AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS LLC
Oral Argument · Case 2018-1763 · 37:32
0:02
Judge DYK
Our final case this morning is number 18-1763, American Axle and Manufacturing v. Neapkow Holdings, LLC.
0:11
Mr. Nuttall?
0:30
Yes, sir.
0:30
Appellant Attorney (James Richard Nuttall)
Good morning.
0:40
Please, the court, Jay Nuttall on behalf of American Axle, the appellant.
0:45
We're here today to discuss the district court's decision finding claims directed to a method of manufacturing a prop shaft with liners
0:54
to reduce prop shaft vibration and to whether or not those are ineligible patent subject matter.
1:01
The district court found that the claims were directed to a law of nature, Hooke's Law.
1:07
Hooke's Law is a mathematical formula that determines the frequency of an object.
1:13
The claims in this case, as construed by the court, require liners that are specifically designed to not only match
1:21
but to damp multiple different types of vibration.
1:24
Vibration modes, bending modes, shell modes.
1:27
And the claims require that those liners damp those different modes in different ways.
1:33
Judge DYK
Prior to the invention...
1:35
But the problem is it really doesn't tell you how to do it, right?
1:38
It says do tuning, but it doesn't tell you how to do the tuning.
1:43
Appellant Attorney (James Richard Nuttall)
Well, both the claims and the spec talk about controlling the characteristics of the liner.
1:48
And the specification tells you, here's what you control.
1:52
You control the diameter of the liner.
1:54
The thickness of it.
1:56
Where you place the liner location is important.
1:59
And it tells you to tune the liner within about 20% or more of the prop shaft mode.
2:07
Judge DYK
It also tells you how...
2:09
But looking at this patent, you couldn't tell how to do it.
2:12
Someone skilled in the art wouldn't know how to do it.
2:14
You'd need additional information, right?
2:17
Appellant Attorney (James Richard Nuttall)
I disagree, Your Honor.
2:19
The patent specification tells you what characteristics to control.
2:23
And that the liners...
2:24
The liner has to not only match, but it has to damp these different vibration modes.
2:29
And those skilled in the art know what bending modes are and shell modes are.
2:33
And they know that when you put a damper in,
2:36
and you can tell if that damper actually reduces vibration at those modes.
2:41
And that's exactly what happened in this case.
2:44
Neapco, prior to this invention, was not using tuned liners at all.
2:51
And they studied the 9-11 patent.
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And they were able...
2:54
They were able to come up with tuned liners from exactly that disclosure.
2:58
So I do think that the patent teaches one of skilled in the art how to make a tuned liner
3:02
to not only match the relevant frequency, but to also damp those different modes.
3:07
Judge Moore
Well, claim 22, as I understand your argument in the wherein clause,
3:12
contains physical limitations on the liner as well, right?
3:16
Resistive and reactive absorber for attenuating two vibration modes.
3:20
And one of skilled in the art would understand, both from the spec and in general,
3:23
that those are physical limitations.
3:24
on the type of liner that could even be used in this process.
3:28
Appellant Attorney (James Richard Nuttall)
That's correct, Your Honor.
3:29
And in addition to that, that it teaches exactly how the liner is going to damp those different modes.
3:34
And those skilled in the art understand that to damp bending mode,
3:38
you need to have a reactive damper that's going to oscillate in opposition to that.
3:43
Judge Moore
I mean, you ended up with a very broad claim construction here from the lower court.
3:50
And in particular, I'm talking about the tuning limitations.
3:55
You had a very broad claim construction.
3:56
And you might be up against problems on 102, 103, or 112 with that problem,
4:01
like what a skilled artisan would understand or an enablement.
4:07
How is it that that, though, turns into a 101 issue in this case?
4:11
Appellant Attorney (James Richard Nuttall)
Well, I think that, and that was one of the critical issues I wanted to talk about with the court today.
4:16
The district court completely eliminated the wherein clause from claim 22
4:21
and didn't talk about any of the limitations in claim one.
4:25
It does not include a wherein clause.
4:26
That specifically talks about these different steps of damping the different modes and how it's accomplished.
4:31
So if you just look at claim two, after the court removed the wherein clause, which requires the…
4:37
Claim 22, you mean, right?
4:38
Yes, the court removed the wherein clause.
4:42
Specifically, expressly said they're not going to give it any weight.
4:46
While in most cases, parties may dispute about how you characterize claims,
4:51
in this case, the court expressly said,
4:54
I'm not going to give the wherein clause any weight.
4:57
And therefore, all that was left was this broad tuning term.
5:01
So we think that's inappropriate.
5:02
Those claim terms were construed.
5:04
The court gave those terms meaning tuned reactive absorber requires damping of bending mode in a certain way.
