American Axle & Manufacturing, Inc. v. Neapco Holdings LLC et al
Filing
219
MEMORANDUM OPINION re pending motions. Signed by Judge Leonard P. Stark on 2/27/18. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AMERICAN AXLE & MANUFACTURING,
INC.,
Plaintiff,
v.
C.A. No. 15-1168-LPS
NEAPCO HOLDINGS LLC and NEAPCO
DRIVELINES LLC,
Defendants.
John W. Shaw, Jeffrey T. Castellano, and Andrew E. Russell, SHAW KELLER LLP,
Wilmington, DE
James R. Nuttall, Katherine H. Johnson, Randal S. Alexander, Robert F. Kappers, and John L.
Abramic, STEPTOE & JOHNSON LLP, Chicago, IL
Boyd Cloern, STEPTOE & JOHNSON LLP, Washington, DC
Attorneys for Plaintiff.
Melanie K. Sharp and Robert M. Vrana, YOUNG CONAWAY STARGATT & TAYLOR, LLP,
Wilmington, DE
J. Michael Huget and Brian J. Arnold, HONIGMAN MILLER SCHWARTZ AND COHN LLP,
Chicago, IL
Sarah E. Waidelich, HONIGMAN MILLER SCHWARTZ AND COHN LLP, Ann Arbor, MI
Attorneys for Defendants.
MEMORANDUM OPINION
February 27, 2018
Wilmington, Delaware
-r~.(~ .
~U.S.
District Judge:
Pending before the Court in this patent infringement action are the following motions:
(i)
Plaintiff American Axle & Manufacturing, Inc.' s ("AAM" or "Plaintiff') Motion
for Summary Judgment of Infringement (D.I. 155; see also D.I. 206);
(ii)
AAM's Motion for Summary Judgment ofNo Invalidity Pursuant to 35 U.S.C.
§§ 101 and 102 (as to the Laskey Reference) (D.I. 159; see also D.I. 206);
(iii)
AAM's Motion to Exclude Portions of the Testimony ofNeapco's Technical
Expert, Steven Becker, and Neapco's Damages Expert, Michael Chase (D.l. 157; see also D.I.
206);
(iv)
Defendants Neapco Holdings LLC and Neapco Drivelines LLC's (collectively;
"Neapco" or "Defendants") Motion for Summary Judgment oflnvalidity and/or NonInfringement (D.I. 149);
(v)
Neapco's Supplemental Motion for Summary Judgment oflnvalidity and/or Non-
Infringement as to the New Claims (D.I. 207); and
(vi)
I.
Neapco's Motion to Preclude Certain Expert Testimony and Evidence (D.I. 208).
BACKGROUND
AAM filed suit against Neapco on December 18, 2015, alleging infringement of U.S.
Patent Nos. 7,774,911 (the '"911 patent"), 8,176,613 (the "'613 patent"), and 8,528,180 (the
"'180 patent"). (See D.I. 1) The pending motions are principally (if not entirely) addressed to
the '911 patent.
The '911 patent "generally relates to shaft assemblies for transmitting rotary power in a
driveline and more particularly to a method for attenuating driveline vibrations transmitted
1
through a shaft assembly." ('911 patent col. 1:4-7) The reason for attenuating such vibrations is
to reduce the tonal noise that can be heard by occupants in the vehicle as a result of the
vibrations. (See id. col. 1:8-23) "Modem automotive propshafts are commonly formed of
relatively thin-walled steel or aluminum tubing and as such, can be receptive to various driveline
excitation sources," which "can typically cause the propshaft to vibrate in a bending (lateral)
mode, a torsion mode and a shell mode." (Id. col. 1:39-44) Several techniques existed in the
prior art "to attenuate vibrations in propshafts including the use of weights and liners." (Id. col.
1:53-54) However, many of the prior art liners only attenuate shell mode vibrations and not also
bending or torsion mode vibrations. (See id. col. 2:34-38) The '911 patent purports to provide
"an improved method for damping various types of vibrations in a hollow shaft," which
facilitates the damping of shell niode vibration as well as bending mode vibration and/or torsion
mode vibration. (Id. col. 2:40-43)
On April 7, 2017, the Court issued its Claim Construction Opinion (D.I. 113), which
found certain claims of the '911 patent indefinite.
