The SG’s American Axle brief highlights that Alice has become too unpredictable to be useful.
Zachary Silbersher
There is the distinct possibility that Section 101 is finally returning to the Supreme Court. In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891, the Supreme Court invited the Solicitor General for the views of the United States on the pending petition for certiorari. In response, Solicitor General recommended granting the petition, at least with respect to one of the questions. The SG’s brief underscores the consensus that Alice has spawned more uncertainty than predictability.
The American Axle Case.
The patent at issue in the American Axle, U.S. Patent No. 7,774,911, is slightly unusual. Most Section 101 cases since Alice have typically involved software patents or diagnostic pharmaceutical patents. Yet, in American Axle, the patent addresses a method for manufacturing a driveshaft so that it reduces two different types of vibrations (bending-mode and shell-mode.) According to the patent, driveshafts are susceptible to three types of vibrations (also including torsion mode), and yet, existing technologies could only dampen individual modes, rather than multiple ones simultaneously.
The method claimed in the ‘911 patent includes many steps, but the thrust of the method is to take a hollow shaft member and “tune” it so that its dampens both bending- and shell-mode vibrations. The Federal Circuit held the patent was ineligible under § 101. The Court reasoned that the patent invokes a natural law (Hooke’s law) to accomplish a desired result (to tune a propshaft liner) without identifying any specific steps or structure to achieve that result.
Implicit in the Federal Circuit’s analysis was its finding that the patent had essentially preempted a law of nature, namely, Hooke’s law. Yet, numerous cases have recognized that most patents rely, to some extent, on laws of nature. Thus, just because a patent invokes a law of nature cannot be enough to render it ineligible. The ‘911 patent, according to the Solicitor General, does not preempt all use of Hooke’s law, either in general or in the specific context of manufacturing automobile driveshafts.
The Federal Circuit also reasoned that the ‘911 patent invoked a natural law to accomplish a desired result without providing any details as to how to accomplish that result. Section 101 cases have recognized that claiming a result by “whatever structures or steps happen to work” will likely run afoul of § 101. Yet, the Solicitor General points out that the ‘911 patent claims specific steps for reducing the enumerated vibration modes—not simply the desired result.
The Solicitor General further argues that the Federal Circuit erred in application of the second Alice step—namely, whether the claim embodies an “inventive concept.” This step has confused many Judges and practitioners alike. Courts are instructed to look for an “inventive concept” under a § 101 analysis even though that is not supposed overlap with the obviousness and anticipation requirements contemplated by different sections from the statute. Despite that, numerous Courts have held that the purportedly “conventional” elements of a claim should be disregarded when performing Alice step two. (The Solicitor General cites numerous cases at page 17 of its brief.)
The Solicitor General questions this tendency to disregard purportedly “conventional” elements of a patent’s claim when searching for the “inventive concept” under step two. Two non-controversial doctrines support that—the eligibility of a method claim turns on the “process as a whole” and a law of nature may be patent eligible if applied to known structures or methods. The Solicitor General states, “[h]olistic consideration of a claim at the second step is incompatible with an approach that ignores individual claim elements that are conventional in isolation.” (at 18).
Alice is just not predictable.
The Solicitor General cites considerable evidence to highlight the uncertainty that Alice has spawned. It cites numerous instances where Alice has “fractured the Federal Circuit.” It highlights that Alice has spawned “uncertainty,” rather than predictability. It found that every judge on the Federal Circuit has requested Supreme Court clarification. It cites to USPTO guidance that has found applying Section 101 decision in a consistent manner to be “difficult.” It cites the same guidance that found businesses find it difficult “to reliably and predictably determine what subject matter is patent eligible.”
A major source of Alice unpredictability is mission creep. Judge Moore’s dissent questioned the majority’s reasoning that the patent purportedly claimed a result without limiting the means for achieving that result. As Judge Moore argued, that problem already has a solution in the statute—namely, enablement. Similarly, courts have reasoned that purportedly “conventional” elements should be disregarded when assessing Alice step two. Yet, the search for a “novel concept” versus “conventional” elements also already has a solution—namely, Sections 102 and 103.
Judge Moore summed up Alice’s mission creep that may critics believe has infected § 101 analysis: “We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.”
The utility of a particular doctrine or standard is not just whether it embodies the right policy, or captures the right evidence, but whether application of the doctrine to a set of particular facts is predictable. The Alice two-step framework has arguably failed that test over and over. Generally, the framework asks: Is the patent directed to a law of nature or abstract idea? And if so, is there something more or something “inventive”? For too many patents, the existing two-step framework is not helpful for predicting whether a given software patent, or patent that harnesses a law of nature, will be struck down under Alice or not. If that’s true, then it’s not a good framework. It’s just not doing its job.
The Solicitor General’s brief emphasizes the awkward development of § 101 jurisprudence. As illustrated above, asking whether a given patent invokes a law of nature or an abstract idea is a question for philosophy students to wrestle with, not one that can be predicted with measurable accuracy. Alice’s step two fares no better. Anyone who has defended an Alice motion has faced the uncomfortable task trying to explain to the court why step two’s search for an “inventive” concept is somehow distinct from the separate novelty requirements of the statute.
What happens next?
The Solicitor General did not recommend taking up the second question—namely, whether Alice should be a decided as a question of law of fact. I previously wrote about an apparent split at the Federal Circuit over this question, despite Berkheimer and Aatrix, which appeared to at least in part resolve it. It’s remains difficult to understand how questions whether certain technologies are “conventional” or “routine” can be decided as questions of law.
The explosion of § 101 patent invalidations over the past eight years may provide some insight. If the Supreme Court follows the Solicitor General’s recommendation, and grants the petition for certiorari, Alice’s bite may dulled. And we may all have to put the philosophy books away and focus on boring things, like infringement and 103 obviousness.