Patents and Driveshafts

A driveshaft is the roughly cylindrical doohicky of an automobile that transfers mechanical energy from the engine or transmission to the wheels. Unsurprisingly, every driveshaft obeys the laws of physics. More specifically, every driveshaft obeys what is called Hooke's law, which describes the dampening of vibrations. 

Now some controversial litigation involving a driveshaft is before the US Supreme Court and it may help clarify, or further muddy, the question of what the high court has meant, in other recent cases, when it has said that a natural law is not eligible for patent. At one level, it seems obvious enough. Nobody can patent Newton's law of gravity and sue the owners of orchards if their apples fall to the ground without a proper licensing deal. But nobody has actually tried to patent Gravity. And it is not obvious whether anyone is now really trying to patent Hooke's law. 

The case is AMERICAN AXLE v. NEAPCO HOLDING. American sued Neapco in the US district of Delaware, alleging that Neapco had infringed its patent. The trial court held that the claims were ineligible for patent protection. 

That view was upheld by a panel of the appellate court. 

Here's a dramatic twist: Napco appealed from the panel to the Federal Circuit appellate court, and the full court -- tied. Opinion split right down the middle: 6 to 6. As they say in baseball, "the tie goes to the runner." If the ball and the runner arrive at the plate simultaneously, the runner is safe. Likewise, a tie upholds the view of the court (or in this case the panel) below. 

The dramatic tie indicates the level of uncertainty about this "law of nature" stuff. So it is now up to SCOTUS. 

The relevant test here is known as the Mayo/Alice test. That term is drawn from the two key precedents, 

Mayo Collaborative v. Prometheus Laboratories (2012) and Alice Corp v. CLS Bank (2014). I have discussed them both in this blog before: Beginning a Discussion of the Supreme Court Term (jamesian58.blogspot.com). 

The two-part Mayo/Alice test is this: A reviewing court must first decide whether the claims are directed to a patent-ineligible concept; and even if it is, the court, second, must determine whether the claim’s elements, which may be considered individually and in combo, transform the nature of those claims into a patent-eligible application. 

That may not sound to you like a monument to judicial clarity. And that might be the problem.