On Augustl 1, 2017, the parties filed motions with respect to the claims that remained
asserted after the Court's Claim Construction Opinion. In particular, the motions were directed
to '911 patent claims 22-24, 26, 27, 31, and 34-36 (the "Original Claims"). (D.I. 149, 155, 157,
159) The parties completed briefing on their initial motions on September 15, 2017. In the meantime, on September 6, 201 7, the Court granted AAM' s motion for
reconsideration of the Claim Construction Opinion, finding that new evidence demonstrated that
Defendants had failed to prove that any of the claims of the '911 patent were indefinite. (D.I.
180) The Court then ordered the parties to submit supplemental briefing to address how the
2
pending motions might apply to the claims that had been initially invalidated as indefinite, but
were now newly-revived in the case. In particular, the supplemental briefing relates to claims 16, 12, 13, and 19-21 of the '911 patent (the "New Claims,'' and collectively with the Original
Claims, the "Asserted Claims"). (D.I. 188) The parties submitted supplemental briefs and
motions on December 1, 2017 and responsive briefs on December 18, 2017.
Collectively, the parties filed a total of 287 pages of briefing in relation ~o their many
motions. The Court heard oral argument on January 18, 2018. (D.I. 217 "("Tr."))
Independent claim 22 is representative of the Original Claims and reads:
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.
Independent claim 1 is representative of the New Claims and reads:
A method for manufacturing a shaft assembly of a driveline
system, the driveline system further including a first drivel!ne
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:
3
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.
II.
LEGAL STANDARDS
Under Rule 56(a) of the Federal Rules of Civil Procedure, "[t]he court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law." The moving party bears the burden of
demonstrating the absence of a genuine issue of material fact. See Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585-86 (1986). An assertion that a fact cannot be - or,
alternatively, is - genuinely disputed must be supported either by "citing to particular parts of
materials in the record, including depositions, documents, electronically stored information,
affidavits or declarations, stipulations (including those made for purposes of the motion only),
admissions, interrogatory answers, or other materials," or by "showing that the materials cited do
not establish the absence or presence of a genuine dispute, or that an adverse party cannot
produce admissible evidence to support the fact." Fed. R. Civ. P. 56(c)(l)(A) & (B). If the
moving party has carried its burden, the nonmovant must then "come forward with specific facts
showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation
marks omitted). The Court will "draw all reasonable inferences in favor of the nonmoving party,
4
and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson
Plumbirzg Prods., Inc., 530 U.S. 133, 150 (2000).
To defeat a motion for summary judgment, the nonmoving party must "do more than
simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475
U.S. at 586; see also Podobnik v. U.S. Postal Serv., 409 F.3d 584, 594 (3d Cir. 2005) (stating
party opposing summary judgment "must present more than just bare assertions, conclusory
allegations or suspicions to show the existence of a genuine issue") (internal quotation marks
omitted). The "mere existence of some alleged factual dispute between the parties will not defeat
an otherwise properly supported motion for summary judgment;" a factual dispute is genuine
only where "the evidence is such that a reasonable jury could return a verdict for the nonmoving
party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). "If the evidence is merely
colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50
.(internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (stating
entry of summary judgment is mandated "against a party who fails to make a showing sufficient
to establish the existence of an element essential to that party's case, and on which that party will
bear the burden of proof at trial"). Thus, the "mere existence of a scintilla of evidence" in
support of the nonmoving party's position is insufficient to defeat a motion for summary
judgment; there must be "evidence on which the jury could reasonably find" for the nonmoving
party. Anderson, 477 U.S. at 252.
III.
DISCUSSION
As explained below, the Court has determined that the Asserted Claims are not directed
to patentable subject matter. Therefore, the Court will rule only on the motions implicating 35
5
U.S.C. § 101. The Court will deny as moot all other motions that address only the '911 patent the motions relating to infringement and invalidity of the Asserted.Claims of the '911 patentand will defer ruling on the remaining motions until after conferring with the parties on how the
case should now proceed. 1
A.
Section 101: Applicable Law
The parties have filed cross-motions for summary judgment on the issue of patent
eligibility under 35 U.S.C. § 101. (See D.I. 149, 159) The Court will address both motions
together.
