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Guest Post – American Axle Relies Upon Misreading of Old Precedent to Create New Law

Jeffrey A. Lefstin serves as a Professor of Law at the University of California, Hastings College of the Law. Prior to serving as a professor, he clerked for Federal Circuit Judge Raymond C. Clevenger III. Prof. Lefstin holds a Ph.D. in Biochemistry from the University of California San Francisco and a J.D. from Stanford Law School. He has written extensively and testified before Congress concerning the doctrine of patent eligibility.

Though described by the majority as “narrow,” the American Axle v. Neapco panel opinion sets forth two far-reaching expansions in the law of patent eligibility. First, the panel opinion holds that a patentee’s alleged failure to describe how to implement an invention defined by a claim renders the claim ineligible under § 101—without needing to resort to the factual inquiries associated with the written description or enablement requirements of § 112. Second, the panel opinion holds that a claim may be “directed to” an ineligible law of nature in step one of the Mayo/Alice inquiry, even though neither the claim nor the specification recites it directly.

Authority for the first proposition is said to be the “O’Reilly test” for patent eligibility articulated by the Supreme Court in O’Reilly v. Morse in 1854.[1] That case, however, represented a conventional application of the statutory disclosure requirements now lodged in § 112, as I explain in detail below. As authority for the second proposition, the revised panel opinion invokes Neilson v. Harford, the famous case on James Neilson’s hot-blast patent, decided by the Court of Exchequer in 1841. But, again, in seeking to force the American Axle claims into the mold of the Mayo/Alice test,

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Opinions / Panel Activity

Opinion Summary – Bio-Rad Laboratories, Inc. v. 10X Genomics Inc.

On Monday, the Federal Circuit issued its opinion in Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., a case we have been tracking because it attracted an amicus brief. In the opinion, the panel composed of Judges Newman, O’Malley, and Taranto unanimously affirmed a district court’s judgment of liability for infringement of a patent. The panel, however, also reversed the district court’s construction of asserted claims in two other patents and vacated the judgment of infringement of those patents. Finally, the panel also vacated the district court’s grant of a permanent injunction, but only with respect to certain product lines. Here is a summary of the opinion.

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Featured / Opinions / Panel Activity

Guest Post – Patent Eligibility from Mayo to American Axle and Beyond

Paul R. Michel served as a Circuit Judge of the U.S. Court of Appeals for the Federal Circuit from 1988 to 2010, including a six year tenure as Chief Judge from 2004 to 2010. Here, he reflects on judicial treatment of patent eligibility law—from the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. in 2012 through Friday’s set of opinions in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.

The law of patent eligibility has been a hopeless mess ever since the Mayo decision upended three decades of stable and predictable law described in Diehr in 1981.  

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Panel Activity

Update on Important Panel Activity

Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight five dispositions, two new cases, two cases with new briefing, and one upcoming oral argument. Here are the details.

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Opinions / Panel Activity

Opinion Summary – Immunex Corp. v. Sandoz Inc.

Recently the Federal Circuit issued its opinion in Immunex Corp. v. Sandoz Inc., a case we have been tracking because it attracted two amicus briefs. In the opinion, Judges O’Malley and Chen affirm the lower court’s ruling that Sandoz failed to prove that the patents-in-suit were invalid. Judge Reyna filed a dissenting opinion. Here is a summary of the opinion and dissent.

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Panel Activity

Update on Important Panel Activity

Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these patent cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight one disposition, one new case, two recent oral arguments, and one upcoming oral argument.

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Panel Activity

Opinion Summary – Caquelin v. United States

Recently the Federal Circuit issued its opinion in Caquelin v. United States, a case we have been tracking because it attracted three amicus briefs. In the opinion, a Federal Circuit panel including Judges Prost, Linn, and Taranto unanimously affirmed a lower court’s ruling that a Notice of Interim Trail Use (NITU) amounted to a taking of private property. Here is a summary of the opinion.

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Panel Activity

Update on Important Panel Activity

Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these patent cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight two dispositions, one new case, three recent oral arguments, and two upcoming oral arguments.

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Panel Activity

Update on Important Panel Activity

About once a month we provide an update on activity in important patent cases. In particular, we keep track of patent cases pending before panels of the Federal Circuit, where the cases involve at least one amicus brief. We also keep track of non-patent cases that attract amicus briefs, but only once those cases have been scheduled for oral argument. Finally, we also highlight panel cases we find important. You can find all of these cases in the “Other Cases” section of our blog. Today, with respect to these cases, we highlight two patent cases with new briefing, an argument recap in the only such case argued in April, and three upcoming oral arguments in these cases. Here are the details.

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Panel Activity

Update on Important Panel Activity

About once a month we provide an update on activity in patent cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these patent cases in the “Other Cases” section of our blog. There we also highlight non-patent cases that attract amicus briefs, but only once those cases have been scheduled for oral argument. Today, with respect to these cases we highlight three dispositions, four recent oral arguments, and one upcoming oral argument.

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