Transcript
From Alice to Axle: IP Uncertainty for the Innovation Economy.
The following is a computer-generated transcript from the Patently Strategic Podcast. The results aren't always perfect, but we will continue working on improving the quality of the automation.
WEBVTT
00:05.290 --> 00:08.694
Good day, and welcome to the Patently Strategic Podcast, where we discuss all
00:08.732 --> 00:11.734
things at the intersection of business, technology, and patents.
00:11.842 --> 00:15.778
This podcast is a monthly discussion amongst experts in the field of patenting.
00:15.874 --> 00:19.078
It is for inventors, founders, founders, and IP professionals alike,
00:19.174 --> 00:22.582
established or aspiring. In today's episode, we're discussing
00:22.606 --> 00:26.230
a recent court decision that judges have said could threaten most every invention
00:26.290 --> 00:29.886
for which a patent has ever been granted, turning the patent system into a
00:29.888 --> 00:33.754
litigation gamble. In this month's episode, Dr. David Jackrel,
00:33.802 --> 00:37.558
president of Jacques Consulting, leads a discussion into American Axle's
00:37.594 --> 00:41.362
recent bid to have the Supreme Court overturned a lower court decision
00:41.446 --> 00:45.130
that invalidated the company's patent in a closely followed legal battle
00:45.190 --> 00:49.186
with rival Nico Holdings. This case offered a much anticipated
00:49.258 --> 00:52.414
opportunity to more broadly clarify patent eligibility
00:52.522 --> 00:56.010
in a time where many believe that court precedent has undermined the US.
00:56.060 --> 00:59.998
Patent process and, in the words of retired US. Court of Appeals Chief Judge Paul
01:00.034 --> 01:03.618
Michel, confused and distorted the law of eligibility, making it
01:03.644 --> 01:06.642
an illogical, unpredictable, chaotic mess.
01:06.776 --> 01:10.206
Critics of these rulings in the resulting present state of IP law,
01:10.268 --> 01:13.326
claim that the confusion and inconsistency has led to course
01:13.388 --> 01:17.442
canceling many patents that should be protected. The Solicitor General has
01:17.456 --> 01:20.910
stated the problems arising from the application of Section 101 have
01:20.960 --> 01:24.558
made it difficult for inventors, businesses, and other patent stakeholders to
01:24.584 --> 01:28.270
reliably and predictably determine what subject matter is patent
01:28.330 --> 01:31.530
eligible. Despite cries for help and urges to provide
01:31.580 --> 01:35.158
clarification from multiple presidential administrations, the Solicitor
01:35.194 --> 01:38.458
General, members of Congress, the Federal Circuit Court,
01:38.554 --> 01:42.478
IP bar associations, and the Patent Office, the Supreme Court
01:42.514 --> 01:46.006
refused to hear this case, leaving many inventors and industries
01:46.078 --> 01:49.918
in limbo since, as the USPTO. Spokesperson said after the ruling,
01:50.014 --> 01:53.302
innovation cannot thrive in uncertainty. I want to pause
01:53.326 --> 01:56.970
for just a second and reflect on the fact that these people are using this
01:57.020 --> 02:00.514
language. You typically don't see these kinds of animated responses
02:00.562 --> 02:03.918
and blunt warnings from folks in and around this field. On this
02:03.944 --> 02:07.258
podcast, we err on the side of under sensationalizing, since there's
02:07.294 --> 02:10.842
plenty of the opposite available literally everywhere else you turn.
02:10.976 --> 02:14.458
This issue is a big deal. And these aren't just firmly twisted knickers.
02:14.554 --> 02:17.302
These are serious people using very strong language.
02:17.446 --> 02:21.214
Investing in innovation is a long game, and one that requires some basic
02:21.262 --> 02:25.090
level of predictability and stability around idea protection.
02:25.270 --> 02:28.390
All right, so beyond this being left unresolved by the Supreme Court,
02:28.450 --> 02:31.738
there's also the unfortunate precedent that may now very well seep
02:31.774 --> 02:35.926
into industries once believed to be immune from these subject matter limitations.
02:36.058 --> 02:39.646
Prior to this case, the subject matter eligibility problem was primarily
02:39.718 --> 02:43.246
confined to software and biotech. It was widely understood
02:43.318 --> 02:46.878
that physical products and their manufacturing were implicitly exempt from
02:46.904 --> 02:49.750
being ruled abstract ideas or laws of nature.
02:49.930 --> 02:53.710
What box was just left open? In today's episode.
02:53.770 --> 02:56.742
David and our all star patent panel discussed the case law.
02:56.816 --> 03:00.258
Its implications. How present statute is being conflated in
03:00.284 --> 03:03.798
taking section 101 well beyond its gatekeeping function and
03:03.824 --> 03:07.422
in their analysis of the American Axle patent. Provide some great tips that
03:07.436 --> 03:10.858
may have changed American Axel's present fate and can hopefully improve
03:10.894 --> 03:14.242
your odds of success if approached early enough and intentionally
03:14.326 --> 03:17.962
at the drafting stage. David is joined today by our always exceptional
03:17.986 --> 03:21.726
group of IP expert regulars you know and love, including Dr.
03:21.788 --> 03:25.318
Ashley Slowed, president and director of patent strategy here at Aurora,
03:25.414 --> 03:28.870
kristen Hansen, patent strategist at Aurora and David Cohen,
03:28.930 --> 03:32.238
principal at Cohen Sciences. We'd also like to introduce you
03:32.264 --> 03:35.602
to three new participants making their patently strategic debut
03:35.686 --> 03:39.502
armancobiani, patent agent and former US. Patent examiner
03:39.586 --> 03:43.258
and the two newest members of Team Aurora. Thai Davis, patent strategy
03:43.294 --> 03:46.714
associate, and Dr. Sophia Lee, patent strategy fellow.
03:46.822 --> 03:49.998
Now, before taking you into the thick of this conversation, one that is
03:50.024 --> 03:53.562
especially technical and legal, as we often do, we wanted to
03:53.576 --> 03:57.054
provide a quick primer on a few concepts that could use some extra color and
03:57.092 --> 04:00.502
context for those newer to patenting. This episode builds
04:00.526 --> 04:03.562
on many foundational patent law concepts we've been exploring
04:03.586 --> 04:07.162
in prior episodes, so this will just be a speedy review, but I'll
04:07.186 --> 04:10.422
provide pointers and links in the show notes to the related episodes should you want
04:10.436 --> 04:13.590
to go deeper. Since this episode is largely centered around
04:13.640 --> 04:17.374
the concept of subject matter eligibility, we're first going to talk about rejection
04:17.422 --> 04:21.078
and invalidation gates when patents are examined by the Patent Office
04:21.164 --> 04:24.594
or later litigated in a courtroom, several sections of US.
04:24.692 --> 04:28.054
Statute come into play in determining if the claims in the patent
04:28.102 --> 04:31.350
are eligible, useful, novel, non obvious,
04:31.460 --> 04:34.654
and enabled, or properly described patents
04:34.702 --> 04:37.998
can be rejected or invalidated if one or more of the
04:38.024 --> 04:41.238
claims are determined to be otherwise. Problems fall under
04:41.264 --> 04:45.274
the following sections of US. Code title 35 section
04:45.322 --> 04:49.770
101 patent ineligibility or lack of utility section 102
04:49.880 --> 04:53.242
lack of novelty section 103, the claimed
04:53.266 --> 04:56.898
invention is obvious and or section 112 lack of
04:56.924 --> 05:00.702
adequate description. Today's conversation focuses on sections 101 and
05:00.716 --> 05:03.870
one, one two. We dissect these and relevant case law,
05:03.920 --> 05:07.830
including the referenced Alice decision, in much greater detail in season two,
05:07.880 --> 05:11.406
episode one on software patents, in season two,
05:11.468 --> 05:15.150
episode five on Fortifying life science patents. For now,
05:15.200 --> 05:19.222
though, the important things to note are that section 112 centers around enablement.
05:19.306 --> 05:22.938
We're describing the invention in sufficient detail to allow
05:22.964 --> 05:27.450
it to be practiced by someone skilled in the art without undue experimentation.
05:27.830 --> 05:31.234
You're trading disclosure for exclusivity. That's fundamentally
05:31.282 --> 05:34.830
the deal, so you can't hold back on the details. Section 101
05:34.880 --> 05:38.358
covers eligible subject matter. The Patent Act says that an
05:38.384 --> 05:41.902
inventor can patent any new and useful process, machine,
05:41.986 --> 05:45.754
manufacturer, or composition of matter, or any new and useful improvement
05:45.802 --> 05:49.734
thereof. Historically, this was broadly interpreted. Patents were
05:49.772 --> 05:52.974
rarely rejected or invalidated based on it, while instead
05:53.072 --> 05:56.950
utilizing the other sections to weed out patents undeserving of protection.
05:57.070 --> 06:00.478
More recently, however, this has changed with the court's breathing
06:00.514 --> 06:04.294
judicial exceptions for eligible subject matter into being that don't
06:04.342 --> 06:07.698
exist in written law. These exceptions have become 101
06:07.724 --> 06:10.906
grounds to reject and invalidate claims centered around laws
06:10.918 --> 06:14.698
of nature, natural phenomena, and abstract ideas. The sticky
06:14.734 --> 06:18.018
part is that despite the courts creating these exceptions, they've yet
06:18.044 --> 06:22.062
to provide clarity and objective guidelines or definitions around what these words
06:22.136 --> 06:25.410
actually mean, leaving it up to the lower courts and the Patent Office
06:25.460 --> 06:29.278
to sort through the ambiguity. This episode also focuses on distinctions
06:29.314 --> 06:33.334
between the spec or specification and the claims of the American Axel
06:33.382 --> 06:36.910
application. For a deeper understanding of all of the parts of the patent,
06:36.970 --> 06:40.594
check out season one, episode nine on Patent Anatomy. But in brief,
06:40.642 --> 06:44.026
the specification describes the invention and provides the context
06:44.098 --> 06:47.622
for interpreting the claims. The claims themselves are the heart of
06:47.636 --> 06:51.102
an application and point out the exact invention boundaries of what the
06:51.116 --> 06:54.730
applicant believes she's entitled to own, specifically what the patent
06:54.790 --> 06:58.182
covers, clearly defining the subject matter for which protection is
06:58.196 --> 07:01.398
sought. And one last acronym to unpack before I send
07:01.424 --> 07:04.714
you off the group often refers to the CAFC.
07:04.822 --> 07:08.622
This is the United States Court of Appeals for the Federal Circuit. This is
07:08.636 --> 07:12.274
the Federal court that hears appeals on business activities, including patent
07:12.322 --> 07:16.114
cases that make their way up from district courts. Much of the case law conversation
07:16.162 --> 07:19.594
will center around majority and dissenting opinions from this court.
07:19.702 --> 07:23.118
And with that, hopefully you're now ready for the deep end. Take it
07:23.144 --> 07:27.030
away, David. The overview of the talk will be
07:27.200 --> 07:31.218
that we'll actually look at the claims first. I wanted to
07:31.364 --> 07:34.940
take a little bit of it. Rather than diving right into the opinion and getting
07:35.870 --> 07:39.706
adulterated by the opinions,
07:39.838 --> 07:43.122
I figured let's look at the claims ourselves, see what we think, talk about that
07:43.136 --> 07:46.902
a little bit. And the question really in this case is,
07:47.096 --> 07:50.334
is this patent directed to a method for
07:50.372 --> 07:53.898
manufacturing a shaft assembly in a driveline system,
07:54.044 --> 07:57.270
or is it really just directed to a natural law, as the
07:57.320 --> 08:00.642
CAFC majority basically says?
08:00.836 --> 08:04.398
At least for one of the things. So we'll talk about the claims, we'll talk
08:04.424 --> 08:07.820
about the court decisions that will dig into the
08:08.690 --> 08:12.322
actual patent, the spec a little bit, some of the dependent claims,
08:12.346 --> 08:15.834
which is kind of interesting. And then we'll spend the rest of the time talking
08:15.872 --> 08:19.074
about the majority and the dissent opinion because there's some
08:19.112 --> 08:22.434
really interesting stuff in there. And the
08:22.472 --> 08:25.606
Supreme Court actually we'll talk about a little earlier, they declined
08:25.618 --> 08:28.470
to give the case. One of the reasons why we're talking about it now.
08:28.580 --> 08:32.770
This is a method for manufacturing a shaft assembly for a driveline
08:32.830 --> 08:36.918
system. It's a shaft of a
08:36.944 --> 08:40.254
propeller or a shaft of a car. You can see here.
08:40.292 --> 08:43.966
So it's a shaft, and there's vibrations in the shaft,
08:44.038 --> 08:47.562
and there's a first driveline component and a
08:47.576 --> 08:51.274
second driveline component, and the shaft transmits torque
08:51.382 --> 08:54.646
between them. So you have this hollow shaft
08:54.718 --> 08:58.510
member, you're providing it. And then the second clause
08:58.570 --> 09:01.954
here is tuning
09:02.122 --> 09:05.902
at least one liner to attenuate at least two types
09:05.986 --> 09:09.774
of vibration transmitted through the shaft member and then they
09:09.812 --> 09:13.234
talk about positioning this liner within the shaft
09:13.282 --> 09:16.974
member. And this is the big difference, I feel like, between claims one
09:17.012 --> 09:20.502
and the other independent claim, which we'll look at. This claim has a
09:20.516 --> 09:23.540
little bit more meat here under the positioning step
09:24.350 --> 09:28.258
it's positioned, but it's positioned such that it's
09:28.354 --> 09:32.326
configured to damp the shell mode vibrations
09:32.458 --> 09:36.510
by an amount greater than or equal to this number and
09:36.560 --> 09:40.650
also it's configured to damp bending mode vibrations
09:42.470 --> 09:45.718
within 20 plus -20% of a vending mode
09:45.754 --> 09:49.678
natural frequency. So when I first looked at this claim
09:49.774 --> 09:53.082
I thought to myself that word tuning is a
09:53.096 --> 09:56.538
bit weird. Someone, of course, one to one is on my
09:56.564 --> 09:59.718
mind as I'm reading it because I know that's a big crux of this
09:59.744 --> 10:03.622
case. So how problematic really is that word tuning?
10:03.766 --> 10:06.978
And when you look at the claim construction this
10:07.004 --> 10:10.230
is a quote from the CAFC opinion, but it's basically that the
10:10.340 --> 10:14.166
district claim used this construction is that
10:14.288 --> 10:18.286
tuning the at least one liner means controlling
10:18.358 --> 10:22.414
characteristics of the at least one liner to configure
10:22.582 --> 10:26.130
the line or to match a relevant frequency or frequency.
10:26.870 --> 10:30.706
So that came from analyzing the specification and neither
10:30.778 --> 10:34.890
party really disagreed with that claim construction.
10:35.390 --> 10:36.800
So keep that in mind,
10:39.210 --> 10:43.162
you might be a little bit vague. And so
10:43.356 --> 10:47.102
when you see tuned, it more or less means configured,
10:47.246 --> 10:50.100
configured to perform these things.
10:50.610 --> 10:54.300
Dave, not having read their spec,
10:55.950 --> 10:59.534
how much did they go into how those characteristics
10:59.582 --> 11:02.894
are defined, controlling characteristics of at least one liner,
11:02.942 --> 11:06.634
or defining what those characteristics are or how they
11:06.672 --> 11:10.798
teach somebody to figure out those characteristics or how to control them? Do they
11:10.824 --> 11:14.038
go into detail about that? Great question. Absolutely.
11:14.184 --> 11:18.480
I have a slide on that because I think it's like very important.
11:19.110 --> 11:22.378
And so, yeah, like slide six or seven or something like that will get back
11:22.404 --> 11:25.630
to us. Hold that thought for a minute. The short
11:25.680 --> 11:29.690
answer is it's a short spec they do describe
11:29.750 --> 11:33.670
it but a big difference
11:33.720 --> 11:37.178
of opinion between the majority and the dissent is how sufficiently
11:37.214 --> 11:40.582
it is described. So it's not an easy thing to answer. I think
11:40.596 --> 11:44.462
we should look at it. Yeah, great question. The second independent
11:44.486 --> 11:47.878
claim 22 has the exact same
11:48.024 --> 11:51.502
preamble providing a hollow staff member in this case,
11:51.636 --> 11:54.974
instead of tuning the liner to attenuate
11:55.022 --> 11:58.426
at least two types, blah blah, blah, it's just tuning a mass
11:58.488 --> 12:02.134
and stiffness of the liner. And then instead
12:02.172 --> 12:05.962
of positioning, it's inserting there's a little bit of a discussion about
12:06.036 --> 12:09.550
are those words really different? And then the wherein clause here
12:09.600 --> 12:12.878
really just says that it's tuned resistive
12:12.914 --> 12:16.402
absorber for attenuating shell mode vibrations. And also
12:16.476 --> 12:20.294
it's tuned reactive absorber for attenuating bending mode vibration.
12:20.402 --> 12:23.974
So they do have the two different vibrations in there. But again
12:24.012 --> 12:27.794
they use that word tuning. And again the district court construed
12:27.842 --> 12:31.318
that tuning essentially to mean controlling. The mass and
12:31.344 --> 12:35.246
stiffness of at least one liner can configure the liner
12:35.318 --> 12:39.790
to match these relevant frequency or frequencies of these vibrations
12:40.170 --> 12:43.030
as basically defined in the specs.
12:44.670 --> 12:48.430
So what happened in court and why are we talking about this?
12:48.600 --> 12:52.810
The district court said claims one and 22 were patent ineligible
12:53.130 --> 12:56.338
under 101 because they related to a
12:56.364 --> 12:59.602
natural law basically and nothing more.
12:59.676 --> 13:03.230
It failed step one of the Alice
13:03.410 --> 13:07.154
101 test and it also failed step two in their opinion.
13:07.322 --> 13:10.498
In October 2019, CAFC took up this case
13:10.524 --> 13:14.494
on appeal and they affirmed both of those decisions. Claim one
13:14.532 --> 13:18.382
and 22, both patented ineligible. Ten months later
13:18.516 --> 13:22.670
they followed it up in July of 2020 with a modified opinion
13:22.730 --> 13:26.702
which changed their mind on claim one. Claim one, they decided
13:26.786 --> 13:30.598
should be remanded to the district Court and
13:30.624 --> 13:34.018
we'll talk about this more, but because it wasn't as clear,
13:34.104 --> 13:37.910
it wasn't as clear as claim 22, there were more elements
13:37.970 --> 13:41.822
in claim One that the CAFC determined
13:41.846 --> 13:45.986
were not sufficiently litigated, sufficiently discussed
13:45.998 --> 13:50.198
and argued in the district court case. So it was remanded
13:50.294 --> 13:54.746
so that they actually take up those considerations
13:54.938 --> 13:59.102
more thoroughly. So what recently,
13:59.186 --> 14:02.918
the big news last month in June is that the Supreme Court declined
14:02.954 --> 14:06.922
to hear this case. So why? What happened there?