Under 35 U.S.C. § 101, "[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title." There are
three exceptions to § 101 's broad patent-eligibility principles: "laws of nature, physical
phenomena, and abstract ideas." Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). "Whether
a claim recites patent eligible subject matter is a question of law which may contain disputes over
underlying facts." Berkheimer v. HP Inc.,_ F.3d _ , 2018 WL 774096, at *6 (Fed. Cir. Feb.
8, 2018).
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), the Supreme Court set out a two-step "framework for distinguishing patents that claim
1
At the hearing, N eapco advised the Court they did not think the Court would need to
resolve infringement issues if it determined the patent is not eligible for patentability. (See Tr. at
54) While AAM stated it preferred the Court to rule on all the issues before it, AAM recognized
that the Court could exercise its discretion on this matter. (See id. at 74) It appears that the only
motion that may arguably remain ripe is AAM's motion to preclude Neapco's damages expert,
Mr. Chase. (D.I. 157)
6
laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355
(2014). First, courts must determine if the claims at issue are directed to a patent-ineligible
concept ("step one"). See id. If so, the next step is to look for an '"inventive concept' - i.e., 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' ("step two"). Id. The two
steps are "plainly related" and "involve overlapping scrutiny of the content of the claims." Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
At step one, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added); see also Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (stating first step "calls
upon us to look at the 'focus of the claimed advance over the prior art' to determine ifthe claim's
'character as a whole' is directed to excluded subject matter").
Courts should not "oversimplif[y]" key inventive concepts or "downplay" an invention's
benefits in conducting a step one analysis. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337-38 (Fed. Cir. 2016); see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. Sept. 13, 2016) ("[C]ourts 'must be careful to avoid oversimplifying the claims'
by looking at them generally and failing to account for the specific requirements
~fthe
claims.")
(quoting In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). "Whether
at step one or step two of the Alice test, in determining the patentability of a method, a court must
look to the claims as an ordered combination, without ignoring the requirements of the individual
7
steps." McRO, 837 F.3d at 1313.
At step two, courts must "look to both the claim as a whole and the individual claim
elements to determine 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 1312 (internal brackets and quotation marks omitted). The
"standard" step two inquiry includes consideration of whether claim elements "simply recite
'well-understood, routine, conventional activit[ies]. "' Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341,
13~0
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359).
"Simply appending conventional steps, specified at a high level of generality, [is] not enough to
supply an inventive concept." Alice, 134 S. Ct. at 2357 (internal quotation marks omitted)
(emphasis in original).
However, "[t]he inventive concept inquiry requires more than recognizing that each claim
element, by itself, was known in the art." Bascom, 827 F.3d at 1350. In Bascom, the Federal
Circuit held that "the limitations of the claims, taken individually, recite generic computer,
·network and Internet components, none of which is inventive by itself," but nonetheless
determined that an ordered combination of these limitations was patent-eligible under step two.
Id. at 1349. The Federal Circuit has looked to the claims as well as the specification in
performing the "inventive concept" inquiry. See Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) ("[N]either the claim nor the specification reveals any
concrete way of employing a customized user interface.").
The Federal Circuit recently elaborated on the step two standard, stating that "[t]he
question of whether a claim elem.ent or combination of elements is_ well-understood, routine and
8
conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this
one, that is pertinent to the invalidity conclusion must be proven by clear and convincing ·
evidence." Berkheimer, 201_8 WL 774096, at *5; see also Aatrix Software, Inc. v. Green Shades
Software, Inc.,_ F.3d _ , 2018 WL 843288, at *5 (Fed. Cir. Feb. 14, 2018) ("While the
ultimate determination of eligibility under § 101 is a question of law, like many legal questions,
there can be subsidiary fact questions which must be resolved en route to the ultimate legal
determination."); Automated Tracking Sols., LLC v. Coca-Cola Co.,_ Fed. Appx. _ , 2018
WL 935455, at *5 (Fed. Cir. Feb. 16, 2018) ("We have held that 'whether a claim element or
combination of elements is well-understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact."') (quoting Berkheimer, 2018 WL 774096, at *5). "Whether a
particular technology is well-understood, routine, and conventional goes beyond what was simply
known in the prior art. The mere fact that something is disclosed in a piece of prior art, for
example, does not mean it was well-understood, routine, and conventional." Berkheimer, 2018
WL 774096, at *6. "When there is no genuine issue of material fact regarding whether the claim
element or claimed combination is well-understood, routine, [and] conventional to a skilled
artisan in the relevant field, this issue can be decided on summary judgment as a matter of law."