5:10
Judge Moore
Do you understand the tuning limitation to be limited by the wherein clause?
5:14
Because you know specifically, to a pretty high degree of certainty,
5:20
specific information about the type of liner that's going to be used.
5:24
By virtue of the wherein clause, and that therefore, otherwise narrows the tune clause.
5:28
Had the wherein clause not been there, tuning could be very, very, very broad.
5:33
Appellant Attorney (James Richard Nuttall)
I agree, Your Honor.
5:34
That's exactly right.
5:34
And I think that's where the district court went wrong here.
5:37
And, you know, wherein clause or not, I mean, claim one does not have a wherein clause.
5:41
And it specifically recites these different limitations about the liner having to damp bending mode vibrations,
5:48
the liner being positioned to damp shell mode.
5:50
Judge DYK
That's just a statement of the result.
5:52
It doesn't tell you how to do it.
5:54
I mean, when you look at the specification, it says you have all these variables and your experts said, you know,
6:03
basically do it by trial and error.
6:05
You know, change this variable, change that variable, change the other variable.
6:11
And, but it doesn't tell you how to change the variables, right?
6:16
Appellant Attorney (James Richard Nuttall)
Two quick responses, Your Honor.
6:18
I think the patent does disclose that it tells you how to tune the liner to a certain principle.
6:24
It tells you which variables to change, and there's not that many.
6:27
It tells you where to place the liner depending on where the bending mode is.
6:32
The issue and the argument that NIAPCO has made is that there's not a specific…
6:36
Judge DYK
None of that is new.
6:38
I mean, there were liners, there were changes to the liners to make them dampen, right?
6:45
That was not new.
6:46
Appellant Attorney (James Richard Nuttall)
Well, the liners had never been used to damp bending mode,
6:49
which requires that they be tuned to have a certain frequency in damp bending mode
6:53
by oscillating in opposition to them.
6:56
Prior to this invention, people would shove cardboard into the prop shaft
7:00
to try to keep the shell mode from, to damp the shell mode vibrations,
7:05
but nobody had ever tuned a liner to have it specifically damp a bending mode
7:09
or be able to damp multiple different modes.
7:12
These prop shafts, each prop shaft is different.
7:15
They're different lengths, they're different widths.
7:17
So they have bending mode vibrations at different frequencies.
7:20
You can't say, build this one specific liner,
7:23
and it will fit for every prop shaft.
7:26
But what was easy to do, was easy for NIAPCO to do,
7:29
was to take this disclosure and say, here's the prop shaft.
7:32
We know the bending mode frequency is at 300 hertz.
7:35
I'm going to build a liner that damps bending mode at 300 hertz
7:40
with these specific characteristics.
7:41
I'm going to put it in the location so it will damp that bending mode.
7:45
And so the claims do require that.
7:47
The claims as construed require controlling characteristics,
7:49
so it has that properties, has those properties.
7:52
It requires a location so that it damps those different modes.
7:56
And that was all new and different, and liners had not been used for that.
8:00
Judge Taranto
What's the difference between, let's just use the claim construction meaning of tuning.
8:06
Tuning is controlling the characteristics of.
8:09
That's all tuning means, right?
8:12
And then the wherein clause and the various references to the two kinds of dampening.
8:20
What's the difference between?
8:22
If you substitute control the characteristics, you're saying controlling the characteristics
8:29
so that a dual damping result follows.
8:35
Why is that different from the kind of result only, no means specified claim
8:43
that has been troubling for 150 years?
8:47
Appellant Attorney (James Richard Nuttall)
Sure.
8:47
To one quick point, claim one, as the tuning requirement was construed to be,
8:53
controlling the characteristics, to configure the liner to match relevant frequency
8:57
to reduce two types of vibration.
9:00
So it is a little bit different than the claim 22 construction, but.
9:05
Judge Taranto
Says do something with material to produce either of two different or both of two results,
9:14
one to soak up a kind of frequency and the other is to counteract it
9:19
like a noise canceling headphones.
9:21
Appellant Attorney (James Richard Nuttall)
It tells you to specifically.
9:22
Specifically build a liner that is built with the right length with diameter frequency.
9:29
Put it in the right location and use that to damp bending mode and show more vibration.
9:37
It's not just a result.
9:38
You have to make a specific liner that that does that.
9:41
Judge Taranto
But why is that?
9:42
I guess here's what I'm struggling with ever since Leroy and O'Reilly against Morse, there's been a line.
9:52
Which has become a one on one line, even if it wasn't originally a one on one line between saying I want something that has a certain property and I claim anything that has that property and on the, which is a bad kind of claim and a claim that says here is something about how I get that property.
10:19
Why is this on the right side of that line?