14:07.116 --> 14:10.678
President Joe Biden's administration in May urged the
14:10.704 --> 14:13.954
high court to take up this case, saying that American Act was invention was a
14:13.992 --> 14:17.820
classic example of patent eligible industrial process.
14:18.330 --> 14:21.694
So the Federal Circuit decided previously in a six
14:21.732 --> 14:25.138
six deadlock not to re hear the case with all of its judges. In an
14:25.164 --> 14:28.534
on back, the dissenting judges said the panel's decision could
14:28.572 --> 14:32.350
threaten most every invention for which a patent has ever been
14:32.400 --> 14:35.518
granted and that the court's eligibility rulings that turn
14:35.544 --> 14:39.058
the patent system into a litigation gamble. So a lot of strong
14:39.144 --> 14:44.014
language on both sides. You'll see the dissent is
14:44.172 --> 14:47.714
what did they say? Vigorously worded
14:47.762 --> 14:51.000
dissent and I have some good quotes that also share later.
14:52.110 --> 14:55.990
So the dispute left the Federal Circuit bitterly divided and at a loss
14:56.850 --> 15:00.182
and the Supreme Court denied to hear the case. Similarly,
15:00.266 --> 15:03.658
in 2012, all twelve
15:03.744 --> 15:06.994
of the Federal Circuit active judges at the time asked the Supreme Court to hear
15:07.032 --> 15:10.702
another similarly divisive case that was also in the
15:10.716 --> 15:15.014
101 realm. And the court rejected that despite
15:15.062 --> 15:18.922
a recommendation by former President Donald Trump's administration to
15:18.936 --> 15:22.318
back it up. So everyone and
15:22.344 --> 15:25.754
then the Patent and Trademark Office spokesperson
15:25.862 --> 15:30.230
said that the ruling said after the ruling that innovation
15:30.290 --> 15:34.174
cannot thrive in uncertainty and the Patent Office is committed to making
15:34.212 --> 15:37.438
every effort to ensure that the patent system is as clear and consistent as
15:37.464 --> 15:41.242
possible. So it seems like everyone president
15:41.376 --> 15:45.240
and the Federal Circuit and there's even certain
15:46.530 --> 15:50.182
Congress, people in Congress who are on the record as wanting the
15:50.196 --> 15:53.726
Supreme Court to weigh in on some of these things and the Supreme
15:53.738 --> 15:56.698
Court has so far denied and refused to do.
15:56.724 --> 16:00.154
So the only thing we have to go on now is
16:00.192 --> 16:03.586
this CAFC modified opinion from July 2020.
16:03.588 --> 16:07.286
And David, to add to that, as a practitioner
16:07.418 --> 16:10.522
who deals with one on one responses a lot yeah.
16:10.656 --> 16:14.750
You also have two claims that have technically
16:14.810 --> 16:18.622
they have the two things that you're supposed to have to overcome one
16:18.636 --> 16:22.740
on one rejection. They have a practical application or two
16:23.430 --> 16:27.386
dampening making sure something is tuned
16:27.458 --> 16:29.880
in order to carry out something else. Right.
16:30.210 --> 16:33.874
And they are an improvement to what's out there, which is
16:33.912 --> 16:36.480
shown in the specification, I believe. But also,
16:38.550 --> 16:42.046
if there's no art here, no one else has been able to do this
16:42.168 --> 16:45.734
for this field. Right. So you have an improvement to a technical
16:45.782 --> 16:49.118
field. But the thing that makes this little quirky
16:49.154 --> 16:51.634
is it's dealing with a natural law. Hook's, law,
16:51.672 --> 16:54.874
Springs, these are things that people say,
16:54.912 --> 16:57.910
well, that's obvious, but they forget.
16:58.470 --> 17:02.050
You can have a piece of obviousness in a one on one
17:02.220 --> 17:05.818
rejected claim as long as you can still show that
17:05.844 --> 17:09.710
there's practical application, some novelty
17:09.890 --> 17:13.162
and or I guess improvement to a
17:13.176 --> 17:16.726
technical field. So this is one of the first cases where
17:16.908 --> 17:21.182
the standard toolbox that we have of overcoming one on one rejections
17:21.326 --> 17:24.442
cannot be used. And it seems to already be
17:24.456 --> 17:27.874
in the claim, but they don't even want to hear it because
17:27.912 --> 17:30.060
they're like no natural law, natural law.
17:31.410 --> 17:35.350
Your points are almost exactly what the dissent
17:36.210 --> 17:40.140
argues and those are super valid points. And I think,
17:41.430 --> 17:44.842
I actually think that the majority has some valid points and
17:44.856 --> 17:46.560
the descent has some valid points.
17:51.970 --> 17:55.854
It's a tough one. It's like you said, there are additional elements
17:55.902 --> 17:59.246
in the claims. At the same time, if you just
17:59.308 --> 18:02.390
consider claims one and 22 we'll talk about in a minute.
18:02.710 --> 18:05.774
Maybe that's not the best idea. If you just consider those
18:05.812 --> 18:09.566
claims, it is a little vague about what they really need
18:09.688 --> 18:13.842
and almost as because tune goes back to configured,
18:13.926 --> 18:17.678
it's almost functional language. Now you have to go back to the spec and does
18:17.704 --> 18:20.702
the spec really teach someone how to do that?
18:20.836 --> 18:23.738
But then you got to say to yourself, wait a second, is that 112?
18:23.824 --> 18:26.946
Is that 101? Right. Very convoluted.
18:27.078 --> 18:30.938
And I guess I sort of agree that there
18:30.964 --> 18:34.242
are some issues, you know what I mean, with this patent and the claims
18:34.266 --> 18:38.138
and the description and the way that it all comes together. But should it
18:38.164 --> 18:41.534
really have been rejected at all? And should it have been rejected under
18:41.572 --> 18:44.954
101 or invalid? That's my question.
18:45.112 --> 18:46.960
Right. The 101 issue,
18:48.130 --> 18:51.678
if you take a spring and you say that anything to do with spring cannot
18:51.714 --> 18:54.220
be patented, that's slippery slope, right?
18:56.630 --> 19:00.462
I think that's the majority thought there is wait a
19:00.476 --> 19:03.978
minute, it's not just a spring, but what else do we know,
19:04.064 --> 19:07.434
right? And the specification on this case isn't teaching enough
19:07.592 --> 19:11.214
for everyone involved to be comfortable. It was
19:11.312 --> 19:14.802
112 101 issue, right? Or maybe it should have
19:14.816 --> 19:15.380
been.
19:18.450 --> 19:22.140
I see that as a totally valid point. And then I also go back to
19:23.490 --> 19:26.746
thinking about functional language in the claim and
19:26.808 --> 19:30.778
that what does it really mean to tune a liner if
19:30.924 --> 19:35.040
the specification doesn't teach someone really how to do that,
19:35.610 --> 19:38.758
right? Anyway, it's a great point Kristen, excellent points.
19:38.784 --> 19:42.478
And we'll talk more about it and see some quotes from them about a lot
19:42.504 --> 19:46.462
of those points as we get. I just wanted to add something really quick for
19:46.536 --> 19:50.318
examiners, so they're
19:50.354 --> 19:54.986
trained to ignore functional language when it comes to device claims.
19:55.118 --> 19:58.730
So for an examiner they might have not actually given that weight,
19:58.790 --> 20:00.970
that word tuning any weights,
20:01.650 --> 20:04.814
unless the applicant or the inventor provided
20:04.982 --> 20:08.398
support through a
20:08.424 --> 20:11.558
person of ordinary skill in the art, would consider tuning.
20:11.654 --> 20:15.374
Or maybe prior art would provide some teaching of what tuning
20:15.422 --> 20:19.270
would be or how they could construct tuning
20:19.590 --> 20:23.458
from the prior art. Right, I know,
20:23.484 --> 20:26.842
exactly. It's a great point. And yeah, you can
20:26.856 --> 20:31.630
see that the CASC found claim 22 ineligible
20:32.070 --> 20:35.638
in their modified opinion and they said it simply requires the
20:35.664 --> 20:38.702
application of hook's law to tune a prop
20:38.726 --> 20:42.418
shelf liner. So even when they're talking about this natural law,
20:42.504 --> 20:45.900
it goes back to that tuning. That tuning is really key.
20:46.290 --> 20:49.738
However, claim one is remanded and what they said about that as well.
20:49.764 --> 20:53.314
Claim one also requires positioning in addition to tuning. And they saw
20:53.352 --> 20:59.174
that as different than inserting. Positioning evoked
20:59.222 --> 21:02.834
a position, putting it in a particular place rather than just inserting
21:02.882 --> 21:06.026
anywhere, and also may reflect
21:06.098 --> 21:09.290
a broader definition of tuning. And if you go back to the claims,
21:09.350 --> 21:12.838
claim 22, which was found patent ineligible, says tuning a mass
21:12.924 --> 21:16.462
and a stiffness. And David, don't worry, the next slide is
21:16.476 --> 21:19.858
about hook's law. But tuning a mass and a
21:19.884 --> 21:23.674
stiffness, that just evokes hook's law
21:23.772 --> 21:27.610
to people very clearly. But claim one just says tuning,
21:28.110 --> 21:32.402
tuning at least one liner to attenuate at least these two different types of vibrations.
21:32.486 --> 21:35.854
So then you got to go back to specification and this is potentially a
21:35.892 --> 21:39.154
broader definition of tuning that involves not just
21:39.192 --> 21:42.874
the mass and the stiffness, but other things as well. So then it's not as
21:42.912 --> 21:46.666
clear that it's just hooked law, is there kind of thought
21:46.728 --> 21:49.260
process on claim one.
21:50.310 --> 21:54.014
So we get some quotes to give a little more explanation
21:54.062 --> 21:54.840
of that.
21:58.150 --> 22:01.502
There's like one or two paragraphs on step two of the one
22:01.516 --> 22:04.962
to one framework and this is a big problem that Judge Moore
22:04.986 --> 22:08.510
had in the descent. He didn't think enough weight was given to step two.
22:08.620 --> 22:12.738
But they did talk about step two and they said that there's no inventive concept
22:12.774 --> 22:16.418
because the invention was a trial and error application of
22:16.444 --> 22:19.850
hopes law. So some quotes, what is missing from this claim?
22:20.470 --> 22:24.126
This was about 22. The ineligible one is any physical
22:24.198 --> 22:27.734
structure or steps for achieving the claimed result.
22:27.892 --> 22:31.814
And that the real inventive work lies in figuring out how to
22:31.852 --> 22:35.094
design a liner to damp two vibration modes simultaneously.
22:35.142 --> 22:38.618
And no such inventive work is recited in claim 22.
22:38.764 --> 22:43.034
And to go even a step further about the means
22:43.072 --> 22:47.334
plus function stuff, they also clearly considered the specification.
22:47.442 --> 22:50.714
They say the specification describes tuning in terms of the
22:50.752 --> 22:54.158
result achieved, rather than the particular process by
22:54.184 --> 22:57.842
which the result is accomplished. And I'll show the
22:57.856 --> 23:01.718
paragraphs in the next slide or two so you can see
23:01.744 --> 23:05.858
for yourself what the specification actually says and why the
23:05.944 --> 23:09.798
majority opinion says this, whereas the minority
23:09.894 --> 23:13.550
descending opinion says something else. So Judge Morrison descent had three major
23:13.600 --> 23:16.806
issues. One, he said, no, these are not directed
23:16.878 --> 23:21.102
to a natural law. This is a method of manufacturing
23:21.246 --> 23:24.494
a liner for a drive shaft. He also argues that there were
23:24.532 --> 23:28.770
many articulated inventive concepts that should have precluded summary
23:28.830 --> 23:32.286
judgment and that step two was not given sufficient weight.
23:32.478 --> 23:36.546
And then the third one, he argued, was that they were conflating patent eligibility
23:36.618 --> 23:39.446
under 101 with the principles of enablement under 112.
23:39.448 --> 23:42.698
And in his great quote, I feel like, is that
23:42.724 --> 23:46.206
in Judge Moore's view? This is from an article in Judge Moore's
23:46.218 --> 23:50.214
view, the majority found the claims ineligible because the patent
23:50.262 --> 23:53.738
did not teach a skilled artisan how to
23:53.764 --> 23:57.134
tune a liner. So we'll dig
23:57.172 --> 24:00.518
more into each of these things as we go, and we already
24:00.544 --> 24:03.722
talked a little bit about the means plus function. So let me just get
24:03.736 --> 24:07.082
to what we've all been waiting for. What is hooked law?
24:07.276 --> 24:10.742
So everybody might remember if they took physics like in high school,
24:10.876 --> 24:14.958
that Hooke's law is the simple equation here. Force equals
24:15.054 --> 24:19.062
k times x, k is the spring constant and x is the displacement.
24:19.206 --> 24:22.562
So if you have a spring, it has a particular property,
24:22.636 --> 24:26.514
a spring constant. And if you apply a force to it, it will extend
24:26.562 --> 24:29.622
by an amount x. And if you double the force,
24:29.766 --> 24:33.714
for instance by hanging an extra weight on a spring, doubling that force,
24:33.822 --> 24:37.322
then the displacement will extend twice as far so that's a
24:37.336 --> 24:40.574
displacement is just proportional to the force, and that
24:40.612 --> 24:43.660
proportionality constant is the spring constant, k.
24:44.050 --> 24:48.006
In this case, we're talking about frequencies and dampening
24:48.078 --> 24:51.518
vibration frequencies. So this is a little bit of an extension of books law,
24:51.544 --> 24:54.818
if you will. It's an application of books law that if
24:54.844 --> 24:58.166
you have the situation where you have a mass on a spring and you pull
24:58.228 --> 25:01.322
the mass to extend the spring and then let it go, what's going to
25:01.336 --> 25:05.378
happen? It's going to oscillate. It's going to try
25:05.404 --> 25:08.750
to get back to its equilibrium position, but it has some momentum. So it goes
25:08.800 --> 25:11.918
past the equilibrium position and then it'll continue
25:12.004 --> 25:15.806
oscillating back and forth. And since this
25:15.868 --> 25:19.360
sort of an oscillator obeys hook's law,
25:19.690 --> 25:23.006
you can solve the equations for frequency. And you find
25:23.068 --> 25:27.486
that the frequency of such an oscillating system only depends
25:27.558 --> 25:30.734
on the mass and the spring constant. It does
25:30.772 --> 25:35.070
not depend, for instance, on the amplitude of the oscillation.
25:35.250 --> 25:40.406
So due to friction, due to other
25:40.468 --> 25:43.360
losses, air resistance, what have you,
25:45.250 --> 25:48.998
those oscillations will slowly dampen over time and it will stop so
25:49.024 --> 25:53.226
that the amplitude will go down over time, but the frequency
25:53.358 --> 25:57.714
as it's going down stays the same. Similar to the situation of a pendulum.
25:57.762 --> 26:01.540
Right? And so what's interesting about this is that this
26:02.530 --> 26:06.122
invention, this law of nature that
26:06.136 --> 26:10.338
was applied in this way was used to construct the first pocket
26:10.374 --> 26:14.106
boxes in order to get an oscillator
26:14.178 --> 26:17.714
that would be portable. And you could move around
26:17.812 --> 26:21.414
in all different orientations on like a pendulum
26:21.462 --> 26:25.602
or a grandfather clock or a lot of the more elaborate, complicated mechanisms
26:25.626 --> 26:28.866
of the time. Using a little mass on a spring allows
26:28.878 --> 26:32.498
you to make a mobile timepiece, which was like a
26:32.584 --> 26:35.738
huge advance in navigation in
26:35.884 --> 26:40.238
history. And Hook was one of the adventures of those
26:40.264 --> 26:43.514
watches, by the way. It wasn't a linear spring, it was
26:43.552 --> 26:47.742
a spring, a coiled spring. And there are other kinds of mechanisms
26:47.766 --> 26:50.262
in there. It was a little more complicated than just the mass on the spring,
26:50.346 --> 26:53.918
but it was this hook's law. And that's where you see
26:53.944 --> 26:57.834
this mass, you see the stiffness,
26:58.002 --> 27:01.574
the spring constant and the mass. And if you tune those two
27:01.612 --> 27:05.618
things, that's hooked law in
27:05.644 --> 27:08.906
some abstraction. So even though the claims never say
27:08.968 --> 27:12.278
hooked law, tuning a mass and a stiffness of
27:12.304 --> 27:15.554
a liner to tune the frequency of that
27:15.592 --> 27:19.082
liner, this is where District Court originally and
27:19.096 --> 27:23.186
the CASC agreed that it was directed to a natural law
27:23.368 --> 27:26.342
cooked law. Quick question,
27:26.476 --> 27:29.090
David. Absolute for a little bit of clarity.
27:31.330 --> 27:35.330
When you're tuning that liner, they're tuning for your
27:35.380 --> 27:39.150
torsional frequency and also the bending frequency.
27:39.330 --> 27:42.374
Am I interpreting that right? Yeah, that's right.
27:42.412 --> 27:45.820
They do talk about torsion. The claims talk about the
27:46.810 --> 27:49.986
bending mode and also this shell mode,
27:50.118 --> 27:53.582
where the actual this is like a cross section of the right. But the
27:53.596 --> 27:56.714
torsion mode, even though they describe it and everything, it's not one of those two
27:56.752 --> 27:59.894
modes that's claimed yes. So you're trying to find the
27:59.932 --> 28:03.386
optimal point kind of between the two. It's in the tuning. Correct.
28:03.508 --> 28:07.002
You're trying to find the spot where you fix the torso
28:07.086 --> 28:10.814
and the bending. That's a great point. And this is one of the things that
28:10.912 --> 28:14.560
American Axle argued unsuccessfully, is that
28:15.070 --> 28:18.302
tuning to dampen two vibrational modes at
28:18.316 --> 28:22.058
the same time is not so simple and not just
28:22.084 --> 28:25.240
a simple application of folks law. It involves a lot more.
28:25.630 --> 28:29.306
And we'll get to that in a few slides. I know there's a
28:29.308 --> 28:31.850
lot in this case, like I said in the beginning,
28:32.410 --> 28:36.914
hopefully we'll have time to get to that. But that the
28:36.952 --> 28:40.540
District Court, essentially, and the CFC agreed that
28:41.170 --> 28:44.858
even though, sure, American axle may have invented a whole
28:44.884 --> 28:48.314
bunch of things to tune these liners in this way,
28:48.352 --> 28:51.450
using finite element modeling, et cetera, et cetera.