Id.
B.
Step
On~
With respect to step one, the issue presented is whether the Asserted Claims as a whole
are directed to laws of nature: Hooke's law and friction damping. AAM does not dispute that
Hooke's law is the linear relationship between force F and displacement x of a spring with
stiffness k, specifically F=kx. (See D.I. 160 at 6; D.I. 160~4 at 'if 389) AAM also does not dispute
9
that the frequency is affected by a change in mass m or stiffness k. (See D.I. 150 at 29-30; D.I.
151 at 496 (inventor Sun testifying frequency is changed by adjusting mass and stiffness); D.I.
153 at 142 (AAM executive director testifying, "the natural frequency is strictly a function of
stiffness and mass"); D.I. 160 at 6) Furthermore, AAM's expert stated that friction damping, or
the reduction in friction, "is a property of physics experienced by any two surfaces in contact."
(D.I. 172 at 6 (quoting D.I. 160-4 at if 396); see also D.I. 150 at 30-31)
Neapco argues, "[t]he Asserted Claims do nothing more than use a prior art liner design
(e.g., cardboard having, for certain embodiments, elastomer winding) and apply (or just
characterize) the physics behind 'tuning' and vibration attenuation or damping." (D.I. 150 at 28)
Therefore, Neapco asserts, in order to "tune" the liner, one merely applies Hooke's law and then
measures the amount of damping. (See D.I. 150 at 29; Tr. at 53)
The Court agrees with Neapco. There is no dispute that adjusting the mass and stiffness
of the 'liner will change the amount of damping of a certain frequency. The claimed methods are·
applications of Hooke's law with the result of friction damping. (See, e.g., D.I. 151 at 496
(inventor Sun testifying that "tuning" is "basic physics"))
AAM' s arguments to the contrary are unavailing. AAM contends that the Asserted
Claims are patent-eligible because they are directed to industrial processes for manufacturing
very large automotive components, rather than any law of nature or natural phenomenon. (See
D.I. 160 at 5; Tr. at 21 (arguing "[m]ethod of manufacturing a prop shaft is not some law of
nature")) But the Asserted Claims do not disclose a method of manufacturing a propshaft;
instead, considered as a whole, they are directed to the mere application of Hooke's law, and they
fail to instruct how to design the tuned liners or manufacture the driveline system to attenuate
10
vibrations. See Elec. Power, 830 F.3d at 1355-56 (discussed further in step two). AAM's other
argument - that the tuned liners in the propshaft make up a complex system with multiple
degrees of freedom, so Hooke's law, which relates to "a very simple spring and mass," does not
apply (see D.I.160 at 6; Tr. at 22)- also fails. There is no genuine dispute of material fact that a
liner with multiple degrees of freedom may be broken down mathematically into multiple, single
degrees of freedom, and Hooke's law can then be applied to each individually. (See, e.g., D.I.
151 at 512 (inventor Sun testifying, "a tunable liner theoretically or mathematically can be
simplified as just single degree[ s] of freedom[] of mass spring systems," and if one breaks down
each of the modes, "they're all a combination of[] single degree[s] of freedom[]"); D.I. 173-1 at
45 (Neapco's expert explaining if one has a multi-degree of freedom system, then "you're going
to be applying Hooke's Law in a couple of axes"))
Looking at the "focus" of the claims and their "character as a whole," Elec. Power, 830
F.3d at 1353, Neapco has met its burden at step one.
C.
Step Two
A claimed method "is not unpatentable simply because it contains a law of nature or a
mathematical algorithm." Diamond v. Diehr, 450 U.S. 175, 187 (1981) (internal quotation marks
omitted). In fact, it is "commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent protection." Id. In the
present case, then, it is necessary to proceed to step two, and consider "what the claim elements
add," and specifically whether they identify an "inventive co~cept." Elec. Power, 830 F.3d at
1353.
In Mayo, 556 U.S. at 72, the claims covered "processes that help doctors who use
11
thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage
level is too low or.too high" by "describing the relationships between the concentration in the
blood of certain thiopurine metabolites and the likelihood that the drug dosage will be ineffective
or induce harmful side-effects." The Supreme Court held that the claims there were not patenteligible because they "inform a relevant audience about certain laws of nature; any 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." Id. at 79-80.