10:22
Appellant Attorney (James Richard Nuttall)
So the claim does not just say, we're claiming a liner that has a certain frequency, or we're not claiming hooks law where you determine the frequency of a liner claiming a liner that performs two functions, soaking up one kind of vibration and counteracting another, right?
10:45
We're claiming a method of manufacturing a prop shaft, so you have to know that the prop shaft first and then the liner that is going to not only match.
10:53
With a frequency, but it's also going to damp those different modes.
10:56
And in order to do that, you have to build a specific liner to accomplish that.
11:01
So it's not a broad concept of, you know, any sign or some of the older cases that talk about the general concept.
11:08
This is a claim more like cells direct or exergen where even if you assume that hooks law has some application to the claims, the claims have a method of producing a prop shaft.
11:21
That it results.
11:23
And a new and different result that hadn't been achieved.
11:26
Judge Moore
And uses characteristics other than mass and stiffness, which are the only factors in hooks to decide how to make that work.
11:34
For example, location, right?
11:36
Correct.
11:36
I mean, you articulate all that in a string site, but I don't want it to get lost in this discussion, which is this.
11:41
This could very well employ hooks law, but it also employs other characteristics in the choice of liner and location within the system to operate properly.
11:50
None of which are utilized.
11:52
They don't have a variable in hooks law for location and all of that.
11:55
And all of that is critical and specifically articulated in the claims.
11:59
Appellant Attorney (James Richard Nuttall)
That is correct.
12:00
That was the other point I wanted to make before I step down and say the rest of my time.
12:04
Judge DYK
But basically it's done by trial.
12:05
And you start with a computer program and then you do trial and error to come to the correct result, right?
12:11
Appellant Attorney (James Richard Nuttall)
Well, we would say you'd start with making a liner.
12:14
And you would test the liner.
12:16
And just like Niappo did in this case, they created a liner log and they said after two months, this is great.
12:22
This one works best because we've got the right thickness.
12:25
We have the right diameter and we've picked the right characteristics that are disclosed in this pattern.
12:29
Judge DYK
How are those characteristics determined by trial and error and use of a computer program?
12:33
What does the record tell us about that?
12:35
Appellant Attorney (James Richard Nuttall)
The record tells us that those skilled in the art test the actual prop shaft and damper to see if it actually damps vibration.
12:41
And so that's what the parties did in this case.
12:43
And then adjust it.
12:44
Yes, you could adjust it if the damper doesn't work.
12:47
And so what Niappo had before was an untuned liner that they put in and didn't get the results that they wanted.
12:52
They looked at the patent.
12:54
They changed the characteristics to get the exact physical characteristics that they needed to damp the relevant modes.
13:00
And the claims do talk about that.
13:03
And Hooke's law does not inform all those other elements like liner shape and mode, location of the liner, fitness, interference fit, things like that.
13:13
So with that, unless there's other questions now, I'd like to reserve a little time for rebuttal.
13:18
Okay.
13:19
Thank you, John.
13:20
Appellee Attorney (Dennis J. Abdelnour)
Is there help over there?
13:30
Good morning.
13:30
May it please the court.
13:31
Dennis Abdener on behalf of Abilene, the Niappo parties.
13:37
I want to start and pick up where you left off.
13:40
This is a claim to a goal, the result.
13:42
And that is, and it's defined in the background of the invention, which is the idea of tuning a liner to dampen two different modes of vibration.
13:55
The wherein clause is what American Axle has pointed.
14:00
To as the inventive concept, in other words, tuning to two different vibration modes, but that's as the district court correctly recognized, that is simply the result.
14:10
That is what happens once the methodology is fully performed and achieved.
14:15
And so when you do look at the methodology, what you're left with is taking a liner, taking a prop shaft, and putting the liner inside the prop shaft.
14:24
And above that, you have the direction to tune it.
14:29
Tuning.
14:29
Tuning.
14:29
And as recited in the claims, is the idea of changing a mass, an object's mass or its stiffness, in order to alter its frequency.
14:39
That is nothing more than Hooke's law with the direction to apply it.
14:45
Judge Moore
I mean, your problem with that's the thing that Hooke's law with the direction to apply it is, is that Hooke's law may have variables that represent mass and stiffness,
14:54
but they don't have variables that represent all those other characteristics which are at issue in these claims.
15:00
I mean, if you look at Hooke's law, he listed four or five different characteristics, I can't express that facility with it that he has, but he articulated them all, and that's not Hooke's law.
15:10
Those are different from Hooke's law, yet there are characteristics that go into helping to achieve the claimed invention.
15:16
Appellee Attorney (Dennis J. Abdelnour)
Two responses to that, Your Honor.