28:51.630 --> 28:55.202
That was not in the claim, and it's not even in
28:55.216 --> 28:58.046
the spec. And I think that's a huge problem.
28:58.108 --> 29:01.142
Actually, the word finite element modeling doesn't even show up in the
29:01.156 --> 29:05.642
spec. The spec is very short, and it does
29:05.836 --> 29:10.970
kind of good segue. It does describe this
29:11.020 --> 29:14.474
liner as a physical element. It has
29:14.512 --> 29:18.558
a lot like Kristen was saying, it's a lot of these practical applications
29:18.594 --> 29:22.274
and things that we look for to get around 101. So it's got
29:22.312 --> 29:24.386
the physical element, this liner 204,
29:24.388 --> 29:27.702
and it describes these bending modes,
29:27.786 --> 29:31.506
or vibration mode, bending mode, shell mode, torsion mode,
29:31.638 --> 29:35.190
right? And so it goes into that. It goes even further,
29:35.250 --> 29:39.038
and it says that the characteristics of this liner can
29:39.064 --> 29:43.154
be controlled to tune its stamping properties in these particular
29:43.252 --> 29:46.818
modes. For instance, they talk about mass, length,
29:46.914 --> 29:50.550
diameter of the liner, and they describe
29:50.610 --> 29:54.510
this liner structural features of this liner. They say it has a resilient
29:54.570 --> 29:58.470
member. The resilient member can have a helix angle and a pitch.
29:58.590 --> 30:02.080
There are other structural features to this
30:03.190 --> 30:06.806
liner. And then they give you a particular example,
30:06.988 --> 30:10.370
a particular quantitative example. Here's a drive line
30:10.420 --> 30:13.938
that has this diameter, wall thickness,
30:14.034 --> 30:17.186
length, etc. And here's a liner that works in this situation.
30:17.368 --> 30:19.370
So they do give examples.
30:20.890 --> 30:24.302
And then this, I think, is getting to
30:24.316 --> 30:27.494
the crux of the issue. What they say in the next
30:27.532 --> 30:31.034
paragraph is that it'll be appreciated in certain situations. It's not possible to
30:31.072 --> 30:34.434
exactly tune the liner to two or more relevant
30:34.482 --> 30:37.938
frequencies. And as such, it will be understood that liner
30:37.974 --> 30:42.050
204 will be considered to be tuned to a relevant frequency if
30:42.100 --> 30:46.550
it is effective in attenuating vibration at the relevant frequency.
30:46.870 --> 30:50.162
And this is exactly the sentence that the majority point to
30:50.236 --> 30:53.910
say. The specification only describes tuning
30:53.970 --> 30:58.098
in terms of a result to be achieved. It doesn't describe
30:58.194 --> 31:01.878
the steps that one must take to tune a liner.
31:01.974 --> 31:04.370
The descent disagrees.
31:05.530 --> 31:10.482
And you can see here that there are structural
31:10.566 --> 31:14.102
elements that are described about these liners. And I
31:14.116 --> 31:17.390
think this is a really interesting, I think, side note on this case,
31:17.440 --> 31:22.466
too. There are, what, ten or
31:22.468 --> 31:26.238
eight dependent claims off of both of the independent
31:26.274 --> 31:30.630
claims, one and 22, that do claim,
31:30.810 --> 31:34.758
specifically claim, these structural features. You've got a disresilient
31:34.794 --> 31:38.418
member, you've got the resilient member, extensive helically or longitudinally
31:38.454 --> 31:42.282
or circumferentially. You've got different materials
31:42.426 --> 31:46.550
involved, cardboard, plastic, carbon fiber,
31:46.990 --> 31:51.086
and even some defendant claims about
31:51.148 --> 31:54.570
positioning the liner symmetrically, about a bending
31:54.630 --> 31:58.420
antenna node and things that are actually like very
31:58.870 --> 32:02.586
more or less specific structural features
32:02.658 --> 32:06.362
of these liners. So what the majority says is
32:06.376 --> 32:09.722
that the district court and this is what happened,
32:09.916 --> 32:14.090
the majority and the district court treated independent claims one and 22
32:14.140 --> 32:17.438
as representative of all of these.
32:17.584 --> 32:21.342
Dependent claims, and the dissent disagrees
32:21.366 --> 32:24.702
with that entirely. The dissent says, I do not agree with the majority
32:24.726 --> 32:28.802
of conclusion that claims one and 22 are representative, or that American
32:28.876 --> 32:32.286
Axle waived its arguments as to the dependent claims.
32:32.418 --> 32:35.906
First Nepo, who was the other party in
32:35.908 --> 32:39.162
the case, never argued that claims one and 22 representatives,
32:39.186 --> 32:42.422
in fact, argued the dependent claims separately, and American
32:42.496 --> 32:45.834
Axle expressly argued that they are not representative.
32:46.002 --> 32:49.682
And I think it seems like
32:49.756 --> 32:53.118
a small thing in some ways, like, oh, claim one and 22 are representative.
32:53.154 --> 32:56.042
We're just going to go with that. We're not even considered dependent claims, but if
32:56.056 --> 32:59.618
they had, it might have been a lot harder for them to say no,
32:59.644 --> 33:04.202
there are no structural features here that teach one how to
33:04.276 --> 33:08.454
tune this thing. They may have came to the same conclusion due
33:08.502 --> 33:11.810
to, for instance, inadequacies of the specification,
33:12.550 --> 33:16.446
even though there's a resilient member.
33:16.638 --> 33:20.238
How do you tune that resilient
33:20.274 --> 33:23.750
member to dampen a bending mode at a particular
33:23.860 --> 33:27.434
frequency? That's what I see
33:27.472 --> 33:31.266
as missing, by the way, entirely. The crux of that invention
33:31.338 --> 33:34.782
is the tuning or the positioning. And nobody's
33:34.806 --> 33:39.174
saying position until position. Why position? Because there's
33:39.222 --> 33:43.218
just nothing in there. So I guess I fall somewhere
33:43.254 --> 33:47.114
in the middle. I think there's enough structure to get
33:47.152 --> 33:50.990
you out of 101, but I don't know that there's enough content
33:51.160 --> 33:53.920
and teaching to get you over 112.
33:54.550 --> 33:57.770
Right? Yes. And the
33:57.880 --> 34:01.730
dissent actually almost uses the exact same argument. They say they
34:01.780 --> 34:05.714
totally disagree that it should be ineligible under 101. This is absolutely
34:05.812 --> 34:08.990
eligible under. But they actually
34:09.160 --> 34:12.950
left the question open. They said there are many inventive concepts that
34:13.060 --> 34:16.178
go beyond natural law, but they leave it an open question.
34:16.264 --> 34:20.370
Is there sufficient enablement
34:20.550 --> 34:24.338
to satisfy 112? I feel like this is like a common thing with
34:24.364 --> 34:28.434
the courts, though. Like they buy their partial
34:28.482 --> 34:31.898
opinions almost that they give they leave more ambiguity than they do fix. It.
34:31.924 --> 34:35.418
Like the whole Google Oracle case, we're going to kind of rule
34:35.454 --> 34:39.386
on things, but we're never going to tell you if APIs are actually
34:39.508 --> 34:42.962
copyrightable. Right. We're going to kind of leave that. And the same
34:42.976 --> 34:46.060
with this case. Okay, yeah, we're good for
34:46.690 --> 34:50.678
certain of the judges believe that it's fine for 101,
34:50.704 --> 34:54.530
but we're not going to address 112 and they kind of leave it.
34:54.700 --> 34:58.458
And I know it's because there's a whole bunch of rules
34:58.494 --> 35:01.130
and how things proceed in court proceedings and things like that,
35:01.180 --> 35:04.346
but I feel like we're always like doing
35:04.408 --> 35:07.418
90% and then we never take it the last 10%,
35:07.504 --> 35:10.070
which would, I think, clear up some of the ambiguity.
35:10.450 --> 35:14.402
Yeah. Kristen and I totally agree.
35:14.536 --> 35:18.350
And I actually wonder I don't know, I haven't read anything
35:18.400 --> 35:22.058
about this. I'm not totally sure what the Supreme Court was thinking. But I do
35:22.084 --> 35:25.454
wonder if they declined to take the case because it is a little
35:25.492 --> 35:28.934
bit complicated and
35:29.032 --> 35:32.440
not an ideal. It's a little bit messy. It's not a really clean
35:32.770 --> 35:36.002
one on one discussion. There's like a lot of different things
35:36.016 --> 35:39.410
that go into it. So yeah, maybe I'm trying to get
35:39.460 --> 35:46.042
some highlights now we've
35:46.066 --> 35:49.714
talked about these things a bunch. The majority says that claim
35:49.762 --> 35:53.758
22 confers patent coverage if the attenuation
35:53.854 --> 35:57.718
goal is achieved by one skill in the art using any method
35:57.874 --> 36:01.050
including any method implemented by computer modeling and
36:01.100 --> 36:04.554
trial and error so that the claim on a face does not identify the
36:04.592 --> 36:08.370
particular tune, liner or improved method of doing that.
36:08.480 --> 36:12.070
And it's a really interesting quote. American Axel argued
36:12.130 --> 36:15.210
that one could infringe claim 22 by
36:15.260 --> 36:18.330
whatever means will achieve the result even
36:18.380 --> 36:22.040
if you didn't try to tune it and didn't know you did it.
36:22.910 --> 36:26.538
So that kind of I think maybe worked against them in
36:26.564 --> 36:30.618
some ways because it fed into this argument that it's not a
36:30.644 --> 36:33.310
clear, concise, explicit invention,
36:33.490 --> 36:36.810
it's vague and results oriented.
36:39.690 --> 36:43.680
The majority concedes or at least argues that
36:44.010 --> 36:47.882
these established processes and improved processes are not claimed.
36:48.026 --> 36:51.898
American actor may have discovered patentable refinements such
36:51.924 --> 36:55.850
as particular uses of a sophisticated finite element analysis
36:55.910 --> 37:00.010
model during its design process but neither the specifics
37:01.050 --> 37:04.380
of any novel computer modeling or of any
37:05.550 --> 37:09.182
experimental modal analysis are included as limitations
37:09.266 --> 37:12.442
in claim 22 and also the
37:12.456 --> 37:15.862
specification only describes tuning in results in
37:15.876 --> 37:19.114
terms of the result achieved rather than a particular process by
37:19.152 --> 37:22.714
which it's accomplished. So what
37:22.752 --> 37:26.698
the majority says is what's missing is any physical structure or
37:26.724 --> 37:30.646
steps for achieving the claim result. Now, to be fair, the dissent argues against
37:30.708 --> 37:33.994
that because the defend is looking at the defendant claims and says
37:34.152 --> 37:38.198
that's not true. There are physical structures and steps
37:38.234 --> 37:41.854
for achieving the claimed result, at least
37:41.892 --> 37:45.658
an attempt to put those structures and
37:45.684 --> 37:48.922
methods in there. But I think to Ashley's and Christmas point was
37:48.936 --> 37:52.438
it enough? Wasn't enough. I think that's a tough thing to
37:52.464 --> 37:55.402
answer and I did want to hit on these too because I think this is
37:55.416 --> 37:58.570
really interesting. This isn't in a vacuum.
37:58.890 --> 38:03.962
There is case law that Supreme Court ruled
38:03.986 --> 38:07.810
on and that the AFC relied on. So there's this really important case
38:07.860 --> 38:11.830
Parker v. Fluke which was a case about
38:11.880 --> 38:16.234
calculating and updating an alarm limit and they found that
38:16.332 --> 38:20.518
patent to be patent ineligible under 101 and the reason why
38:20.664 --> 38:24.278
is because as in Fluke, the claim method did not specify
38:24.374 --> 38:28.150
how variables were measured or how the alarm system functioned.
38:28.590 --> 38:32.398
Claim 22 here does not specify how target frequencies are determined or
38:32.424 --> 38:36.274
how using that information, the liners are tuned. So this is in
38:36.312 --> 38:40.034
contrast to a deer case Duamon versus Deer
38:40.142 --> 38:43.414
which was an eligible under
38:43.452 --> 38:47.426
101 and it recited a calculation
38:47.618 --> 38:50.830
for a mold in a process to cure rubber,
38:51.450 --> 38:54.950
a mold temperature calculation in a process to cure
38:55.010 --> 38:58.874
rubber and in deer, unlike in this case, these other steps
38:58.922 --> 39:03.134
apparently added to the formula something that in terms of patent laws objectives
39:03.182 --> 39:07.090
had significance. In other words, they transform the process into
39:07.140 --> 39:10.390
an inventive application. Of the formula
39:11.430 --> 39:14.834
in here, there was enough described.
39:14.942 --> 39:18.338
They talk about, yes, it relied on this equation,
39:18.434 --> 39:21.694
but they also described how to use and
39:21.732 --> 39:25.618
implement that equation and therefore transform the
39:25.644 --> 39:28.200
process into an inventive application.
39:29.610 --> 39:32.734
So what this is saying is basically
39:32.832 --> 39:36.346
the application lacked an embodiment where those
39:36.408 --> 39:40.838
elements, those structural elements that contribute to controlling
39:40.874 --> 39:46.154
those frequencies, there wasn't some kind of enabling embodiment
39:46.202 --> 39:49.574
that disclosed how they should be adjusted.
39:49.622 --> 39:53.402
Right. How they should be fixed
39:53.426 --> 39:57.134
or changed so that they accomplished the claim
39:57.182 --> 40:00.838
dimension. Right. That's a good way to put it. Exactly. They were trying
40:00.864 --> 40:04.870
to claim a result without structural
40:05.730 --> 40:10.190
components or method steps that unambiguously
40:10.250 --> 40:13.560
clearly taught someone how to achieve that result.
40:14.730 --> 40:18.106
Then you can argue back and forth again, is that a 101 issue or is
40:18.108 --> 40:21.478
it a 112 issue? But I think we kind of all agree that there
40:21.504 --> 40:24.610
is an issue with that.
40:24.660 --> 40:28.450
You can't right. So it's
40:30.870 --> 40:34.970
a lot more we can say about that. But interestingly,
40:35.030 --> 40:39.046
I didn't know this Luke was actually also used
40:39.108 --> 40:43.642
by the Supreme Court to support Alice and
40:43.776 --> 40:47.098
they say in the Alice case that Fluke is to the same effect
40:47.244 --> 40:50.942
and that Fluke stands for the proposition that prohibiting
40:51.026 --> 40:55.058
against patenting abstract ideas cannot be circumvented by attempting
40:55.094 --> 40:59.090
to limit the use of the idea to a particular technological environment.
40:59.210 --> 41:02.290
And it's interesting, that was a quote from Bilski.
41:02.790 --> 41:06.180
So this Bluke is all over the place and
41:08.070 --> 41:10.560
it's kind of like what Kristen was saying.
41:12.090 --> 41:16.262
It's clearly a particular technological
41:16.346 --> 41:20.330
problem that they're trying to solve. And what Fluke apparently
41:20.390 --> 41:23.160
is used for by the courts is to say that's not enough.
41:23.610 --> 41:27.554
Just saying you're going to apply a natural law to a particular technological
41:27.602 --> 41:32.390
problem without sufficiently explaining structural
41:32.450 --> 41:36.526
and or method steps that explain how to apply
41:36.648 --> 41:40.502
that natural law, just putting it in a technological environment
41:40.526 --> 41:44.158
is not enough. So I thought that was pretty interesting. That's something that is
41:44.184 --> 41:47.818
like now I think in some ways I feel
41:47.844 --> 41:51.566
like this
41:51.628 --> 41:55.278
American Axel case, people are up in arms
41:55.314 --> 41:58.490
about it for sure and a lot of people are talking about how
41:58.540 --> 42:01.742
different it is from the case law history and
42:01.756 --> 42:06.002
how they've totally just taken a left turn. And I think in
42:06.016 --> 42:09.580
their mind, in the majority's mind, luke is what helped them
42:10.510 --> 42:14.418
actually bring it all make their decision
42:14.574 --> 42:18.542
in light of the prior decisions, not completely
42:18.616 --> 42:20.080
a left turn from those.
42:21.550 --> 42:25.660
So claim one is a little bit different. Right? And we talked about that.
42:27.910 --> 42:32.020
The CAFC said that claim one could be an abstract idea,
42:32.890 --> 42:36.378
but that this abstract idea was not adequately presented
42:36.414 --> 42:39.978
and litigated in the district court. So that's why they remanded
42:40.014 --> 42:43.958
it. They didn't really put
42:43.984 --> 42:47.054
any hint about whether they thought it should be eligible or not. They just said
42:47.092 --> 42:51.650
that there's more in there that was not adequately
42:52.330 --> 42:56.322
argued and therefore it's not proper for the CISP
42:56.346 --> 42:59.634
to make a summary judgment on these facts
42:59.682 --> 43:03.654
or other these aspects because they weren't sufficiently handled
43:03.702 --> 43:06.590
at the district court level. So now it's been remanded.
43:07.210 --> 43:09.760
Okay, so the dissent, this is fun.
43:11.410 --> 43:16.060
The dissent actually says that this
43:16.570 --> 43:20.222
majority is holding that these claims are ineligible to send shockwaves through the
43:20.236 --> 43:23.774
patent community. So there are some great quotes in here. The first one is
43:23.812 --> 43:27.174
from Representative Doug Collins. It's unthinkable.
43:27.282 --> 43:31.000
The courts found this invention of manufacturing process for making a key
43:31.450 --> 43:34.970
automotive part as patent ineligible. The next one,
43:35.020 --> 43:38.882
which was a Bloomberg article, said american action is a poster child
43:39.016 --> 43:42.242
for how the current test for patent eligibility is being applied to reach rather
43:42.316 --> 43:46.480
absurd results. And that
43:47.350 --> 43:50.918
if industrial processes, physically based patents like
43:50.944 --> 43:55.218
these are ineligible under Mayo Alice, then seemingly every patent
43:55.314 --> 43:58.718
is in ineligibility jeopardy. You just go on and
43:58.744 --> 43:59.560
on, right?