As in Mayo, the question before the Court is whether the process claimed in the '911
patent "has additional features that provide practical assurance that the process is more than a
drafting effort designed to monopolize the law of nature itself." Id. at 77. Patentees should not
obtain claims that "simply recite a law of nature and then add the instruction 'apply the law.'"
Id. at 77-78.
Since claims must be considered as a whole, it is important to consider the "ordered
combination" of the method's steps, id. at 79, because "a new combination of steps in a process
may be patentable even though all the constituents of the combination were well known and in
common use before the combination was made," Diehr, 450 U.S. at 188. For example, in Diehr,
even though the "process used a known mathematical equation," the Supreme Court "found the
overall process patent eligible because of the way the additional steps of the process integrated
the equation into the process as a whole." Mayo, 566 U.S. at 80. The combination ofsteps· was
not "obvious, already in use, or purely conventional." Id. at 81; see also Rapid Litig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1050-51 (Fed. Cir. 2016) (finding that new and improved
12
claimed method of freezing and thawing hepatocytes twice, as result of discovered phenomenon
that hepatocytes can survive multiple freeze-thaw cycles, was patent-eligible because,· even
though the individual steps were known in the art, repetition of the process was previously taught
away from)~
However, adding instructions to the claimed method that "add nothing specific to the
laws of nature othe:r than what is well-understood, routine, conventional activity, previously
engaged in by those in the field," is insufficient to constitute an inventive concept. Mayo, 566
U.S. at 82. For example, in Parker v. Flook, 437 U.S. 584, 585-86 (1978), the claim was not
patent-eligible because it simply applied a novel mathematical algorithm to the otherwise wellknown steps of a method in a particular technological environment. See also Mayo, 566 U.S. at
81-82 (discussing Flook). Thus, "[t]he process itself, not merely the mathematical algorithm,
must be new and useful." Flook, 437 U.S. at 591; see also Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) ("For process claims that encompass natural
phenomenon, the process steps are the additional features that must be new and useful.").
"[A]ppending routine, conventional steps to a natural phenomenon, specified at a high level of
generality, is not enough to supply an inventive concept." Ariosa, 788 F.3d at 1378.
Here, as the '911 patent itself explains, the method of manufacturing a shaft assembly of
a driveline system by inserting a liner into the propshaft was well-known in the prior art. 2 (See,
2
Since the hearing on these motions, the Federal Circuit has expressly observed that the
patent eligibility inquiry, which is a question oflaw, may involve issues of fact. See Berkheimer,
2018 WL 774096, at *6. But here the record reveals no genuine disputes of material fact. The
parties here do not dispute that the non-tuning claim limitations are well-understood, routine, and
conventional. Nor is there any genuine dispute of material fact that the tuning limitations are
non-inventive applications of Hooke's law. Thus, "this issue can be decided on summary
judgment as a matter of law." Id.
13
e.g., '911 patent col. 2:23-34) What AAM claims is new- for example, in independent claim 22
- are two claim elements. First is the claim limitation "tuning a mass and a stiffness of at least
one liner," which the Court has construed as "controlling a mass and stiffness of at least ~ne liner
to configure the liner to match a relevant frequency or frequencies." (D .I. 113 at 6) But this
claim limitation is just the application of Hooke's law. 3 AAM argues that this element makes the
claim inventive because "[p]rior to this invention, people used untuned liners and just put them
in the prop shaft in hopes of getting some general damping," whereas the claimed method
requires one "to actually target certain frequencies and modes." (Tr. at 23) One's intentional act
of controlling the characteristics of a liner is not inventive, because, as N eapco explained at oral
argument, controlling the characteristics of a liner "is just an inherent part of any design process."
(Tr. at 33) Since Hooke's law governs the relationship between mass, stiffness, and frequency,
the "tuning" claim limitation does nothing more than suggest that a noise, vibration, and
harshness ("NVH") engineer (D.I. 156 at 5) consider that law of nature when designing propshaft
liners to attenuate driveline vibrations.
