from the United States District Court for the District of
Delaware in No. 1:15-cv-01168-LPS, Chief Judge Leonard P.
Richard Nuttall, Steptoe & Johnson, LLP, Chicago, IL,
argued for plaintiff-appellant. Also represented by John
Lloyd Abramic, Katherine H. Johnson, Robert Kappers.
J. Abdelnour, Honigman LLP, Chicago, IL, argued for
defendants-appellees. Also represented by J. Michael Huget,
Sarah E. Waidelich, Ann Arbor, MI.
A. M. Chambers, Porzio, Bromberg & Newman, PC,
Washington, DC, for amici curiae Christopher Frerk-ing,
Christopher Michael Holman, David Lund, Walter Matystik, Adam
Mossoff, Kristen J. Osenga, Michael Risch, Mark F. Schultz,
Ted M. Sichelman, Brenda M. Simon, Jonathan Stroud, David O.
Taylor. Also represented by Matthew Zapadka, Bass, Berry
& Sims, PLC, Washington, DC.
Dyk, Moore, and Taranto, Circuit Judges.
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 agree and
'911 patent generally relates to a method for
manufacturing driveline propeller shafts
("propshafts") with liners that are designed to
"attenuat[e] . . . vibrations transmitted through a
shaft assembly." '911 patent, col. 1, ll. 6-7.
Propshafts are "employed [in automotive vehicles] to
transmit rotary power in a driveline." Id. col.
1, ll. 38- 39. Because these propshafts are typically made of
a "relatively thin-walled steel or aluminum tubing
[they] can be receptive to various driveline excitation
sources." Id. col. 1, ll. 40-42. These
excitation sources, in turn, can cause the propshaft to
vibrate in three modes: bending mode, torsion mode, and shell
mode. Id. col. 1, ll. 42-44. The '911 patent
describes these vibration modes as follows:
Bending mode vibration is a phenomenon wherein energy is
transmitted longitudinally along the shaft and causes the
shaft to bend at one or more locations. Torsion mode
vibration is a phenomenon wherein energy is transmitted
tangentially through the shaft and causes the shaft to twist.
Shell mode vibration is a phenomenon wherein a standing wave
is transmitted circumferentially about the shaft and causes
the cross-section of the shaft to deflect or bend along one
or more axes.
Id. col. 1, ll. 44-52. These vibration modes
correspond to different frequencies. Because such vibrations
cause undesirable noise, "techniques [had, prior to the
'911 patent, ] been employed to attenuate vibrations in
propshafts including the use of weights and liners."
Id. col. 1, ll. 53-54.
prior art method of attenuation involved the use of liners.
Liners are hollow tubes made of a fibrous material (like
cardboard) with outer resilient members that
"fric-tionally engage the inner diameter of the
[propshaft]." Id. col. 6, ll. 56-65. Liners,
like propshafts, vibrate at different frequencies, and
depending on the frequencies at which they vibrate, may damp
the vibration of the propshaft into which they are inserted.
When certain variables related to the liner are changed
(i.e., when the liner is "tuned"), the frequencies
at which that liner vibrates, and therefore the liner's
ability to damp the vibration of that propshaft, changes.
See, e.g., id. col. 7-8. It was known in
the prior art to alter the mass and stiffness of liners to
alter their frequencies to produce dampening. Indeed, this
was sufficiently well known that prior art patents disclosed
the use of particular materials to achieve dampening.
See, e.g., id. col. 2, lines 5-37.
prior art methods of dampening also existed, including the
use of weights. For example, the '911 patent describes
plugs or weights that are inserted to frictionally engage a
propshaft and act as resistive attenuation means to damp
bending mode vibrations. Id. col. 1, line 53-col. 2,
l. 4. The patent also discloses a prior art damper that is
inserted into a hollow shaft and frictionally engages the
inside of the shaft by using a pair of resilient members.