44:02.810 --> 44:06.102
There are some fun quotes in there, but clearly there's a lot of
44:06.116 --> 44:09.490
controversy about this case. What does the descent say? The descent
44:09.550 --> 44:12.970
has some vigorous language
44:13.090 --> 44:16.182
and basically talks about
44:16.256 --> 44:19.858
sort of two different things. The first thing is about how natural laws
44:19.894 --> 44:23.518
in this case and step two of the Alice
44:23.554 --> 44:26.994
Mayo 101 analysis, which is there
44:27.152 --> 44:31.570
something that's significantly more than just this abstract
44:31.690 --> 44:35.278
concept or natural law. So, as the defense
44:35.314 --> 44:38.862
says, a disturbing amount of confusion will surely be caused by
44:38.876 --> 44:42.522
this opinion, which stands for the proposition that claims can be ineligible as
44:42.536 --> 44:46.870
directed to a natural law, even though no actual natural law is articulated
44:46.990 --> 44:50.358
in the claim or even the specification. So that
44:50.384 --> 44:54.450
is a really interesting statement because that apparently is pretty different from
44:54.500 --> 44:58.822
most, if not all of the previous cases in this area. Previous cases
44:58.966 --> 45:02.358
all talk about natural laws or even claimed natural laws in some
45:02.384 --> 45:06.102
way, whereas this case didn't. And that goes on
45:06.116 --> 45:09.994
to say holding these claims ineligible under a purported natural law analysis leaves patentees
45:10.042 --> 45:13.098
awash in a sea of uncertainty. How can
45:13.124 --> 45:16.434
one determine if a claim is directed to a natural law without a natural law
45:16.472 --> 45:20.730
being apparent either on the face of the claim or under a proper claim construction?
45:21.050 --> 45:25.006
He goes on to say goodness sakes. The dependent
45:25.078 --> 45:29.686
claims held ineligible by the majority specify the material
45:29.878 --> 45:33.162
the liner must be made of, the actual physical form it
45:33.176 --> 45:37.078
must take with fingers circumferentially wrapped or over molded
45:37.174 --> 45:40.842
and placed, and the place the liners must be positioned. And he
45:40.856 --> 45:44.478
says it is remarkable that the majority thinks that claims with all
45:44.504 --> 45:48.166
of these very physical, very concrete, very structural limitations
45:48.298 --> 45:52.678
are missing any physical structure or steps. A fiberglass
45:52.714 --> 45:56.770
liner with a helically shaped resilient member extending circumferentially
45:56.890 --> 46:00.342
around the liner or over molded to the structural portion of the
46:00.356 --> 46:03.942
liner certainly feels like the physical structure that the
46:03.956 --> 46:06.466
majority says is missing from the claim.
46:06.658 --> 46:10.542
And the district court and Cafe were
46:10.556 --> 46:13.978
very clear that they were not looking at depending claims. They were saying that claim
46:14.014 --> 46:17.358
one and 22 were representative. And I think what
46:17.504 --> 46:20.790
the dissent is saying here, Judge Moore is saying is that
46:20.900 --> 46:24.800
that was a mistake. So David, one of the things here that is
46:25.250 --> 46:28.686
a little bit hidden when you say structure or
46:28.748 --> 46:32.134
steps, I think the way the court uses
46:32.182 --> 46:36.054
that language really is you're missing structure or
46:36.092 --> 46:39.282
you're missing steps. So in this case it would maybe be
46:39.296 --> 46:42.690
missing steps even though there's loads of structure.
46:44.630 --> 46:46.160
I know what you mean. Yeah,
46:47.510 --> 46:50.674
right. And missing steps.
46:50.722 --> 46:54.258
Exactly. Missing steps. Maybe teaching someone how to
46:54.284 --> 46:58.242
tune and then how do you teach someone how to tune? You've got
46:58.256 --> 47:01.834
to talk about some maybe it's a finite element
47:01.882 --> 47:05.082
model. It could be a process. They could describe some kind
47:05.096 --> 47:08.310
of process they go through, or they could describe some
47:08.360 --> 47:12.178
kind of a process of changing
47:12.214 --> 47:15.260
a dimension of a structural feature or whatever. Right.
47:16.010 --> 47:19.110
I know we kind of gloss over structure steps.
47:20.270 --> 47:24.138
It could be as simple as like within diamond v. Deer, where they do something
47:24.224 --> 47:27.630
until something occurs and that is how the problem
47:27.680 --> 47:30.740
is solved. So another step
47:31.130 --> 47:34.458
maybe would have helped them. I don't think they had it in their
47:34.484 --> 47:38.202
specification, but if they could have, just adding that to
47:38.216 --> 47:40.700
the claim might have helped them. Right.
47:41.930 --> 47:45.582
I was also just wondering too if the broader claim would
47:45.596 --> 47:50.026
have been okay had they had a few examples in their spec that said here's
47:50.158 --> 47:53.058
one way to do it, here's another way to do it. And obviously they had
47:53.084 --> 47:56.322
the structure there, so they would have just kind of packaged those into a
47:56.336 --> 48:00.322
few examples of again, we deserve this broad
48:00.406 --> 48:04.242
claim because here's four different ways to
48:04.316 --> 48:08.274
achieve this breath. Right? Yes. Again, a 112
48:08.432 --> 48:15.354
issue more so probably. Right. I know if
48:15.392 --> 48:18.606
this was invalidated due to 112, I think it
48:18.608 --> 48:22.254
would have been a lot less controversial. Would that have been correct?
48:22.352 --> 48:25.686
I don't know. But I feel like that invoking 101, in this case,
48:25.748 --> 48:29.542
really, things made matters worse.
48:29.626 --> 48:33.438
It didn't have clarity, it sort of made things more confusing. So I
48:33.464 --> 48:36.954
get why there's so much controversy about it. I think
48:36.992 --> 48:40.894
that's the bigger issue in general panel right now. I think they're kind of mushing
48:40.942 --> 48:44.998
together all of the things. Right. You have these practical application inventive
48:45.034 --> 48:48.680
stuff. In 101, you have some 112 issues
48:49.190 --> 48:52.410
and one on one and 112 being conflated.
48:54.050 --> 48:57.140
I feel like you're trying to make a one size fits all
48:57.650 --> 49:01.086
test, but then saying it's only under 101, you know what I
49:01.088 --> 49:04.160
mean? But yet it encapsulates all the difference.
49:06.050 --> 49:09.534
I don't know if I put that in, but almost exactly that. The Descent actually
49:09.572 --> 49:13.640
just said that in a paragraph that there's 101,
49:14.630 --> 49:18.562
it's carrying too much here. We just talked about natural
49:18.586 --> 49:21.882
laws in step two. Again, the defense like actually was
49:21.896 --> 49:25.700
just bringing up didn't agree that
49:26.270 --> 49:29.358
with the majority and that thought the majority was conflating 101 and 112.
49:29.384 --> 49:34.922
And Judge
49:34.946 --> 49:38.362
Moore says that the majority's concern is not preemption of a
49:38.376 --> 49:42.010
natural law, which should be the focus, but rather that
49:42.120 --> 49:45.550
the claims do not teach a skilled artisan how to do an aligner without
49:45.600 --> 49:48.658
trial and error. And it's clear from
49:48.684 --> 49:52.730
the claims themselves that the functional result is to drive shaft with reduced vibrations.
49:52.790 --> 49:56.350
It is undisputed that there exist many ways to attenuate these
49:56.400 --> 50:00.420
things, including these physical structures. And that
50:01.230 --> 50:04.454
the only remaining question is what a skilled artisan
50:04.502 --> 50:08.062
know how to adjust the mass, stiffness and positioning of the
50:08.076 --> 50:12.302
liner in order to damp vibration without undo experimentation.
50:12.446 --> 50:15.554
And then they said yes, this is a question of enablement,
50:15.602 --> 50:19.282
not eligibility. And this is
50:19.296 --> 50:24.502
what actually this is, this is the code I was looking for. That the
50:24.516 --> 50:27.970
majority to concern is with these claims is not the directed hook's law, but rather
50:28.020 --> 50:31.670
that they haven't claimed precisely how to tune the liner.
50:31.790 --> 50:35.950
And that he goes on to say the majority
50:36.270 --> 50:39.758
concludes that the event of concepts makes no difference and section
50:39.794 --> 50:43.502
101 should not be this sweeping and this manipulatable,
50:43.586 --> 50:46.874
should not be used to invalidate claims under standards identical
50:46.982 --> 50:51.074
to those clearly articulated in other statutory sections,
50:51.182 --> 50:54.422
should not subsume 112, should not convert traditional
50:54.506 --> 50:57.922
questions of fact like undo experimentation into legal ones.
50:58.056 --> 51:01.658
And the majority of validity Gulash is troubling and inconsistent
51:01.694 --> 51:04.238
with the patent statute and precedent.
51:04.394 --> 51:08.210
And the majority worries about result oriented
51:08.270 --> 51:11.974
claiming they are worried about result
51:12.072 --> 51:15.262
oriented judicial action, the last
51:15.336 --> 51:17.650
sentence in their dissent.
51:19.230 --> 51:23.014
So I think there's an open question if
51:23.052 --> 51:27.600
Judge Moore is correct, then would these claims be invalid under 112?
51:28.830 --> 51:32.242
I think there's a reasonable question there, but I
51:32.316 --> 51:36.430
definitely wanted to get to this because the majority actually responded to that since
51:36.480 --> 51:41.294
there was a modified opinion. This quote
51:41.342 --> 51:44.858
I just put up with from the 2019 and original opinion
51:44.894 --> 51:48.422
in 2020. The court says three the dissent criticizes
51:48.446 --> 51:51.842
our analysis as improperly merging enablement and eligibility.
51:51.986 --> 51:55.774
But we think the criticism rests on a failure to distinguish two different
51:55.872 --> 51:59.198
how requirements in patent law. The first requirement
51:59.234 --> 52:03.094
out of eligibility is of the claim itself, whether by
52:03.132 --> 52:07.382
its own words or by statutory incorporation of specification
52:07.466 --> 52:10.834
details under 112 F. 112 F is means
52:10.872 --> 52:14.246
plus function, right? So it is the claim.
52:14.438 --> 52:17.974
But when you have needs plus function claim, the claim has
52:18.012 --> 52:22.090
to be evaluated in reference to the specification.
52:23.430 --> 52:25.920
That gets really confusing really fast.
52:26.310 --> 52:29.962
And then they say it must identify how the functional result is
52:29.976 --> 52:33.970
achieved by limiting the claim scope to structures, et cetera.
52:34.290 --> 52:39.774
But the second distinct how requirement
52:39.822 --> 52:43.298
applies to the specification, not the claim. Where then the
52:43.444 --> 52:47.142
specification needs to teach someone how to make and use the claim structures.
52:47.286 --> 52:51.306
So their point was that this first how possibly
52:51.438 --> 52:54.830
under this means plus function umbrella,
52:55.450 --> 52:59.320
that there has to be enough.
53:00.250 --> 53:03.878
You can't just claim a result, there has to be enough in the
53:03.904 --> 53:07.946
claim itself to claim something that
53:08.008 --> 53:11.574
is concrete or else it's
53:11.622 --> 53:15.218
abstract or it's a natural law and therefore it is
53:15.244 --> 53:19.206
ineligible under 101. I think this is the sort of the best explanation
53:19.278 --> 53:23.202
I've seen that they've given for why they chose
53:23.286 --> 53:27.546
101 and not 112 for their analysis.
53:27.678 --> 53:31.742
So who has some sort of parting thoughts? I guess I
53:31.756 --> 53:35.282
just have one simple thing in my thought process.
53:35.416 --> 53:39.290
I never think about how when I look at 101
53:39.340 --> 53:42.618
eligibility, ever. This to me screams
53:42.654 --> 53:45.520
112 when you start asking how,
53:45.850 --> 53:48.880
but just an opinion. Go ahead, Ty.
53:49.930 --> 53:53.322
Interesting. I was just going to ask you David, what are your thoughts
53:53.346 --> 53:56.414
were in kind of like boiling this down? Do you feel
53:56.452 --> 54:00.270
that this is American Axel's failure
54:00.330 --> 54:04.300
to recognize the actual invention? Because to me it almost sounds like
54:04.750 --> 54:08.282
the actual invention they feel is just a tool on the
54:08.296 --> 54:12.062
way to the invention and maybe that's why they under disclose the
54:12.076 --> 54:15.160
specification. Interesting question.
54:15.730 --> 54:19.022
Did they not realize that the invention was
54:19.036 --> 54:22.758
the tuning or was it a business decision, for instance,
54:22.854 --> 54:26.502
to not provide a lot of details on the finite element modeling,
54:26.526 --> 54:28.854
et cetera, because they were trying to keep that trade secret?
54:28.962 --> 54:32.738
Yeah, it could have been in this like
54:32.764 --> 54:35.718
first to file world. I don't know. I guess when this is filed, maybe it's
54:35.754 --> 54:39.002
pre that, I don't know. But you always end up with a chicken or the
54:39.016 --> 54:42.482
egg problem, right? You have inventors who
54:42.676 --> 54:46.118
start to play around with something, right, and then you're like,
54:46.144 --> 54:49.398
oh wow, this is going to be huge, we got to get this on file.
54:49.554 --> 54:52.646
And then the one year date comes along and they're like,
54:52.708 --> 54:56.200
yeah, this is still totally going to work,
54:57.070 --> 55:00.254
we got this. But you know exactly how it's going to work.
55:00.292 --> 55:04.060
We're not sure quite yet, but hey,
55:04.870 --> 55:08.774
let's go ahead and file this broader patent because that's like,
55:08.812 --> 55:12.506
it's solid, we know it's going to be a thing and then we'll do another
55:12.568 --> 55:15.398
application later that's more species specific, right?
55:15.424 --> 55:18.938
That we're going to talk about this finite element analysis way
55:18.964 --> 55:22.730
of doing it and then we're going to talk about this other helical
55:23.170 --> 55:27.002
material properties way of doing it and whatever you
55:27.016 --> 55:30.122
have to wonder if I think that the first to
55:30.136 --> 55:33.700
file thing and provisional stuff are fantastic. But there is a little bit of this
55:34.030 --> 55:37.710
game that you have to play of when do we disclose.
55:37.770 --> 55:41.258
When do we convert? Is the one year the
55:41.284 --> 55:44.618
appropriate time to convert? Is there a way, should we refile the
55:44.644 --> 55:48.434
provisional and restart the clock? And I also wonder if there wasn't some
55:48.592 --> 55:49.780
of that happening.
55:51.670 --> 55:55.454
Interesting thought. Definitely there was one
55:55.492 --> 55:59.582
other argument that American Axle used which I
55:59.656 --> 56:03.858
didn't have time to get to, but in their prior
56:03.894 --> 56:07.386
art search and in their knowledge tuning,
56:07.518 --> 56:11.382
or rather attenuating bending mode vibrations
56:11.406 --> 56:14.402
in a drive shaft was never done before,
56:14.596 --> 56:18.686
ever using any liner of any kind. And so
56:18.808 --> 56:22.526
I actually wonder, like you were saying, Ty, they may not
56:22.588 --> 56:25.758
have thought that the invention so heavily relied
56:25.794 --> 56:29.270
on this tuning. I think they may have thought that, well,
56:29.380 --> 56:32.502
let's talk about what we did in these independent
56:32.526 --> 56:35.858
claims in a really broad way. Shoot for the moon. And then in our
56:35.884 --> 56:39.438
dependent claims, we're going to have all the detailed structural
56:39.474 --> 56:43.038
features that we use to achieve this result. And they may have been pleasantly
56:43.074 --> 56:47.440
surprised that claims 222 were allowed by the patent office.
56:48.430 --> 56:51.880
And I think that now they're just beside themselves.
56:52.270 --> 56:56.502
That like, wait, we have this structural,
56:56.646 --> 57:00.470
unique invention that no one ever did before. It's clearly a thing.
57:00.580 --> 57:03.914
It's not hook's law. And the
57:03.952 --> 57:07.538
way that the claims were drafted and the way that they chose one
57:07.564 --> 57:11.150
and 22 to be representative, and now the way that it's
57:12.430 --> 57:16.758
so broad with the tuning
57:16.794 --> 57:21.134
language and functional language, yes, it might have just been
57:21.172 --> 57:24.422
surprising. This whole thing might be surprising to them.
57:24.556 --> 57:27.878
In hindsight, maybe it makes sense, but not something that
57:27.904 --> 57:31.230
they thought about upfront. They thought they had this in the bag.
57:31.290 --> 57:34.826
They thought they had this great solid mechanical invention that no
57:34.828 --> 57:35.800
one ever did.
57:39.590 --> 57:45.166
They might have, but nobody knew the
57:45.168 --> 57:48.814
bathwater. Yeah. Well, one thing
57:48.852 --> 57:51.826
we hadn't considered here, and we'll never know, is,
57:51.948 --> 57:56.362
was this a case where you had one practitioner writing the claims and another,
57:56.556 --> 57:59.986
maybe more junior writing the specification and
58:00.108 --> 58:03.360
not having some of those tuning details? Just said,
58:03.810 --> 58:07.330
we just tuned it. These are the components used to tune it.
58:07.500 --> 58:11.162
This is some detail that I have and then filed
58:11.186 --> 58:15.194
it. I don't know. Yeah, they made the specs
58:15.242 --> 58:17.830
abstract and broad as well as the claims.
58:22.510 --> 58:25.646
Yeah. It would be interesting to
58:25.648 --> 58:28.466
be a fly on the wall for the history of this one.
58:28.528 --> 58:31.994
Right. How do we get to where we are?
58:32.152 --> 58:35.378
I feel like that's because American Axle, you don't normally know what it means.
58:35.464 --> 58:39.386
Right. It has a subscure name, but it sounds almost kind of dark. So I
58:39.388 --> 58:42.962
feel like you can do a documentary. American Axel History in the
58:42.976 --> 58:46.370
Making the controversial world
58:46.420 --> 58:48.170
of drive liners.
58:50.350 --> 58:53.450
Actually, get Josh on that interviewing.
58:55.570 --> 58:59.054
You do the investigative history, you find all the practitioners and the
58:59.092 --> 59:02.462
engineers and the business people at
59:02.476 --> 59:06.102
the company at the time. Why did you make the decisions
59:06.126 --> 59:09.806
you made? Right. People would probably actually
59:09.868 --> 59:13.238
watch it, given how much at least I would probably if I
59:13.264 --> 59:14.750
saw that on Netflix.
59:17.930 --> 59:21.646
Nice. Well, thanks everybody. It was a great discussion. Thanks for all your input.
59:21.838 --> 59:25.030
Thank you, David. Yeah,
59:25.080 --> 59:27.682
absolutely. Discussion. Bye. Thank you,
59:27.696 --> 59:31.246
guys. Bye. All right, that's all for today,
59:31.308 --> 59:34.894
folks. Thanks for listening. And remember to check us out@aurorapatins.com
59:34.932 --> 59:38.414
for more great podcasts, blogs, and videos covering all things patent
59:38.462 --> 59:41.446
strategy. And if you're an agent or attorney and would like to be part of
59:41.448 --> 59:45.274
the discussion, or an inventor with a topic you'd like to hear discussed, email us
59:45.312 --> 59:48.658
at podcast@aurorapatins.com do remember that this
59:48.684 --> 59:52.198
podcast does not constitute legal. You advice. And until next time, keep calm and
59:52.224 --> 59:52.720
patent on.
