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American Axle & Manufacturing, Inc. v. Neapco Holdings LLC

United States Court of Appeals, Federal Circuit

October 3, 2019

AMERICAN AXLE & MANUFACTURING, INC., Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, Defendants-Appellees

          Appeal from the United States District Court for the District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge Leonard P. Stark.

          James Richard Nuttall, Steptoe & Johnson, LLP, Chicago, IL, argued for plaintiff-appellant. Also represented by John Lloyd Abramic, Katherine H. Johnson, Robert Kappers.

          Dennis J. Abdelnour, Honigman LLP, Chicago, IL, argued for defendants-appellees. Also represented by J. Michael Huget, Sarah E. Waidelich, Ann Arbor, MI.

          Scott 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.

          Before Dyk, Moore, and Taranto, Circuit Judges.

          OPINION

          Dyk Circuit Judge.

         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").[1] 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 therefore affirm.

         Background

         I

         The '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.

         One 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.

         Other 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.

         Two 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).

         The 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 claims recite:

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.

         According 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.

         AAM 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.

         II

         AAM 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.

         The 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 (2012)).

         AAM 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).

         Discussion

         Section 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).

         Our 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).

         I

         To 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).[2] 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.

         The 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 ...


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