AAM argues that a second inventive concept is that the Asserted Claims cover a dualtuned liner to absorb vibrations in both bending and shell modes. (see Tr. at 22-24), as reflected in
the claim limitation "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 ttined reactive absorber for
attenuating bending mode vibrations." In the Court's view, this claim limitation is, instead, the
3
The same result applies to claim 1, which has as a claim limitation "tuning at least one
liner to attenuate at least two types of vibration transmitted through the shaft member," which the
Court construed as "controlling characteristics of at least one liner to configure the liner to match
a relevant frequency or frequencies to reduce at least two types of vibration transmitted through
the shaft member." (D.I. 113 at 5)
14
result that is achieved from performing the method rather than an active step in the method.
In sum, as in Mayo, 566 U.S. at 79-80, the Asserted Claims "inform a. relevant audience
'
'
[NVH engineers] about-certain laws- of nature· [Hooke's law and friction damping]; any
additional steps consist of well-understood, routine, conventional activity already engaged in by
the scientific community [inserting liners with certain characteristics into propshafts to attenuate
driveline vibrations]; and those steps, when viewed as a whole, add nothing significant beyond
the sum of their parts taken separately [having the same, but potentially slightly improved, effect
of attenuating certain frequencies and modes of driveline vibrations]." Hence, as in Mayo, the
Asserted Claims here are not patent-eligible.
The Court further agrees with N eapco that another obstacle to the Asserted Claims being
patent-eligible is that they "are not directed to any specific, discrete liner design but rather a
solution to the problem of attenuating shell and bending mode vibrations generally by applying
physics." (D.I. 172 at 9) Electric Power Group, 830 F.3d at 1530, provides support for this
conclusion. That case involved patents that "describe and claim systems and methods for
performing real-time performance monitoring of an electric power grid by collecting data from
multiple data sources, analyzing the data, and displaying the results." Id. at 1351. The Court
searched for an inventive concept in "how the desired result is achieved," and found that the
claims did not include any requirement for performing the claimed functions with anything other
than "off-the-shelf, conventional ... technology." Id. at 1355. Then, pointing to "an important
common-sense distinction ... between desired results (functions) and particular ways of
achieving (performing) them," the Court explained, "there is a critical difference between
patenting a particular concrete solution to a problem and attempting to patent the abstract idea of
15
a solution to the problem in general." Id. at 1356 (internal quotation marks omitted). "[C]laims,
defining a desirable [] result and not limited to inventive means of achieving the result, fail under
§ 101." Id. at 1351; see also McRO, 837 F.3d at 1314 ("A patent may issue for the means or
method of producing a certain result, or effect, and not for the result or effect produced.")
. (internal quotation marks omitted).
Here, the Asserted _Claims simply instruct one to apply Hooke's law to achieve the
desired result of attenuating certain vibration modes and frequencies. They provide no particular
means of how to craft the liner and propshaft in order to do so. Thus, like the claims in Electric
Power Group, the claims here are invalid under§ 101.
D.
Preemption
AAM further argues that "the Asserted Claims provide no risk of preempting Hooke's
law in its entirety." (D.I. 160 at 7) However, "[w]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they are in.this case,
preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379.
E.
Machine or Transformation Test
AAM also argues that the Asserted Claims are patent-eligible under the machine-ortransformation test. (See D.I. 160 at 9-10) This test provides that a process claim is patenteligible if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing." Bilski v. Kappas, 561 U.S. 593, 600 (2010). To satisfy the
test, the use of a machine "must impose meaningful limits on the claim's scope." In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008). "In other words, the machine must play a significant part in
permitting the claimed method to be performed." Cy herSource Corp. v. Retail Decision, Inc.,
16
654 F.3d 1366, 1375 (Fed. Cir. 2011) (internal quotation marks omitted).
Here, because the Asserted Claims are nothing more than applying a law of nature to a
conventional method to achieve an abstract solution to a problem, the Asserted Claims fail to
provide any meaningful limits on the scope of the claim. The machine or transformation test
does not help AAM.
IV.
CONCLUSION
The Asserted Claims of the '911 patent are invalid under § 101, as they are directed to
nonpatentable subject matter. Thus, the Court will grant Neapco's motion for summary
judgment with respect to§ 101 and will deny AAM's cross-motion on the same issue. The other
motions-with the exception of AAM's motion directed to striking testimony from Neapco's
damages expert-will be denied as moot. An appropriate Order follows.
17
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