00:05.290 --> 00:08.694
Good day, and welcome to the Patently Strategic Podcast, where we discuss all
00:08.732 --> 00:11.734
things at the intersection of business, technology, and patents.
00:11.842 --> 00:15.778
This podcast is a monthly discussion amongst experts in the field of patenting.
00:15.874 --> 00:19.078
It is for inventors, founders, founders, and IP professionals alike,
00:19.174 --> 00:22.582
established or aspiring. In today's episode, we're discussing
00:22.606 --> 00:26.230
a recent court decision that judges have said could threaten most every invention
00:26.290 --> 00:29.886
for which a patent has ever been granted, turning the patent system into a
00:29.888 --> 00:33.754
litigation gamble. In this month's episode, Dr. David Jackrel,
00:33.802 --> 00:37.558
president of Jacques Consulting, leads a discussion into American Axle's
00:37.594 --> 00:41.362
recent bid to have the Supreme Court overturned a lower court decision
00:41.446 --> 00:45.130
that invalidated the company's patent in a closely followed legal battle
00:45.190 --> 00:49.186
with rival Nico Holdings. This case offered a much anticipated
00:49.258 --> 00:52.414
opportunity to more broadly clarify patent eligibility
00:52.522 --> 00:56.010
in a time where many believe that court precedent has undermined the US.
00:56.060 --> 00:59.998
Patent process and, in the words of retired US. Court of Appeals Chief Judge Paul
01:00.034 --> 01:03.618
Michel, confused and distorted the law of eligibility, making it
01:03.644 --> 01:06.642
an illogical, unpredictable, chaotic mess.
01:06.776 --> 01:10.206
Critics of these rulings in the resulting present state of IP law,
01:10.268 --> 01:13.326
claim that the confusion and inconsistency has led to course
01:13.388 --> 01:17.442
canceling many patents that should be protected. The Solicitor General has
01:17.456 --> 01:20.910
stated the problems arising from the application of Section 101 have
01:20.960 --> 01:24.558
made it difficult for inventors, businesses, and other patent stakeholders to
01:24.584 --> 01:28.270
reliably and predictably determine what subject matter is patent
01:28.330 --> 01:31.530
eligible. Despite cries for help and urges to provide
01:31.580 --> 01:35.158
clarification from multiple presidential administrations, the Solicitor
01:35.194 --> 01:38.458
General, members of Congress, the Federal Circuit Court,
01:38.554 --> 01:42.478
IP bar associations, and the Patent Office, the Supreme Court
01:42.514 --> 01:46.006
refused to hear this case, leaving many inventors and industries
01:46.078 --> 01:49.918
in limbo since, as the USPTO. Spokesperson said after the ruling,
01:50.014 --> 01:53.302
innovation cannot thrive in uncertainty. I want to pause
01:53.326 --> 01:56.970
for just a second and reflect on the fact that these people are using this
01:57.020 --> 02:00.514
language. You typically don't see these kinds of animated responses
02:00.562 --> 02:03.918
and blunt warnings from folks in and around this field. On this
02:03.944 --> 02:07.258
podcast, we err on the side of under sensationalizing, since there's
02:07.294 --> 02:10.842
plenty of the opposite available literally everywhere else you turn.
02:10.976 --> 02:14.458
This issue is a big deal. And these aren't just firmly twisted knickers.
02:14.554 --> 02:17.302
These are serious people using very strong language.
02:17.446 --> 02:21.214
Investing in innovation is a long game, and one that requires some basic
02:21.262 --> 02:25.090
level of predictability and stability around idea protection.
02:25.270 --> 02:28.390
All right, so beyond this being left unresolved by the Supreme Court,
02:28.450 --> 02:31.738
there's also the unfortunate precedent that may now very well seep
02:31.774 --> 02:35.926
into industries once believed to be immune from these subject matter limitations.
02:36.058 --> 02:39.646
Prior to this case, the subject matter eligibility problem was primarily
02:39.718 --> 02:43.246
confined to software and biotech. It was widely understood
02:43.318 --> 02:46.878
that physical products and their manufacturing were implicitly exempt from
02:46.904 --> 02:49.750
being ruled abstract ideas or laws of nature.
02:49.930 --> 02:53.710
What box was just left open? In today's episode.
02:53.770 --> 02:56.742
David and our all star patent panel discussed the case law.
02:56.816 --> 03:00.258
Its implications. How present statute is being conflated in
03:00.284 --> 03:03.798
taking section 101 well beyond its gatekeeping function and
03:03.824 --> 03:07.422
in their analysis of the American Axle patent. Provide some great tips that
03:07.436 --> 03:10.858
may have changed American Axel's present fate and can hopefully improve
03:10.894 --> 03:14.242
your odds of success if approached early enough and intentionally
03:14.326 --> 03:17.962
at the drafting stage. David is joined today by our always exceptional
03:17.986 --> 03:21.726
group of IP expert regulars you know and love, including Dr.
03:21.788 --> 03:25.318
Ashley Slowed, president and director of patent strategy here at Aurora,
03:25.414 --> 03:28.870
kristen Hansen, patent strategist at Aurora and David Cohen,
03:28.930 --> 03:32.238
principal at Cohen Sciences. We'd also like to introduce you
03:32.264 --> 03:35.602
to three new participants making their patently strategic debut
03:35.686 --> 03:39.502
armancobiani, patent agent and former US. Patent examiner
03:39.586 --> 03:43.258
and the two newest members of Team Aurora. Thai Davis, patent strategy
03:43.294 --> 03:46.714
associate, and Dr. Sophia Lee, patent strategy fellow.
03:46.822 --> 03:49.998
Now, before taking you into the thick of this conversation, one that is
03:50.024 --> 03:53.562
especially technical and legal, as we often do, we wanted to
03:53.576 --> 03:57.054
provide a quick primer on a few concepts that could use some extra color and
03:57.092 --> 04:00.502
context for those newer to patenting. This episode builds
04:00.526 --> 04:03.562
on many foundational patent law concepts we've been exploring
04:03.586 --> 04:07.162
in prior episodes, so this will just be a speedy review, but I'll
04:07.186 --> 04:10.422
provide pointers and links in the show notes to the related episodes should you want
04:10.436 --> 04:13.590
to go deeper. Since this episode is largely centered around
04:13.640 --> 04:17.374
the concept of subject matter eligibility, we're first going to talk about rejection
04:17.422 --> 04:21.078
and invalidation gates when patents are examined by the Patent Office
04:21.164 --> 04:24.594
or later litigated in a courtroom, several sections of US.
04:24.692 --> 04:28.054
Statute come into play in determining if the claims in the patent
04:28.102 --> 04:31.350
are eligible, useful, novel, non obvious,
04:31.460 --> 04:34.654
and enabled, or properly described patents
04:34.702 --> 04:37.998
can be rejected or invalidated if one or more of the
04:38.024 --> 04:41.238
claims are determined to be otherwise. Problems fall under
04:41.264 --> 04:45.274
the following sections of US. Code title 35 section
04:45.322 --> 04:49.770
101 patent ineligibility or lack of utility section 102
04:49.880 --> 04:53.242
lack of novelty section 103, the claimed
04:53.266 --> 04:56.898
invention is obvious and or section 112 lack of
04:56.924 --> 05:00.702
adequate description. Today's conversation focuses on sections 101 and
05:00.716 --> 05:03.870
one, one two. We dissect these and relevant case law,
05:03.920 --> 05:07.830
including the referenced Alice decision, in much greater detail in season two,
05:07.880 --> 05:11.406
episode one on software patents, in season two,
05:11.468 --> 05:15.150
episode five on Fortifying life science patents. For now,
05:15.200 --> 05:19.222
though, the important things to note are that section 112 centers around enablement.
05:19.306 --> 05:22.938
We're describing the invention in sufficient detail to allow
05:22.964 --> 05:27.450
it to be practiced by someone skilled in the art without undue experimentation.
05:27.830 --> 05:31.234
You're trading disclosure for exclusivity. That's fundamentally
05:31.282 --> 05:34.830
the deal, so you can't hold back on the details. Section 101
05:34.880 --> 05:38.358
covers eligible subject matter. The Patent Act says that an
05:38.384 --> 05:41.902
inventor can patent any new and useful process, machine,
05:41.986 --> 05:45.754
manufacturer, or composition of matter, or any new and useful improvement
05:45.802 --> 05:49.734
thereof. Historically, this was broadly interpreted. Patents were
05:49.772 --> 05:52.974
rarely rejected or invalidated based on it, while instead
05:53.072 --> 05:56.950
utilizing the other sections to weed out patents undeserving of protection.
05:57.070 --> 06:00.478
More recently, however, this has changed with the court's breathing
06:00.514 --> 06:04.294
judicial exceptions for eligible subject matter into being that don't
06:04.342 --> 06:07.698
exist in written law. These exceptions have become 101
06:07.724 --> 06:10.906
grounds to reject and invalidate claims centered around laws
06:10.918 --> 06:14.698
of nature, natural phenomena, and abstract ideas. The sticky
06:14.734 --> 06:18.018
part is that despite the courts creating these exceptions, they've yet
06:18.044 --> 06:22.062
to provide clarity and objective guidelines or definitions around what these words
06:22.136 --> 06:25.410
actually mean, leaving it up to the lower courts and the Patent Office
06:25.460 --> 06:29.278
to sort through the ambiguity. This episode also focuses on distinctions
06:29.314 --> 06:33.334
between the spec or specification and the claims of the American Axel
06:33.382 --> 06:36.910
application. For a deeper understanding of all of the parts of the patent,
06:36.970 --> 06:40.594
check out season one, episode nine on Patent Anatomy. But in brief,
06:40.642 --> 06:44.026
the specification describes the invention and provides the context
06:44.098 --> 06:47.622
for interpreting the claims. The claims themselves are the heart of
06:47.636 --> 06:51.102
an application and point out the exact invention boundaries of what the
06:51.116 --> 06:54.730
applicant believes she's entitled to own, specifically what the patent
06:54.790 --> 06:58.182
covers, clearly defining the subject matter for which protection is
06:58.196 --> 07:01.398
sought. And one last acronym to unpack before I send
07:01.424 --> 07:04.714
you off the group often refers to the CAFC.
07:04.822 --> 07:08.622
This is the United States Court of Appeals for the Federal Circuit. This is
07:08.636 --> 07:12.274
the Federal court that hears appeals on business activities, including patent
07:12.322 --> 07:16.114
cases that make their way up from district courts. Much of the case law conversation
07:16.162 --> 07:19.594
will center around majority and dissenting opinions from this court.
07:19.702 --> 07:23.118
And with that, hopefully you're now ready for the deep end. Take it
07:23.144 --> 07:27.030
away, David. The overview of the talk will be
07:27.200 --> 07:31.218
that we'll actually look at the claims first. I wanted to
07:31.364 --> 07:34.940
take a little bit of it. Rather than diving right into the opinion and getting
07:35.870 --> 07:39.706
adulterated by the opinions,
07:39.838 --> 07:43.122
I figured let's look at the claims ourselves, see what we think, talk about that
07:43.136 --> 07:46.902
a little bit. And the question really in this case is,
07:47.096 --> 07:50.334
is this patent directed to a method for
07:50.372 --> 07:53.898
manufacturing a shaft assembly in a driveline system,
07:54.044 --> 07:57.270
or is it really just directed to a natural law, as the
07:57.320 --> 08:00.642
CAFC majority basically says?
08:00.836 --> 08:04.398
At least for one of the things. So we'll talk about the claims, we'll talk
08:04.424 --> 08:07.820
about the court decisions that will dig into the
08:08.690 --> 08:12.322
actual patent, the spec a little bit, some of the dependent claims,
08:12.346 --> 08:15.834
which is kind of interesting. And then we'll spend the rest of the time talking
08:15.872 --> 08:19.074
about the majority and the dissent opinion because there's some
08:19.112 --> 08:22.434
really interesting stuff in there. And the
08:22.472 --> 08:25.606
Supreme Court actually we'll talk about a little earlier, they declined
08:25.618 --> 08:28.470
to give the case. One of the reasons why we're talking about it now.
08:28.580 --> 08:32.770
This is a method for manufacturing a shaft assembly for a driveline
08:32.830 --> 08:36.918
system. It's a shaft of a
08:36.944 --> 08:40.254
propeller or a shaft of a car. You can see here.
08:40.292 --> 08:43.966
So it's a shaft, and there's vibrations in the shaft,
08:44.038 --> 08:47.562
and there's a first driveline component and a
08:47.576 --> 08:51.274
second driveline component, and the shaft transmits torque
08:51.382 --> 08:54.646
between them. So you have this hollow shaft
08:54.718 --> 08:58.510
member, you're providing it. And then the second clause
08:58.570 --> 09:01.954
here is tuning
09:02.122 --> 09:05.902
at least one liner to attenuate at least two types
09:05.986 --> 09:09.774
of vibration transmitted through the shaft member and then they
09:09.812 --> 09:13.234
talk about positioning this liner within the shaft
09:13.282 --> 09:16.974
member. And this is the big difference, I feel like, between claims one
09:17.012 --> 09:20.502
and the other independent claim, which we'll look at. This claim has a
09:20.516 --> 09:23.540
little bit more meat here under the positioning step
09:24.350 --> 09:28.258
it's positioned, but it's positioned such that it's
09:28.354 --> 09:32.326
configured to damp the shell mode vibrations
09:32.458 --> 09:36.510
by an amount greater than or equal to this number and
09:36.560 --> 09:40.650
also it's configured to damp bending mode vibrations
09:42.470 --> 09:45.718
within 20 plus -20% of a vending mode
09:45.754 --> 09:49.678
natural frequency. So when I first looked at this claim
09:49.774 --> 09:53.082
I thought to myself that word tuning is a
09:53.096 --> 09:56.538
bit weird. Someone, of course, one to one is on my
09:56.564 --> 09:59.718
mind as I'm reading it because I know that's a big crux of this
09:59.744 --> 10:03.622
case. So how problematic really is that word tuning?
10:03.766 --> 10:06.978
And when you look at the claim construction this
10:07.004 --> 10:10.230
is a quote from the CAFC opinion, but it's basically that the
10:10.340 --> 10:14.166
district claim used this construction is that
10:14.288 --> 10:18.286
tuning the at least one liner means controlling
10:18.358 --> 10:22.414
characteristics of the at least one liner to configure
10:22.582 --> 10:26.130
the line or to match a relevant frequency or frequency.
10:26.870 --> 10:30.706
So that came from analyzing the specification and neither
10:30.778 --> 10:34.890
party really disagreed with that claim construction.
10:35.390 --> 10:36.800
So keep that in mind,
10:39.210 --> 10:43.162
you might be a little bit vague. And so
10:43.356 --> 10:47.102
when you see tuned, it more or less means configured,
10:47.246 --> 10:50.100
configured to perform these things.
10:50.610 --> 10:54.300
Dave, not having read their spec,
10:55.950 --> 10:59.534
how much did they go into how those characteristics
10:59.582 --> 11:02.894
are defined, controlling characteristics of at least one liner,
11:02.942 --> 11:06.634
or defining what those characteristics are or how they
11:06.672 --> 11:10.798
teach somebody to figure out those characteristics or how to control them? Do they
11:10.824 --> 11:14.038
go into detail about that? Great question. Absolutely.
11:14.184 --> 11:18.480
I have a slide on that because I think it's like very important.
11:19.110 --> 11:22.378
And so, yeah, like slide six or seven or something like that will get back
11:22.404 --> 11:25.630
to us. Hold that thought for a minute. The short
11:25.680 --> 11:29.690
answer is it's a short spec they do describe
11:29.750 --> 11:33.670
it but a big difference
11:33.720 --> 11:37.178
of opinion between the majority and the dissent is how sufficiently
11:37.214 --> 11:40.582
it is described. So it's not an easy thing to answer. I think
11:40.596 --> 11:44.462
we should look at it. Yeah, great question. The second independent
11:44.486 --> 11:47.878
claim 22 has the exact same
11:48.024 --> 11:51.502
preamble providing a hollow staff member in this case,
11:51.636 --> 11:54.974
instead of tuning the liner to attenuate
11:55.022 --> 11:58.426
at least two types, blah blah, blah, it's just tuning a mass
11:58.488 --> 12:02.134
and stiffness of the liner. And then instead
12:02.172 --> 12:05.962
of positioning, it's inserting there's a little bit of a discussion about
12:06.036 --> 12:09.550
are those words really different? And then the wherein clause here
12:09.600 --> 12:12.878
really just says that it's tuned resistive
12:12.914 --> 12:16.402
absorber for attenuating shell mode vibrations. And also
12:16.476 --> 12:20.294
it's tuned reactive absorber for attenuating bending mode vibration.
12:20.402 --> 12:23.974
So they do have the two different vibrations in there. But again
12:24.012 --> 12:27.794
they use that word tuning. And again the district court construed
12:27.842 --> 12:31.318
that tuning essentially to mean controlling. The mass and
12:31.344 --> 12:35.246
stiffness of at least one liner can configure the liner
12:35.318 --> 12:39.790
to match these relevant frequency or frequencies of these vibrations
12:40.170 --> 12:43.030
as basically defined in the specs.
12:44.670 --> 12:48.430
So what happened in court and why are we talking about this?
12:48.600 --> 12:52.810
The district court said claims one and 22 were patent ineligible
12:53.130 --> 12:56.338
under 101 because they related to a
12:56.364 --> 12:59.602
natural law basically and nothing more.
12:59.676 --> 13:03.230
It failed step one of the Alice
13:03.410 --> 13:07.154
101 test and it also failed step two in their opinion.
13:07.322 --> 13:10.498
In October 2019, CAFC took up this case
13:10.524 --> 13:14.494
on appeal and they affirmed both of those decisions. Claim one
13:14.532 --> 13:18.382
and 22, both patented ineligible. Ten months later
13:18.516 --> 13:22.670
they followed it up in July of 2020 with a modified opinion
13:22.730 --> 13:26.702
which changed their mind on claim one. Claim one, they decided
13:26.786 --> 13:30.598
should be remanded to the district Court and
13:30.624 --> 13:34.018
we'll talk about this more, but because it wasn't as clear,
13:34.104 --> 13:37.910
it wasn't as clear as claim 22, there were more elements
13:37.970 --> 13:41.822
in claim One that the CAFC determined
13:41.846 --> 13:45.986
were not sufficiently litigated, sufficiently discussed
13:45.998 --> 13:50.198
and argued in the district court case. So it was remanded
13:50.294 --> 13:54.746
so that they actually take up those considerations
13:54.938 --> 13:59.102
more thoroughly. So what recently,
13:59.186 --> 14:02.918
the big news last month in June is that the Supreme Court declined
14:02.954 --> 14:06.922
to hear this case. So why? What happened there?