Id. col. 2, ll. 5-10.
types of attenuation are relevant here: resistive attenuation
and reactive attenuation. "[R]esistive attenuation of
vibration refers to a vibration attenuation means that
deforms as vibration energy is transmitted through it . . .
so that the vibration attenuation means absorbs . . . the
vibration energy." Id. col. 1, ll. 61-65. A
liner that is properly tuned to attenuate shell mode
vibration through resistive attenuation "matches"
the shell mode vibration (i.e., a particular natural
frequency) of the propshaft such that it absorbs the shell
mode vibration of the propshaft. J.A. 2000-02.
"[R]eactive attenuation of vibration refers to a
mechanism that can oscillate in opposition to the vibration
energy [of the propshaft] to thereby 'cancel out' a
portion of the vibration energy." '911 patent, col.
2, ll. 15-18. Thus, to design a liner to perform reactive
attenuation of a bending mode vibration "the liner
frequency must match the propshaft frequency and involve
translation of the liner to effectively couple with the
propshaft bending mode." AAM Op. Br. 6 (citing J.A.
2076-77, 4036-37, 5218).
district court treated independent claims 1 and 22 of the
'911 patent as representative of the asserted claims
(claims 1-6, 12, 13, 19-24, 26, 27, 31, 34-36). Those two
1. A method for manufacturing a shaft assembly of a driveline
system, the driveline system further including a first
driveline component and a second driveline component, the
shaft assembly being adapted to transmit torque between the
first driveline component and the second driveline component,
the method comprising:
providing a hollow shaft member;
tuning at least one liner to attenuate at least two types of
vibration transmitted through the shaft member; and
positioning the at least one liner within the shaft member
such that the at least one liner is configured to damp shell
mode vibrations in the shaft member by an amount that is
greater than or equal to about 2%, and the at least one liner
is also configured to damp bending mode vibrations in the
shaft member, the at least one liner being tuned to within
about ±20% of a bending mode natural frequency of the
shaft assembly as installed in the driveline system.
* * *
22. A method for manufacturing a shaft assembly of a
driveline system, the driveline system further including a
first driveline component and a second driveline component,
the shaft assembly being adapted to transmit torque between
the first driveline component and the second driveline
component, the method comprising:
providing a hollow shaft member;
tuning a mass and a stiffness of at least one liner, and
inserting the at least one liner into the shaft member;
wherein the at least one liner is a tuned resistive absorber
for attenuating shell mode vibrations and wherein the at
least one liner is a tuned reactive absorber for attenuating
bending mode vibrations.
'911 patent, col. 10, ll. 10-27; id. col. 11,
ll. 24-36 (emphases added). The district court construed the
term tuning to mean "controlling the mass and stiffness
of at least one liner to configure the liner to match the
relevant frequency or frequencies." J.A. 15. No party
contests the district court's construction on appeal.
to the '911 patent's specification, prior art liners,
weights, and dampers that were designed to individually
attenuate each of the three propshaft vibration
modes-bending, shell, and torsion-already existed. '911
patent, col. 1, l. 53-col. 2, l. 38. But these prior art
damping methods were assertedly not suitable for attenuating
two vibration modes simultaneously. See id. Thus,
the patent identified "a need in the art for an improved
method for damping various types of vibrations in a hollow
shaft" that "facilitates the damping of shell mode
vibration as well as the damping of bending mode
vibration" simultaneously. Id. col. 2, ll.
39-43. AAM argues that the inventive concept to which these
claims are directed is the tuning of a liner in order to
produce frequencies that dampen both the shell mode and
bending mode vibrations simultaneously.
urges both that it "conceiv[ed] of the novel and
unconventional concept of 'tuning' a liner," and
that it conceived of a tuned liner that "unlike previous
dampers and absorbers . . . [can] dampen multiple types of
vibration" simultaneously. AAM Op. Br. 13. AAM explains
that "particular liners that are specifically tuned to
match and damp multiple vibration modes and are utilized to
manufacture improved propshafts . . . w[ere] entirely new and
far from well-understood" at the time of the '911
patent. AAM Op. Br. 27. Neither the claims nor the
specification describes how to achieve such tuning. The
specification also discloses a solitary example describing
the structure of a tuned liner, but does not discuss the
process by which that liner was tuned. '911 patent, col.
