeals the decision of the United States District Court for the District of Delaware denying a preliminary injunction based on the court’s conclusion that Takeda failed to show that it was likely to succeed on the merits or that it would be irreparably harmed absent a preliminary injunction. For the reasons stated in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., No. 20-1407 (Fed. Cir. July 31, 2020), we affirm the district court’s denial of Takeda’s request for a preliminary injunction.
NEWMAN, Circuit Judge, dissenting.
This appeal is from the district court’s denial of injunctive relief, despite the settlement license provisions of irreparable harm and immediate injunctive relief. My colleagues’ refusal to enforce the settlement terms violates fundamental contract law, and negates precedent and the strong public policy favoring settlement of litigation on agreed terms. For the reasons elaborated in today’s decision on a substantively identical contract, in Takeda Pharmaceuticals U.S.A., Inc. v. Mylan Pharmaceuticals Inc., No. 20-1407 (Fed. Cir. July 31, 2020) (Newman, J., dissenting), I respectfully dissent.
IBSA Institut Biochimique, S.A., Altergon, S.A., and IBSA Pharma Inc. (collectively, “IBSA”) appeal a decision by the United States District Court for the District of Delaware holding claims 1, 2, 4, and 7–9 of U.S. Patent No. 7,723,390 (“the ’390 patent”) invalid as indefinite under 35 U.S.C. § 112. See IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., No. 1:18-cv-00555-RGA, 2019 WL 3936656 (D. Del. Aug. 20, 2019) (“Decision”); Claim Construction Order and Final Judgment, id., ECF No. 111. For the reasons below, we affirm.
XY, LLC v. Trans Ova Genetics, LC (Precedential)
XY, LLC, Beckman Coulter, Inc., and Inguran, LLC (collectively, “XY”) appeal the district court’s dismissal of certain patent-infringement allegations against Trans Ova Genetics, LC. The district court held asserted claims 1–23 of XY’s U.S. Patent No. RE46,559 ineligible under 35 U.S.C. § 101. The district court also held that XY’s patent-infringement allegations with respect to certain claims of U.S. Patent Nos. 6,732,422, 7,723,116, and 8,652,769 were claim-precluded based on a prior lawsuit filed by XY against Trans Ova. We conclude that the asserted claims of the ’559 patent are directed to a patenteligible improvement to a method of sorting particles using flow cytometry technology, not to an abstract idea, and that the district court did not apply the proper legal standard to its claim-preclusion analysis. Accordingly, we reverse the district court’s judgment that the asserted claims of the ’559 patent are ineligible under § 101, vacate the district court’s claim-preclusion judgment, and remand for further proceedings,
Alacritech, Inc. v. Intel Corp. (Precedential)
Alacritech, Inc. appeals the Patent Trial and Appeal Board’s final written decisions holding certain claims of U.S. Patent No. 8,131,880 unpatentable as obvious. We affirm in part, vacate in part, and remand. In particular, we hold that the Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41–43 of the ’880 patent. We therefore vacate the Board’s obviousness determination as to claims 41–43 and remand for further proceedings regarding those claims. We find no reversible error in the Board’s remaining obviousness determinations. Accordingly, we affirm the Board’s decisions in all other respects.