14:07.116 --> 14:10.678
President Joe Biden's administration in May urged the
14:10.704 --> 14:13.954
high court to take up this case, saying that American Act was invention was a
14:13.992 --> 14:17.820
classic example of patent eligible industrial process.
14:18.330 --> 14:21.694
So the Federal Circuit decided previously in a six
14:21.732 --> 14:25.138
six deadlock not to re hear the case with all of its judges. In an
14:25.164 --> 14:28.534
on back, the dissenting judges said the panel's decision could
14:28.572 --> 14:32.350
threaten most every invention for which a patent has ever been
14:32.400 --> 14:35.518
granted and that the court's eligibility rulings that turn
14:35.544 --> 14:39.058
the patent system into a litigation gamble. So a lot of strong
14:39.144 --> 14:44.014
language on both sides. You'll see the dissent is
14:44.172 --> 14:47.714
what did they say? Vigorously worded
14:47.762 --> 14:51.000
dissent and I have some good quotes that also share later.
14:52.110 --> 14:55.990
So the dispute left the Federal Circuit bitterly divided and at a loss
14:56.850 --> 15:00.182
and the Supreme Court denied to hear the case. Similarly,
15:00.266 --> 15:03.658
in 2012, all twelve
15:03.744 --> 15:06.994
of the Federal Circuit active judges at the time asked the Supreme Court to hear
15:07.032 --> 15:10.702
another similarly divisive case that was also in the
15:10.716 --> 15:15.014
101 realm. And the court rejected that despite
15:15.062 --> 15:18.922
a recommendation by former President Donald Trump's administration to
15:18.936 --> 15:22.318
back it up. So everyone and
15:22.344 --> 15:25.754
then the Patent and Trademark Office spokesperson
15:25.862 --> 15:30.230
said that the ruling said after the ruling that innovation
15:30.290 --> 15:34.174
cannot thrive in uncertainty and the Patent Office is committed to making
15:34.212 --> 15:37.438
every effort to ensure that the patent system is as clear and consistent as
15:37.464 --> 15:41.242
possible. So it seems like everyone president
15:41.376 --> 15:45.240
and the Federal Circuit and there's even certain
15:46.530 --> 15:50.182
Congress, people in Congress who are on the record as wanting the
15:50.196 --> 15:53.726
Supreme Court to weigh in on some of these things and the Supreme
15:53.738 --> 15:56.698
Court has so far denied and refused to do.
15:56.724 --> 16:00.154
So the only thing we have to go on now is
16:00.192 --> 16:03.586
this CAFC modified opinion from July 2020.
16:03.588 --> 16:07.286
And David, to add to that, as a practitioner
16:07.418 --> 16:10.522
who deals with one on one responses a lot yeah.
16:10.656 --> 16:14.750
You also have two claims that have technically
16:14.810 --> 16:18.622
they have the two things that you're supposed to have to overcome one
16:18.636 --> 16:22.740
on one rejection. They have a practical application or two
16:23.430 --> 16:27.386
dampening making sure something is tuned
16:27.458 --> 16:29.880
in order to carry out something else. Right.
16:30.210 --> 16:33.874
And they are an improvement to what's out there, which is
16:33.912 --> 16:36.480
shown in the specification, I believe. But also,
16:38.550 --> 16:42.046
if there's no art here, no one else has been able to do this
16:42.168 --> 16:45.734
for this field. Right. So you have an improvement to a technical
16:45.782 --> 16:49.118
field. But the thing that makes this little quirky
16:49.154 --> 16:51.634
is it's dealing with a natural law. Hook's, law,
16:51.672 --> 16:54.874
Springs, these are things that people say,
16:54.912 --> 16:57.910
well, that's obvious, but they forget.
16:58.470 --> 17:02.050
You can have a piece of obviousness in a one on one
17:02.220 --> 17:05.818
rejected claim as long as you can still show that
17:05.844 --> 17:09.710
there's practical application, some novelty
17:09.890 --> 17:13.162
and or I guess improvement to a
17:13.176 --> 17:16.726
technical field. So this is one of the first cases where
17:16.908 --> 17:21.182
the standard toolbox that we have of overcoming one on one rejections
17:21.326 --> 17:24.442
cannot be used. And it seems to already be
17:24.456 --> 17:27.874
in the claim, but they don't even want to hear it because
17:27.912 --> 17:30.060
they're like no natural law, natural law.
17:31.410 --> 17:35.350
Your points are almost exactly what the dissent
17:36.210 --> 17:40.140
argues and those are super valid points. And I think,
17:41.430 --> 17:44.842
I actually think that the majority has some valid points and
17:44.856 --> 17:46.560
the descent has some valid points.
17:51.970 --> 17:55.854
It's a tough one. It's like you said, there are additional elements
17:55.902 --> 17:59.246
in the claims. At the same time, if you just
17:59.308 --> 18:02.390
consider claims one and 22 we'll talk about in a minute.
18:02.710 --> 18:05.774
Maybe that's not the best idea. If you just consider those
18:05.812 --> 18:09.566
claims, it is a little vague about what they really need
18:09.688 --> 18:13.842
and almost as because tune goes back to configured,
18:13.926 --> 18:17.678
it's almost functional language. Now you have to go back to the spec and does
18:17.704 --> 18:20.702
the spec really teach someone how to do that?
18:20.836 --> 18:23.738
But then you got to say to yourself, wait a second, is that 112?
18:23.824 --> 18:26.946
Is that 101? Right. Very convoluted.
18:27.078 --> 18:30.938
And I guess I sort of agree that there
18:30.964 --> 18:34.242
are some issues, you know what I mean, with this patent and the claims
18:34.266 --> 18:38.138
and the description and the way that it all comes together. But should it
18:38.164 --> 18:41.534
really have been rejected at all? And should it have been rejected under
18:41.572 --> 18:44.954
101 or invalid? That's my question.
18:45.112 --> 18:46.960
Right. The 101 issue,
18:48.130 --> 18:51.678
if you take a spring and you say that anything to do with spring cannot
18:51.714 --> 18:54.220
be patented, that's slippery slope, right?
18:56.630 --> 19:00.462
I think that's the majority thought there is wait a
19:00.476 --> 19:03.978
minute, it's not just a spring, but what else do we know,
19:04.064 --> 19:07.434
right? And the specification on this case isn't teaching enough
19:07.592 --> 19:11.214
for everyone involved to be comfortable. It was
19:11.312 --> 19:14.802
112 101 issue, right? Or maybe it should have
19:14.816 --> 19:15.380
been.
19:18.450 --> 19:22.140
I see that as a totally valid point. And then I also go back to
19:23.490 --> 19:26.746
thinking about functional language in the claim and
19:26.808 --> 19:30.778
that what does it really mean to tune a liner if
19:30.924 --> 19:35.040
the specification doesn't teach someone really how to do that,
19:35.610 --> 19:38.758
right? Anyway, it's a great point Kristen, excellent points.
19:38.784 --> 19:42.478
And we'll talk more about it and see some quotes from them about a lot
19:42.504 --> 19:46.462
of those points as we get. I just wanted to add something really quick for
19:46.536 --> 19:50.318
examiners, so they're
19:50.354 --> 19:54.986
trained to ignore functional language when it comes to device claims.
19:55.118 --> 19:58.730
So for an examiner they might have not actually given that weight,
19:58.790 --> 20:00.970
that word tuning any weights,
20:01.650 --> 20:04.814
unless the applicant or the inventor provided
20:04.982 --> 20:08.398
support through a
20:08.424 --> 20:11.558
person of ordinary skill in the art, would consider tuning.
20:11.654 --> 20:15.374
Or maybe prior art would provide some teaching of what tuning
20:15.422 --> 20:19.270
would be or how they could construct tuning
20:19.590 --> 20:23.458
from the prior art. Right, I know,
20:23.484 --> 20:26.842
exactly. It's a great point. And yeah, you can
20:26.856 --> 20:31.630
see that the CASC found claim 22 ineligible
20:32.070 --> 20:35.638
in their modified opinion and they said it simply requires the
20:35.664 --> 20:38.702
application of hook's law to tune a prop
20:38.726 --> 20:42.418
shelf liner. So even when they're talking about this natural law,
20:42.504 --> 20:45.900
it goes back to that tuning. That tuning is really key.
20:46.290 --> 20:49.738
However, claim one is remanded and what they said about that as well.
20:49.764 --> 20:53.314
Claim one also requires positioning in addition to tuning. And they saw
20:53.352 --> 20:59.174
that as different than inserting. Positioning evoked
20:59.222 --> 21:02.834
a position, putting it in a particular place rather than just inserting
21:02.882 --> 21:06.026
anywhere, and also may reflect
21:06.098 --> 21:09.290
a broader definition of tuning. And if you go back to the claims,
21:09.350 --> 21:12.838
claim 22, which was found patent ineligible, says tuning a mass
21:12.924 --> 21:16.462
and a stiffness. And David, don't worry, the next slide is
21:16.476 --> 21:19.858
about hook's law. But tuning a mass and a
21:19.884 --> 21:23.674
stiffness, that just evokes hook's law
21:23.772 --> 21:27.610
to people very clearly. But claim one just says tuning,
21:28.110 --> 21:32.402
tuning at least one liner to attenuate at least these two different types of vibrations.
21:32.486 --> 21:35.854
So then you got to go back to specification and this is potentially a
21:35.892 --> 21:39.154
broader definition of tuning that involves not just
21:39.192 --> 21:42.874
the mass and the stiffness, but other things as well. So then it's not as
21:42.912 --> 21:46.666
clear that it's just hooked law, is there kind of thought
21:46.728 --> 21:49.260
process on claim one.
21:50.310 --> 21:54.014
So we get some quotes to give a little more explanation
21:54.062 --> 21:54.840
of that.
21:58.150 --> 22:01.502
There's like one or two paragraphs on step two of the one
22:01.516 --> 22:04.962
to one framework and this is a big problem that Judge Moore
22:04.986 --> 22:08.510
had in the descent. He didn't think enough weight was given to step two.
22:08.620 --> 22:12.738
But they did talk about step two and they said that there's no inventive concept
22:12.774 --> 22:16.418
because the invention was a trial and error application of
22:16.444 --> 22:19.850
hopes law. So some quotes, what is missing from this claim?
22:20.470 --> 22:24.126
This was about 22. The ineligible one is any physical
22:24.198 --> 22:27.734
structure or steps for achieving the claimed result.
22:27.892 --> 22:31.814
And that the real inventive work lies in figuring out how to
22:31.852 --> 22:35.094
design a liner to damp two vibration modes simultaneously.
22:35.142 --> 22:38.618
And no such inventive work is recited in claim 22.
22:38.764 --> 22:43.034
And to go even a step further about the means
22:43.072 --> 22:47.334
plus function stuff, they also clearly considered the specification.
22:47.442 --> 22:50.714
They say the specification describes tuning in terms of the
22:50.752 --> 22:54.158
result achieved, rather than the particular process by
22:54.184 --> 22:57.842
which the result is accomplished. And I'll show the
22:57.856 --> 23:01.718
paragraphs in the next slide or two so you can see
23:01.744 --> 23:05.858
for yourself what the specification actually says and why the
23:05.944 --> 23:09.798
majority opinion says this, whereas the minority
23:09.894 --> 23:13.550
descending opinion says something else. So Judge Morrison descent had three major
23:13.600 --> 23:16.806
issues. One, he said, no, these are not directed
23:16.878 --> 23:21.102
to a natural law. This is a method of manufacturing
23:21.246 --> 23:24.494
a liner for a drive shaft. He also argues that there were
23:24.532 --> 23:28.770
many articulated inventive concepts that should have precluded summary
23:28.830 --> 23:32.286
judgment and that step two was not given sufficient weight.
23:32.478 --> 23:36.546
And then the third one, he argued, was that they were conflating patent eligibility
23:36.618 --> 23:39.446
under 101 with the principles of enablement under 112.
23:39.448 --> 23:42.698
And in his great quote, I feel like, is that
23:42.724 --> 23:46.206
in Judge Moore's view? This is from an article in Judge Moore's
23:46.218 --> 23:50.214
view, the majority found the claims ineligible because the patent
23:50.262 --> 23:53.738
did not teach a skilled artisan how to
23:53.764 --> 23:57.134
tune a liner. So we'll dig
23:57.172 --> 24:00.518
more into each of these things as we go, and we already
24:00.544 --> 24:03.722
talked a little bit about the means plus function. So let me just get
24:03.736 --> 24:07.082
to what we've all been waiting for. What is hooked law?
24:07.276 --> 24:10.742
So everybody might remember if they took physics like in high school,
24:10.876 --> 24:14.958
that Hooke's law is the simple equation here. Force equals
24:15.054 --> 24:19.062
k times x, k is the spring constant and x is the displacement.
24:19.206 --> 24:22.562
So if you have a spring, it has a particular property,
24:22.636 --> 24:26.514
a spring constant. And if you apply a force to it, it will extend
24:26.562 --> 24:29.622
by an amount x. And if you double the force,
24:29.766 --> 24:33.714
for instance by hanging an extra weight on a spring, doubling that force,
24:33.822 --> 24:37.322
then the displacement will extend twice as far so that's a
24:37.336 --> 24:40.574
displacement is just proportional to the force, and that
24:40.612 --> 24:43.660
proportionality constant is the spring constant, k.
24:44.050 --> 24:48.006
In this case, we're talking about frequencies and dampening
24:48.078 --> 24:51.518
vibration frequencies. So this is a little bit of an extension of books law,
24:51.544 --> 24:54.818
if you will. It's an application of books law that if
24:54.844 --> 24:58.166
you have the situation where you have a mass on a spring and you pull
24:58.228 --> 25:01.322
the mass to extend the spring and then let it go, what's going to
25:01.336 --> 25:05.378
happen? It's going to oscillate. It's going to try
25:05.404 --> 25:08.750
to get back to its equilibrium position, but it has some momentum. So it goes
25:08.800 --> 25:11.918
past the equilibrium position and then it'll continue
25:12.004 --> 25:15.806
oscillating back and forth. And since this
25:15.868 --> 25:19.360
sort of an oscillator obeys hook's law,
25:19.690 --> 25:23.006
you can solve the equations for frequency. And you find
25:23.068 --> 25:27.486
that the frequency of such an oscillating system only depends
25:27.558 --> 25:30.734
on the mass and the spring constant. It does
25:30.772 --> 25:35.070
not depend, for instance, on the amplitude of the oscillation.
25:35.250 --> 25:40.406
So due to friction, due to other
25:40.468 --> 25:43.360
losses, air resistance, what have you,
25:45.250 --> 25:48.998
those oscillations will slowly dampen over time and it will stop so
25:49.024 --> 25:53.226
that the amplitude will go down over time, but the frequency
25:53.358 --> 25:57.714
as it's going down stays the same. Similar to the situation of a pendulum.
25:57.762 --> 26:01.540
Right? And so what's interesting about this is that this
26:02.530 --> 26:06.122
invention, this law of nature that
26:06.136 --> 26:10.338
was applied in this way was used to construct the first pocket
26:10.374 --> 26:14.106
boxes in order to get an oscillator
26:14.178 --> 26:17.714
that would be portable. And you could move around
26:17.812 --> 26:21.414
in all different orientations on like a pendulum
26:21.462 --> 26:25.602
or a grandfather clock or a lot of the more elaborate, complicated mechanisms
26:25.626 --> 26:28.866
of the time. Using a little mass on a spring allows
26:28.878 --> 26:32.498
you to make a mobile timepiece, which was like a
26:32.584 --> 26:35.738
huge advance in navigation in
26:35.884 --> 26:40.238
history. And Hook was one of the adventures of those
26:40.264 --> 26:43.514
watches, by the way. It wasn't a linear spring, it was
26:43.552 --> 26:47.742
a spring, a coiled spring. And there are other kinds of mechanisms
26:47.766 --> 26:50.262
in there. It was a little more complicated than just the mass on the spring,
26:50.346 --> 26:53.918
but it was this hook's law. And that's where you see
26:53.944 --> 26:57.834
this mass, you see the stiffness,
26:58.002 --> 27:01.574
the spring constant and the mass. And if you tune those two
27:01.612 --> 27:05.618
things, that's hooked law in
27:05.644 --> 27:08.906
some abstraction. So even though the claims never say
27:08.968 --> 27:12.278
hooked law, tuning a mass and a stiffness of
27:12.304 --> 27:15.554
a liner to tune the frequency of that
27:15.592 --> 27:19.082
liner, this is where District Court originally and
27:19.096 --> 27:23.186
the CASC agreed that it was directed to a natural law
27:23.368 --> 27:26.342
cooked law. Quick question,
27:26.476 --> 27:29.090
David. Absolute for a little bit of clarity.
27:31.330 --> 27:35.330
When you're tuning that liner, they're tuning for your
27:35.380 --> 27:39.150
torsional frequency and also the bending frequency.
27:39.330 --> 27:42.374
Am I interpreting that right? Yeah, that's right.
27:42.412 --> 27:45.820
They do talk about torsion. The claims talk about the
27:46.810 --> 27:49.986
bending mode and also this shell mode,
27:50.118 --> 27:53.582
where the actual this is like a cross section of the right. But the
27:53.596 --> 27:56.714
torsion mode, even though they describe it and everything, it's not one of those two
27:56.752 --> 27:59.894
modes that's claimed yes. So you're trying to find the
27:59.932 --> 28:03.386
optimal point kind of between the two. It's in the tuning. Correct.
28:03.508 --> 28:07.002
You're trying to find the spot where you fix the torso
28:07.086 --> 28:10.814
and the bending. That's a great point. And this is one of the things that
28:10.912 --> 28:14.560
American Axle argued unsuccessfully, is that
28:15.070 --> 28:18.302
tuning to dampen two vibrational modes at
28:18.316 --> 28:22.058
the same time is not so simple and not just
28:22.084 --> 28:25.240
a simple application of folks law. It involves a lot more.
28:25.630 --> 28:29.306
And we'll get to that in a few slides. I know there's a
28:29.308 --> 28:31.850
lot in this case, like I said in the beginning,
28:32.410 --> 28:36.914
hopefully we'll have time to get to that. But that the
28:36.952 --> 28:40.540
District Court, essentially, and the CFC agreed that
28:41.170 --> 28:44.858
even though, sure, American axle may have invented a whole
28:44.884 --> 28:48.314
bunch of things to tune these liners in this way,
28:48.352 --> 28:51.450
using finite element modeling, et cetera, et cetera.