8, ll. 4-23.
sued Neapco on December 18, 2015, alleging infringement of
the '911 patent. The parties filed cross-motions for
summary judgment as to patent eligibility under § 101.
On February 27, 2018, the district court granted Neapco's
motion for summary judgment, and denied AAM's
cross-motion, holding that the asserted claims of the
'911 patent were invalid because they claim ineligible
subject matter under § 101.
district court concluded that "the Asserted Claims as a
whole are directed to laws of nature: Hooke's law and
friction damping." J.A. 10. The district court held that
the claims' direction to tune a liner to attenuate to
different vibration modes amounted to merely
"instruct[ing] one to apply Hooke's law to achieve
the desired result of attenuating certain vibration modes and
frequencies" without "provid[ing] [a] particular
means of how to craft the liner and propshaft in order to do
so." J.A. 17. Hooke's law is an equation that
describes the relationship between an object's mass, its
stiffness, and the frequency at which the object vibrates.
Friction damping is damping that "occur[s] due to the
resistive friction and interaction of two surfaces that press
against each other as a source of energy dissipation."
J.A. 1604. Because the district court determined that the
claimed "additional steps consist of well-understood,
routine, conventional activity already engaged in by the
scientific community . . . and those steps, when viewed as a
whole, add nothing significant beyond the sum of their parts
taken separately," it concluded that the claims were not
patent eligible. J.A. 16 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79-80
appeals. We have jurisdiction under 28 U.S.C. § 1291. We
review a district court's grant of summary judgement de
novo, applying the same test on review that the district
court applied. Summary judgment is appropriate where
"there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The issue of patent eligibility under
§ 101 is a question of law, reviewed de novo. In re
BRCA1- and BRCA2- Based Hereditary Cancer Test Patent
Litig., 774 F.3d 755, 759 (Fed. Cir. 2014). "While
patent eligibility is ultimately a question of law," the
underlying issue of "[w]hether something is
well-understood, routine, and conventional to a skilled
artisan at the time of the patent is a factual
determination." Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
101 provides that "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof" may be eligible to obtain a patent.
35 U.S.C. § 101. But the Supreme Court has long
recognized that § 101 "contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Ass'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013) (brackets omitted) (quoting Mayo,
566 U.S. at 70). The Supreme Court has stated that
"without this exception, there would be considerable
danger that the grant of patents would 'tie up' the
use of such tools and thereby 'inhibit future innovation
premised upon them.'" Id. (quoting
Mayo, 566 U.S. at 73).
analysis of § 101 follows the Supreme Court's
two-step test established in Mayo and Alice
Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208
(2014). At step one of the Mayo/Alice test, we ask
whether the claims are directed to a law of nature, natural
phenomenon, or abstract idea. Alice, 573 U.S. at 217
(citing Mayo, 566 U.S. at 77). If the claims are so
directed, we then ask whether the claims embody some
"inventive concept"-i.e., whether the claims
contain "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the ineligible
concept itself.'" Id. at 217-18 (brackets
omitted) (quoting Mayo, 566 U.S. at 72-73).
determine what the claims are "directed to" at step
one, we look to the "focus of the claimed advance."
See, e.g., Trading Techs Int'l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). There is no legal
principle that a claim to a method of manufacturing cannot be
directed to a natural law, nor are there any cases saying so.
The '911 patent discloses a method of manufacturing a
driveline propshaft containing a liner designed such that its
frequencies attenuate two modes of vibration simultaneously.
claims are directed to tuning liners-i.e., "controlling
a mass and stiffness of at least one liner to configure the
liner to match the relevant frequency or frequencies."
J.A. 15. As is clear from the specification itself, most
aspects of the '911 patent were well known in the art. It
was known that driveline propshafts were prone to bending,
shell, and torsion mode vibrations. '911 patent, col. 1,
ll. 38-52. It was known that shell mode vibrations could be
damped by resistive attenuation and that bending mode
vibrations could be damped by reactive attenuation.
Id. col. 1, l. 53-col. 2, l. 38. It was also known
that a liner or weight could be designed specifically to have
a frequency that would allow it to function as either a
resistive attenuation means or as a reactive attenuation
means. Id. AAM does not ...