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. 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,