28:51.630 --> 28:55.202
That was not in the claim, and it's not even in
28:55.216 --> 28:58.046
the spec. And I think that's a huge problem.
28:58.108 --> 29:01.142
Actually, the word finite element modeling doesn't even show up in the
29:01.156 --> 29:05.642
spec. The spec is very short, and it does
29:05.836 --> 29:10.970
kind of good segue. It does describe this
29:11.020 --> 29:14.474
liner as a physical element. It has
29:14.512 --> 29:18.558
a lot like Kristen was saying, it's a lot of these practical applications
29:18.594 --> 29:22.274
and things that we look for to get around 101. So it's got
29:22.312 --> 29:24.386
the physical element, this liner 204,
29:24.388 --> 29:27.702
and it describes these bending modes,
29:27.786 --> 29:31.506
or vibration mode, bending mode, shell mode, torsion mode,
29:31.638 --> 29:35.190
right? And so it goes into that. It goes even further,
29:35.250 --> 29:39.038
and it says that the characteristics of this liner can
29:39.064 --> 29:43.154
be controlled to tune its stamping properties in these particular
29:43.252 --> 29:46.818
modes. For instance, they talk about mass, length,
29:46.914 --> 29:50.550
diameter of the liner, and they describe
29:50.610 --> 29:54.510
this liner structural features of this liner. They say it has a resilient
29:54.570 --> 29:58.470
member. The resilient member can have a helix angle and a pitch.
29:58.590 --> 30:02.080
There are other structural features to this
30:03.190 --> 30:06.806
liner. And then they give you a particular example,
30:06.988 --> 30:10.370
a particular quantitative example. Here's a drive line
30:10.420 --> 30:13.938
that has this diameter, wall thickness,
30:14.034 --> 30:17.186
length, etc. And here's a liner that works in this situation.
30:17.368 --> 30:19.370
So they do give examples.
30:20.890 --> 30:24.302
And then this, I think, is getting to
30:24.316 --> 30:27.494
the crux of the issue. What they say in the next
30:27.532 --> 30:31.034
paragraph is that it'll be appreciated in certain situations. It's not possible to
30:31.072 --> 30:34.434
exactly tune the liner to two or more relevant
30:34.482 --> 30:37.938
frequencies. And as such, it will be understood that liner
30:37.974 --> 30:42.050
204 will be considered to be tuned to a relevant frequency if
30:42.100 --> 30:46.550
it is effective in attenuating vibration at the relevant frequency.
30:46.870 --> 30:50.162
And this is exactly the sentence that the majority point to
30:50.236 --> 30:53.910
say. The specification only describes tuning
30:53.970 --> 30:58.098
in terms of a result to be achieved. It doesn't describe
30:58.194 --> 31:01.878
the steps that one must take to tune a liner.
31:01.974 --> 31:04.370
The descent disagrees.
31:05.530 --> 31:10.482
And you can see here that there are structural
31:10.566 --> 31:14.102
elements that are described about these liners. And I
31:14.116 --> 31:17.390
think this is a really interesting, I think, side note on this case,
31:17.440 --> 31:22.466
too. There are, what, ten or
31:22.468 --> 31:26.238
eight dependent claims off of both of the independent
31:26.274 --> 31:30.630
claims, one and 22, that do claim,
31:30.810 --> 31:34.758
specifically claim, these structural features. You've got a disresilient
31:34.794 --> 31:38.418
member, you've got the resilient member, extensive helically or longitudinally
31:38.454 --> 31:42.282
or circumferentially. You've got different materials
31:42.426 --> 31:46.550
involved, cardboard, plastic, carbon fiber,
31:46.990 --> 31:51.086
and even some defendant claims about
31:51.148 --> 31:54.570
positioning the liner symmetrically, about a bending
31:54.630 --> 31:58.420
antenna node and things that are actually like very
31:58.870 --> 32:02.586
more or less specific structural features
32:02.658 --> 32:06.362
of these liners. So what the majority says is
32:06.376 --> 32:09.722
that the district court and this is what happened,
32:09.916 --> 32:14.090
the majority and the district court treated independent claims one and 22
32:14.140 --> 32:17.438
as representative of all of these.
32:17.584 --> 32:21.342
Dependent claims, and the dissent disagrees
32:21.366 --> 32:24.702
with that entirely. The dissent says, I do not agree with the majority
32:24.726 --> 32:28.802
of conclusion that claims one and 22 are representative, or that American
32:28.876 --> 32:32.286
Axle waived its arguments as to the dependent claims.
32:32.418 --> 32:35.906
First Nepo, who was the other party in
32:35.908 --> 32:39.162
the case, never argued that claims one and 22 representatives,
32:39.186 --> 32:42.422
in fact, argued the dependent claims separately, and American
32:42.496 --> 32:45.834
Axle expressly argued that they are not representative.
32:46.002 --> 32:49.682
And I think it seems like
32:49.756 --> 32:53.118
a small thing in some ways, like, oh, claim one and 22 are representative.
32:53.154 --> 32:56.042
We're just going to go with that. We're not even considered dependent claims, but if
32:56.056 --> 32:59.618
they had, it might have been a lot harder for them to say no,
32:59.644 --> 33:04.202
there are no structural features here that teach one how to
33:04.276 --> 33:08.454
tune this thing. They may have came to the same conclusion due
33:08.502 --> 33:11.810
to, for instance, inadequacies of the specification,
33:12.550 --> 33:16.446
even though there's a resilient member.
33:16.638 --> 33:20.238
How do you tune that resilient
33:20.274 --> 33:23.750
member to dampen a bending mode at a particular
33:23.860 --> 33:27.434
frequency? That's what I see
33:27.472 --> 33:31.266
as missing, by the way, entirely. The crux of that invention
33:31.338 --> 33:34.782
is the tuning or the positioning. And nobody's
33:34.806 --> 33:39.174
saying position until position. Why position? Because there's
33:39.222 --> 33:43.218
just nothing in there. So I guess I fall somewhere
33:43.254 --> 33:47.114
in the middle. I think there's enough structure to get
33:47.152 --> 33:50.990
you out of 101, but I don't know that there's enough content
33:51.160 --> 33:53.920
and teaching to get you over 112.
33:54.550 --> 33:57.770
Right? Yes. And the
33:57.880 --> 34:01.730
dissent actually almost uses the exact same argument. They say they
34:01.780 --> 34:05.714
totally disagree that it should be ineligible under 101. This is absolutely
34:05.812 --> 34:08.990
eligible under. But they actually
34:09.160 --> 34:12.950
left the question open. They said there are many inventive concepts that
34:13.060 --> 34:16.178
go beyond natural law, but they leave it an open question.
34:16.264 --> 34:20.370
Is there sufficient enablement
34:20.550 --> 34:24.338
to satisfy 112? I feel like this is like a common thing with
34:24.364 --> 34:28.434
the courts, though. Like they buy their partial
34:28.482 --> 34:31.898
opinions almost that they give they leave more ambiguity than they do fix. It.
34:31.924 --> 34:35.418
Like the whole Google Oracle case, we're going to kind of rule
34:35.454 --> 34:39.386
on things, but we're never going to tell you if APIs are actually
34:39.508 --> 34:42.962
copyrightable. Right. We're going to kind of leave that. And the same
34:42.976 --> 34:46.060
with this case. Okay, yeah, we're good for
34:46.690 --> 34:50.678
certain of the judges believe that it's fine for 101,
34:50.704 --> 34:54.530
but we're not going to address 112 and they kind of leave it.
34:54.700 --> 34:58.458
And I know it's because there's a whole bunch of rules
34:58.494 --> 35:01.130
and how things proceed in court proceedings and things like that,
35:01.180 --> 35:04.346
but I feel like we're always like doing
35:04.408 --> 35:07.418
90% and then we never take it the last 10%,
35:07.504 --> 35:10.070
which would, I think, clear up some of the ambiguity.
35:10.450 --> 35:14.402
Yeah. Kristen and I totally agree.
35:14.536 --> 35:18.350
And I actually wonder I don't know, I haven't read anything
35:18.400 --> 35:22.058
about this. I'm not totally sure what the Supreme Court was thinking. But I do
35:22.084 --> 35:25.454
wonder if they declined to take the case because it is a little
35:25.492 --> 35:28.934
bit complicated and
35:29.032 --> 35:32.440
not an ideal. It's a little bit messy. It's not a really clean
35:32.770 --> 35:36.002
one on one discussion. There's like a lot of different things
35:36.016 --> 35:39.410
that go into it. So yeah, maybe I'm trying to get
35:39.460 --> 35:46.042
some highlights now we've
35:46.066 --> 35:49.714
talked about these things a bunch. The majority says that claim
35:49.762 --> 35:53.758
22 confers patent coverage if the attenuation
35:53.854 --> 35:57.718
goal is achieved by one skill in the art using any method
35:57.874 --> 36:01.050
including any method implemented by computer modeling and
36:01.100 --> 36:04.554
trial and error so that the claim on a face does not identify the
36:04.592 --> 36:08.370
particular tune, liner or improved method of doing that.
36:08.480 --> 36:12.070
And it's a really interesting quote. American Axel argued
36:12.130 --> 36:15.210
that one could infringe claim 22 by
36:15.260 --> 36:18.330
whatever means will achieve the result even
36:18.380 --> 36:22.040
if you didn't try to tune it and didn't know you did it.
36:22.910 --> 36:26.538
So that kind of I think maybe worked against them in
36:26.564 --> 36:30.618
some ways because it fed into this argument that it's not a
36:30.644 --> 36:33.310
clear, concise, explicit invention,
36:33.490 --> 36:36.810
it's vague and results oriented.
36:39.690 --> 36:43.680
The majority concedes or at least argues that
36:44.010 --> 36:47.882
these established processes and improved processes are not claimed.
36:48.026 --> 36:51.898
American actor may have discovered patentable refinements such
36:51.924 --> 36:55.850
as particular uses of a sophisticated finite element analysis
36:55.910 --> 37:00.010
model during its design process but neither the specifics
37:01.050 --> 37:04.380
of any novel computer modeling or of any
37:05.550 --> 37:09.182
experimental modal analysis are included as limitations
37:09.266 --> 37:12.442
in claim 22 and also the
37:12.456 --> 37:15.862
specification only describes tuning in results in
37:15.876 --> 37:19.114
terms of the result achieved rather than a particular process by
37:19.152 --> 37:22.714
which it's accomplished. So what
37:22.752 --> 37:26.698
the majority says is what's missing is any physical structure or
37:26.724 --> 37:30.646
steps for achieving the claim result. Now, to be fair, the dissent argues against
37:30.708 --> 37:33.994
that because the defend is looking at the defendant claims and says
37:34.152 --> 37:38.198
that's not true. There are physical structures and steps
37:38.234 --> 37:41.854
for achieving the claimed result, at least
37:41.892 --> 37:45.658
an attempt to put those structures and
37:45.684 --> 37:48.922
methods in there. But I think to Ashley's and Christmas point was
37:48.936 --> 37:52.438
it enough? Wasn't enough. I think that's a tough thing to
37:52.464 --> 37:55.402
answer and I did want to hit on these too because I think this is
37:55.416 --> 37:58.570
really interesting. This isn't in a vacuum.
37:58.890 --> 38:03.962
There is case law that Supreme Court ruled
38:03.986 --> 38:07.810
on and that the AFC relied on. So there's this really important case
38:07.860 --> 38:11.830
Parker v. Fluke which was a case about
38:11.880 --> 38:16.234
calculating and updating an alarm limit and they found that
38:16.332 --> 38:20.518
patent to be patent ineligible under 101 and the reason why
38:20.664 --> 38:24.278
is because as in Fluke, the claim method did not specify
38:24.374 --> 38:28.150
how variables were measured or how the alarm system functioned.
38:28.590 --> 38:32.398
Claim 22 here does not specify how target frequencies are determined or
38:32.424 --> 38:36.274
how using that information, the liners are tuned. So this is in
38:36.312 --> 38:40.034
contrast to a deer case Duamon versus Deer
38:40.142 --> 38:43.414
which was an eligible under
38:43.452 --> 38:47.426
101 and it recited a calculation
38:47.618 --> 38:50.830
for a mold in a process to cure rubber,
38:51.450 --> 38:54.950
a mold temperature calculation in a process to cure
38:55.010 --> 38:58.874
rubber and in deer, unlike in this case, these other steps
38:58.922 --> 39:03.134
apparently added to the formula something that in terms of patent laws objectives
39:03.182 --> 39:07.090
had significance. In other words, they transform the process into
39:07.140 --> 39:10.390
an inventive application. Of the formula
39:11.430 --> 39:14.834
in here, there was enough described.
39:14.942 --> 39:18.338
They talk about, yes, it relied on this equation,
39:18.434 --> 39:21.694
but they also described how to use and
39:21.732 --> 39:25.618
implement that equation and therefore transform the
39:25.644 --> 39:28.200
process into an inventive application.
39:29.610 --> 39:32.734
So what this is saying is basically
39:32.832 --> 39:36.346
the application lacked an embodiment where those
39:36.408 --> 39:40.838
elements, those structural elements that contribute to controlling
39:40.874 --> 39:46.154
those frequencies, there wasn't some kind of enabling embodiment
39:46.202 --> 39:49.574
that disclosed how they should be adjusted.
39:49.622 --> 39:53.402
Right. How they should be fixed
39:53.426 --> 39:57.134
or changed so that they accomplished the claim
39:57.182 --> 40:00.838
dimension. Right. That's a good way to put it. Exactly. They were trying
40:00.864 --> 40:04.870
to claim a result without structural
40:05.730 --> 40:10.190
components or method steps that unambiguously
40:10.250 --> 40:13.560
clearly taught someone how to achieve that result.
40:14.730 --> 40:18.106
Then you can argue back and forth again, is that a 101 issue or is
40:18.108 --> 40:21.478
it a 112 issue? But I think we kind of all agree that there
40:21.504 --> 40:24.610
is an issue with that.
40:24.660 --> 40:28.450
You can't right. So it's
40:30.870 --> 40:34.970
a lot more we can say about that. But interestingly,
40:35.030 --> 40:39.046
I didn't know this Luke was actually also used
40:39.108 --> 40:43.642
by the Supreme Court to support Alice and
40:43.776 --> 40:47.098
they say in the Alice case that Fluke is to the same effect
40:47.244 --> 40:50.942
and that Fluke stands for the proposition that prohibiting
40:51.026 --> 40:55.058
against patenting abstract ideas cannot be circumvented by attempting
40:55.094 --> 40:59.090
to limit the use of the idea to a particular technological environment.
40:59.210 --> 41:02.290
And it's interesting, that was a quote from Bilski.
41:02.790 --> 41:06.180
So this Bluke is all over the place and
41:08.070 --> 41:10.560
it's kind of like what Kristen was saying.
41:12.090 --> 41:16.262
It's clearly a particular technological
41:16.346 --> 41:20.330
problem that they're trying to solve. And what Fluke apparently
41:20.390 --> 41:23.160
is used for by the courts is to say that's not enough.
41:23.610 --> 41:27.554
Just saying you're going to apply a natural law to a particular technological
41:27.602 --> 41:32.390
problem without sufficiently explaining structural
41:32.450 --> 41:36.526
and or method steps that explain how to apply
41:36.648 --> 41:40.502
that natural law, just putting it in a technological environment
41:40.526 --> 41:44.158
is not enough. So I thought that was pretty interesting. That's something that is
41:44.184 --> 41:47.818
like now I think in some ways I feel
41:47.844 --> 41:51.566
like this
41:51.628 --> 41:55.278
American Axel case, people are up in arms
41:55.314 --> 41:58.490
about it for sure and a lot of people are talking about how
41:58.540 --> 42:01.742
different it is from the case law history and
42:01.756 --> 42:06.002
how they've totally just taken a left turn. And I think in
42:06.016 --> 42:09.580
their mind, in the majority's mind, luke is what helped them
42:10.510 --> 42:14.418
actually bring it all make their decision
42:14.574 --> 42:18.542
in light of the prior decisions, not completely
42:18.616 --> 42:20.080
a left turn from those.
42:21.550 --> 42:25.660
So claim one is a little bit different. Right? And we talked about that.
42:27.910 --> 42:32.020
The CAFC said that claim one could be an abstract idea,
42:32.890 --> 42:36.378
but that this abstract idea was not adequately presented
42:36.414 --> 42:39.978
and litigated in the district court. So that's why they remanded
42:40.014 --> 42:43.958
it. They didn't really put
42:43.984 --> 42:47.054
any hint about whether they thought it should be eligible or not. They just said
42:47.092 --> 42:51.650
that there's more in there that was not adequately
42:52.330 --> 42:56.322
argued and therefore it's not proper for the CISP
42:56.346 --> 42:59.634
to make a summary judgment on these facts
42:59.682 --> 43:03.654
or other these aspects because they weren't sufficiently handled
43:03.702 --> 43:06.590
at the district court level. So now it's been remanded.
43:07.210 --> 43:09.760
Okay, so the dissent, this is fun.
43:11.410 --> 43:16.060
The dissent actually says that this
43:16.570 --> 43:20.222
majority is holding that these claims are ineligible to send shockwaves through the
43:20.236 --> 43:23.774
patent community. So there are some great quotes in here. The first one is
43:23.812 --> 43:27.174
from Representative Doug Collins. It's unthinkable.
43:27.282 --> 43:31.000
The courts found this invention of manufacturing process for making a key
43:31.450 --> 43:34.970
automotive part as patent ineligible. The next one,
43:35.020 --> 43:38.882
which was a Bloomberg article, said american action is a poster child
43:39.016 --> 43:42.242
for how the current test for patent eligibility is being applied to reach rather
43:42.316 --> 43:46.480
absurd results. And that
43:47.350 --> 43:50.918
if industrial processes, physically based patents like
43:50.944 --> 43:55.218
these are ineligible under Mayo Alice, then seemingly every patent
43:55.314 --> 43:58.718
is in ineligibility jeopardy. You just go on and
43:58.744 --> 43:59.560
on, right?
44:02.810 --> 44:06.102
There are some fun quotes in there, but clearly there's a lot of
44:06.116 --> 44:09.490
controversy about this case. What does the descent say? The descent
44:09.550 --> 44:12.970
has some vigorous language
44:13.090 --> 44:16.182
and basically talks about
44:16.256 --> 44:19.858
sort of two different things. The first thing is about how natural laws
44:19.894 --> 44:23.518
in this case and step two of the Alice
44:23.554 --> 44:26.994
Mayo 101 analysis, which is there
44:27.152 --> 44:31.570
something that's significantly more than just this abstract
44:31.690 --> 44:35.278
concept or natural law. So, as the defense
44:35.314 --> 44:38.862
says, a disturbing amount of confusion will surely be caused by
44:38.876 --> 44:42.522
this opinion, which stands for the proposition that claims can be ineligible as
44:42.536 --> 44:46.870
directed to a natural law, even though no actual natural law is articulated
44:46.990 --> 44:50.358
in the claim or even the specification. So that
44:50.384 --> 44:54.450
is a really interesting statement because that apparently is pretty different from
44:54.500 --> 44:58.822
most, if not all of the previous cases in this area. Previous cases
44:58.966 --> 45:02.358
all talk about natural laws or even claimed natural laws in some
45:02.384 --> 45:06.102
way, whereas this case didn't. And that goes on
45:06.116 --> 45:09.994
to say holding these claims ineligible under a purported natural law analysis leaves patentees
45:10.042 --> 45:13.098
awash in a sea of uncertainty. How can
45:13.124 --> 45:16.434
one determine if a claim is directed to a natural law without a natural law
45:16.472 --> 45:20.730
being apparent either on the face of the claim or under a proper claim construction?
45:21.050 --> 45:25.006
He goes on to say goodness sakes. The dependent
45:25.078 --> 45:29.686
claims held ineligible by the majority specify the material
45:29.878 --> 45:33.162
the liner must be made of, the actual physical form it
45:33.176 --> 45:37.078
must take with fingers circumferentially wrapped or over molded
45:37.174 --> 45:40.842
and placed, and the place the liners must be positioned. And he
45:40.856 --> 45:44.478
says it is remarkable that the majority thinks that claims with all
45:44.504 --> 45:48.166
of these very physical, very concrete, very structural limitations
45:48.298 --> 45:52.678
are missing any physical structure or steps. A fiberglass
45:52.714 --> 45:56.770
liner with a helically shaped resilient member extending circumferentially
45:56.890 --> 46:00.342
around the liner or over molded to the structural portion of the
46:00.356 --> 46:03.942
liner certainly feels like the physical structure that the
46:03.956 --> 46:06.466
majority says is missing from the claim.
46:06.658 --> 46:10.542
And the district court and Cafe were
46:10.556 --> 46:13.978
very clear that they were not looking at depending claims. They were saying that claim
46:14.014 --> 46:17.358
one and 22 were representative. And I think what
46:17.504 --> 46:20.790
the dissent is saying here, Judge Moore is saying is that
46:20.900 --> 46:24.800
that was a mistake. So David, one of the things here that is
46:25.250 --> 46:28.686
a little bit hidden when you say structure or
46:28.748 --> 46:32.134
steps, I think the way the court uses
46:32.182 --> 46:36.054
that language really is you're missing structure or
46:36.092 --> 46:39.282
you're missing steps. So in this case it would maybe be
46:39.296 --> 46:42.690
missing steps even though there's loads of structure.
46:44.630 --> 46:46.160
I know what you mean. Yeah,
46:47.510 --> 46:50.674
right. And missing steps.
46:50.722 --> 46:54.258
Exactly. Missing steps. Maybe teaching someone how to
46:54.284 --> 46:58.242
tune and then how do you teach someone how to tune? You've got
46:58.256 --> 47:01.834
to talk about some maybe it's a finite element
47:01.882 --> 47:05.082
model. It could be a process. They could describe some kind
47:05.096 --> 47:08.310
of process they go through, or they could describe some
47:08.360 --> 47:12.178
kind of a process of changing
47:12.214 --> 47:15.260
a dimension of a structural feature or whatever. Right.
47:16.010 --> 47:19.110
I know we kind of gloss over structure steps.
47:20.270 --> 47:24.138
It could be as simple as like within diamond v. Deer, where they do something
47:24.224 --> 47:27.630
until something occurs and that is how the problem
47:27.680 --> 47:30.740
is solved. So another step
47:31.130 --> 47:34.458
maybe would have helped them. I don't think they had it in their
47:34.484 --> 47:38.202
specification, but if they could have, just adding that to
47:38.216 --> 47:40.700
the claim might have helped them. Right.
47:41.930 --> 47:45.582
I was also just wondering too if the broader claim would
47:45.596 --> 47:50.026
have been okay had they had a few examples in their spec that said here's
47:50.158 --> 47:53.058
one way to do it, here's another way to do it. And obviously they had
47:53.084 --> 47:56.322
the structure there, so they would have just kind of packaged those into a
47:56.336 --> 48:00.322
few examples of again, we deserve this broad
48:00.406 --> 48:04.242
claim because here's four different ways to
48:04.316 --> 48:08.274
achieve this breath. Right? Yes. Again, a 112
48:08.432 --> 48:15.354
issue more so probably. Right. I know if
48:15.392 --> 48:18.606
this was invalidated due to 112, I think it
48:18.608 --> 48:22.254
would have been a lot less controversial. Would that have been correct?
48:22.352 --> 48:25.686
I don't know. But I feel like that invoking 101, in this case,
48:25.748 --> 48:29.542
really, things made matters worse.
48:29.626 --> 48:33.438
It didn't have clarity, it sort of made things more confusing. So I
48:33.464 --> 48:36.954
get why there's so much controversy about it. I think
48:36.992 --> 48:40.894
that's the bigger issue in general panel right now. I think they're kind of mushing
48:40.942 --> 48:44.998
together all of the things. Right. You have these practical application inventive
48:45.034 --> 48:48.680
stuff. In 101, you have some 112 issues
48:49.190 --> 48:52.410
and one on one and 112 being conflated.
48:54.050 --> 48:57.140
I feel like you're trying to make a one size fits all
48:57.650 --> 49:01.086
test, but then saying it's only under 101, you know what I
49:01.088 --> 49:04.160
mean? But yet it encapsulates all the difference.
49:06.050 --> 49:09.534
I don't know if I put that in, but almost exactly that. The Descent actually
49:09.572 --> 49:13.640
just said that in a paragraph that there's 101,
49:14.630 --> 49:18.562
it's carrying too much here. We just talked about natural
49:18.586 --> 49:21.882
laws in step two. Again, the defense like actually was
49:21.896 --> 49:25.700
just bringing up didn't agree that
49:26.270 --> 49:29.358
with the majority and that thought the majority was conflating 101 and 112.
49:29.384 --> 49:34.922
And Judge
49:34.946 --> 49:38.362
Moore says that the majority's concern is not preemption of a
49:38.376 --> 49:42.010
natural law, which should be the focus, but rather that
49:42.120 --> 49:45.550
the claims do not teach a skilled artisan how to do an aligner without
49:45.600 --> 49:48.658
trial and error. And it's clear from
49:48.684 --> 49:52.730
the claims themselves that the functional result is to drive shaft with reduced vibrations.
49:52.790 --> 49:56.350
It is undisputed that there exist many ways to attenuate these
49:56.400 --> 50:00.420
things, including these physical structures. And that
50:01.230 --> 50:04.454
the only remaining question is what a skilled artisan
50:04.502 --> 50:08.062
know how to adjust the mass, stiffness and positioning of the
50:08.076 --> 50:12.302
liner in order to damp vibration without undo experimentation.
50:12.446 --> 50:15.554
And then they said yes, this is a question of enablement,
50:15.602 --> 50:19.282
not eligibility. And this is
50:19.296 --> 50:24.502
what actually this is, this is the code I was looking for. That the
50:24.516 --> 50:27.970
majority to concern is with these claims is not the directed hook's law, but rather
50:28.020 --> 50:31.670
that they haven't claimed precisely how to tune the liner.
50:31.790 --> 50:35.950
And that he goes on to say the majority
50:36.270 --> 50:39.758
concludes that the event of concepts makes no difference and section
50:39.794 --> 50:43.502
101 should not be this sweeping and this manipulatable,
50:43.586 --> 50:46.874
should not be used to invalidate claims under standards identical
50:46.982 --> 50:51.074
to those clearly articulated in other statutory sections,
50:51.182 --> 50:54.422
should not subsume 112, should not convert traditional
50:54.506 --> 50:57.922
questions of fact like undo experimentation into legal ones.
50:58.056 --> 51:01.658
And the majority of validity Gulash is troubling and inconsistent
51:01.694 --> 51:04.238
with the patent statute and precedent.
51:04.394 --> 51:08.210
And the majority worries about result oriented
51:08.270 --> 51:11.974
claiming they are worried about result
51:12.072 --> 51:15.262
oriented judicial action, the last
51:15.336 --> 51:17.650
sentence in their dissent.
51:19.230 --> 51:23.014
So I think there's an open question if
51:23.052 --> 51:27.600
Judge Moore is correct, then would these claims be invalid under 112?
51:28.830 --> 51:32.242
I think there's a reasonable question there, but I
51:32.316 --> 51:36.430
definitely wanted to get to this because the majority actually responded to that since
51:36.480 --> 51:41.294
there was a modified opinion. This quote
51:41.342 --> 51:44.858
I just put up with from the 2019 and original opinion
51:44.894 --> 51:48.422
in 2020. The court says three the dissent criticizes
51:48.446 --> 51:51.842
our analysis as improperly merging enablement and eligibility.
51:51.986 --> 51:55.774
But we think the criticism rests on a failure to distinguish two different
51:55.872 --> 51:59.198
how requirements in patent law. The first requirement
51:59.234 --> 52:03.094
out of eligibility is of the claim itself, whether by
52:03.132 --> 52:07.382
its own words or by statutory incorporation of specification
52:07.466 --> 52:10.834
details under 112 F. 112 F is means
52:10.872 --> 52:14.246
plus function, right? So it is the claim.
52:14.438 --> 52:17.974
But when you have needs plus function claim, the claim has
52:18.012 --> 52:22.090
to be evaluated in reference to the specification.
52:23.430 --> 52:25.920
That gets really confusing really fast.
52:26.310 --> 52:29.962
And then they say it must identify how the functional result is
52:29.976 --> 52:33.970
achieved by limiting the claim scope to structures, et cetera.
52:34.290 --> 52:39.774
But the second distinct how requirement
52:39.822 --> 52:43.298
applies to the specification, not the claim. Where then the
52:43.444 --> 52:47.142
specification needs to teach someone how to make and use the claim structures.
52:47.286 --> 52:51.306
So their point was that this first how possibly
52:51.438 --> 52:54.830
under this means plus function umbrella,
52:55.450 --> 52:59.320
that there has to be enough.
53:00.250 --> 53:03.878
You can't just claim a result, there has to be enough in the
53:03.904 --> 53:07.946
claim itself to claim something that
53:08.008 --> 53:11.574
is concrete or else it's
53:11.622 --> 53:15.218
abstract or it's a natural law and therefore it is
53:15.244 --> 53:19.206
ineligible under 101. I think this is the sort of the best explanation
53:19.278 --> 53:23.202
I've seen that they've given for why they chose
53:23.286 --> 53:27.546
101 and not 112 for their analysis.
53:27.678 --> 53:31.742
So who has some sort of parting thoughts? I guess I
53:31.756 --> 53:35.282
just have one simple thing in my thought process.
53:35.416 --> 53:39.290
I never think about how when I look at 101
53:39.340 --> 53:42.618
eligibility, ever. This to me screams
53:42.654 --> 53:45.520
112 when you start asking how,
53:45.850 --> 53:48.880
but just an opinion. Go ahead, Ty.
53:49.930 --> 53:53.322
Interesting. I was just going to ask you David, what are your thoughts
53:53.346 --> 53:56.414
were in kind of like boiling this down? Do you feel
53:56.452 --> 54:00.270
that this is American Axel's failure
54:00.330 --> 54:04.300
to recognize the actual invention? Because to me it almost sounds like
54:04.750 --> 54:08.282
the actual invention they feel is just a tool on the
54:08.296 --> 54:12.062
way to the invention and maybe that's why they under disclose the
54:12.076 --> 54:15.160
specification. Interesting question.
54:15.730 --> 54:19.022
Did they not realize that the invention was
54:19.036 --> 54:22.758
the tuning or was it a business decision, for instance,
54:22.854 --> 54:26.502
to not provide a lot of details on the finite element modeling,
54:26.526 --> 54:28.854
et cetera, because they were trying to keep that trade secret?
54:28.962 --> 54:32.738
Yeah, it could have been in this like
54:32.764 --> 54:35.718
first to file world. I don't know. I guess when this is filed, maybe it's
54:35.754 --> 54:39.002
pre that, I don't know. But you always end up with a chicken or the
54:39.016 --> 54:42.482
egg problem, right? You have inventors who
54:42.676 --> 54:46.118
start to play around with something, right, and then you're like,
54:46.144 --> 54:49.398
oh wow, this is going to be huge, we got to get this on file.
54:49.554 --> 54:52.646
And then the one year date comes along and they're like,
54:52.708 --> 54:56.200
yeah, this is still totally going to work,
54:57.070 --> 55:00.254
we got this. But you know exactly how it's going to work.
55:00.292 --> 55:04.060
We're not sure quite yet, but hey,
55:04.870 --> 55:08.774
let's go ahead and file this broader patent because that's like,
55:08.812 --> 55:12.506
it's solid, we know it's going to be a thing and then we'll do another
55:12.568 --> 55:15.398
application later that's more species specific, right?
55:15.424 --> 55:18.938
That we're going to talk about this finite element analysis way
55:18.964 --> 55:22.730
of doing it and then we're going to talk about this other helical
55:23.170 --> 55:27.002
material properties way of doing it and whatever you
55:27.016 --> 55:30.122
have to wonder if I think that the first to
55:30.136 --> 55:33.700
file thing and provisional stuff are fantastic. But there is a little bit of this
55:34.030 --> 55:37.710
game that you have to play of when do we disclose.
55:37.770 --> 55:41.258
When do we convert? Is the one year the
55:41.284 --> 55:44.618
appropriate time to convert? Is there a way, should we refile the
55:44.644 --> 55:48.434
provisional and restart the clock? And I also wonder if there wasn't some
55:48.592 --> 55:49.780
of that happening.
55:51.670 --> 55:55.454
Interesting thought. Definitely there was one
55:55.492 --> 55:59.582
other argument that American Axle used which I
55:59.656 --> 56:03.858
didn't have time to get to, but in their prior
56:03.894 --> 56:07.386
art search and in their knowledge tuning,
56:07.518 --> 56:11.382
or rather attenuating bending mode vibrations
56:11.406 --> 56:14.402
in a drive shaft was never done before,
56:14.596 --> 56:18.686
ever using any liner of any kind. And so
56:18.808 --> 56:22.526
I actually wonder, like you were saying, Ty, they may not
56:22.588 --> 56:25.758
have thought that the invention so heavily relied
56:25.794 --> 56:29.270
on this tuning. I think they may have thought that, well,
56:29.380 --> 56:32.502
let's talk about what we did in these independent
56:32.526 --> 56:35.858
claims in a really broad way. Shoot for the moon. And then in our
56:35.884 --> 56:39.438
dependent claims, we're going to have all the detailed structural
56:39.474 --> 56:43.038
features that we use to achieve this result. And they may have been pleasantly
56:43.074 --> 56:47.440
surprised that claims 222 were allowed by the patent office.
56:48.430 --> 56:51.880
And I think that now they're just beside themselves.
56:52.270 --> 56:56.502
That like, wait, we have this structural,
56:56.646 --> 57:00.470
unique invention that no one ever did before. It's clearly a thing.
57:00.580 --> 57:03.914
It's not hook's law. And the
57:03.952 --> 57:07.538
way that the claims were drafted and the way that they chose one
57:07.564 --> 57:11.150
and 22 to be representative, and now the way that it's
57:12.430 --> 57:16.758
so broad with the tuning
57:16.794 --> 57:21.134
language and functional language, yes, it might have just been
57:21.172 --> 57:24.422
surprising. This whole thing might be surprising to them.
57:24.556 --> 57:27.878
In hindsight, maybe it makes sense, but not something that
57:27.904 --> 57:31.230
they thought about upfront. They thought they had this in the bag.
57:31.290 --> 57:34.826
They thought they had this great solid mechanical invention that no
57:34.828 --> 57:35.800
one ever did.
57:39.590 --> 57:45.166
They might have, but nobody knew the
57:45.168 --> 57:48.814
bathwater. Yeah. Well, one thing
57:48.852 --> 57:51.826
we hadn't considered here, and we'll never know, is,
57:51.948 --> 57:56.362
was this a case where you had one practitioner writing the claims and another,
57:56.556 --> 57:59.986
maybe more junior writing the specification and
58:00.108 --> 58:03.360
not having some of those tuning details? Just said,
58:03.810 --> 58:07.330
we just tuned it. These are the components used to tune it.
58:07.500 --> 58:11.162
This is some detail that I have and then filed
58:11.186 --> 58:15.194
it. I don't know. Yeah, they made the specs
58:15.242 --> 58:17.830
abstract and broad as well as the claims.
58:22.510 --> 58:25.646
Yeah. It would be interesting to
58:25.648 --> 58:28.466
be a fly on the wall for the history of this one.
58:28.528 --> 58:31.994
Right. How do we get to where we are?
58:32.152 --> 58:35.378
I feel like that's because American Axle, you don't normally know what it means.
58:35.464 --> 58:39.386
Right. It has a subscure name, but it sounds almost kind of dark. So I
58:39.388 --> 58:42.962
feel like you can do a documentary. American Axel History in the
58:42.976 --> 58:46.370
Making the controversial world
58:46.420 --> 58:48.170
of drive liners.
58:50.350 --> 58:53.450
Actually, get Josh on that interviewing.
58:55.570 --> 58:59.054
You do the investigative history, you find all the practitioners and the
58:59.092 --> 59:02.462
engineers and the business people at
59:02.476 --> 59:06.102
the company at the time. Why did you make the decisions
59:06.126 --> 59:09.806
you made? Right. People would probably actually
59:09.868 --> 59:13.238
watch it, given how much at least I would probably if I
59:13.264 --> 59:14.750
saw that on Netflix.
59:17.930 --> 59:21.646
Nice. Well, thanks everybody. It was a great discussion. Thanks for all your input.
59:21.838 --> 59:25.030
Thank you, David. Yeah,
59:25.080 --> 59:27.682
absolutely. Discussion. Bye. Thank you,
59:27.696 --> 59:31.246
guys. Bye. All right, that's all for today,
59:31.308 --> 59:34.894
folks. Thanks for listening. And remember to check us out@aurorapatins.com
59:34.932 --> 59:38.414
for more great podcasts, blogs, and videos covering all things patent
59:38.462 --> 59:41.446
strategy. And if you're an agent or attorney and would like to be part of
59:41.448 --> 59:45.274
the discussion, or an inventor with a topic you'd like to hear discussed, email us
59:45.312 --> 59:48.658
at podcast@aurorapatins.com do remember that this
59:48.684 --> 59:52.198
podcast does not constitute legal. You advice. And until next time, keep calm and
59:52.224 --> 59:52.720
patent on.