15:18
First is the record shows that mass and stiffness are the two variables that matter, and when you look at the various other characteristics within the specification.
15:27
Judge Moore
You expressly say positioning matters.
15:29
Yeah, so is the specification throughout it, that the location matters as well.
15:33
Appellee Attorney (Dennis J. Abdelnour)
Well, positioning without any other information about how you do it, and it simply says positioning the line or within the axle.
15:40
Judge Moore
In any scenario, all the criteria matters, right?
15:42
I mean, you know, your mass matters, your height matters, your width matters, you know, everything matters.
15:47
I mean, this result is achieved not just by varying two variables which happen to appear in a particular formula.
15:58
This result is achieved.
15:59
This result is achieved by specifically limiting a lot of different characteristics.
16:03
Appellee Attorney (Dennis J. Abdelnour)
Well, and those characteristics may have been recited in the specification.
16:06
And in the claims.
16:07
There are a lot of them.
16:07
Judge Moore
And in the claims.
16:08
Appellee Attorney (Dennis J. Abdelnour)
The characteristics are not recited in the claims other than mass and stiffness.
16:12
Really?
16:12
Judge Moore
It says positioning the at least one liner in claim one.
16:15
That's not a location limitation?
16:19
Appellee Attorney (Dennis J. Abdelnour)
It's a method.
16:20
It doesn't tell you where inside the prop shaft to place it.
16:24
It simply says position it with inside.
16:27
And the meat of this claim.
16:29
It's a tuning limitation.
16:30
That's been the focus of the party's dispute below.
16:34
Let me turn to the inventor's testimony in this case.
16:39
Judge Moore
My problem is you'd like me to just disregard the wherein clause altogether in claim 22.
16:43
And I personally think it provides physical limitations for the claim and don't think it can be disregarded.
16:48
So, you know, yeah, I take out that wherein clause of claim 22.
16:51
Claim 22 is a heck of a lot broader and you've got a much easier case.
16:55
Appellee Attorney (Dennis J. Abdelnour)
Well, and respectfully, the question of how broad the wherein clause is.
16:59
I think the district court was correct in saying it is nothing more than the result.
17:03
And if you look at claim eight of the patent, I think this characterizes how broad the wherein clause is.
17:11
Judge Taranto
Claim eight?
17:12
Appellee Attorney (Dennis J. Abdelnour)
I'm sorry, column eight of the patent.
17:14
That's at A33.
17:17
At about lines 24, tuning, this is the discussion of how you tune.
17:24
And it says in certain situations, it may not be possible to exactly tune the line.
17:30
It's a two or more relevant frequencies.
17:33
Next sentence, it says, as such, it will be understood that a liner will be considered to be tuned to a relevant frequency if it is effective in attenuating vibration at the relevant frequency.
17:44
Down below, around line 44, is another example.
17:48
The liner can be considered to be tuned to a relevant shell mode frequency if it damps shell mode vibration by an amount that is greater than or equal to about 2%.
18:00
And so the tuning is defined effectively as the result that you're hoping to achieve.
18:06
That's the goal.
18:08
Judge Morder.
18:09
Judge Taranto
Does that build in to the term tuning, the question of where the liner is located?
18:19
Appellee Attorney (Dennis J. Abdelnour)
Where the liner is located is actually, and this is probably directly to.
18:24
Judge Taranto
If you have trough crest misalignment.
18:30
It's just not going to do the job, because you need to have those subtract each other.
18:38
So does that suggest that placement, the right positioning, is part of what it means to tune?
18:48
Appellee Attorney (Dennis J. Abdelnour)
At the top of column 8 of the patent, again at A33, it does refer to the location of the liners within the shaft member.
18:55
And that entire paragraph within the patent is a discussion of what it is.
19:01
It's not a discussion of what the positioning limitation in the claims is.
19:05
So location of the liner is something that is within this concept of tuning.
19:12
So time out.
19:13
Judge Moore
If location of the liner is within the concept of tuning, can you tune a liner without adjusting its mass or stiffness to achieve these results?
19:23
Absolutely.
19:24
You can't say no, because it's a matter of technology.
19:26
Yes, of course you can.
19:27
If you already have a certain mass and stiffness, and you just move the location.
19:30
Then that would be tuning.
19:32
Appellee Attorney (Dennis J. Abdelnour)
I would agree in some respect.
19:34
In another respect, the location of the liner may affect the form fit and the stiffness of the object.
19:41
So in some sense, and it does go back to trial and error.
19:45
Judge Moore
May, but it also may not.
19:46
You can tune a liner in this case to achieve the results in the claim simply by relocating it, can't you?
19:53
Appellee Attorney (Dennis J. Abdelnour)
Well, respectfully, I disagree, because the claim construction is change a characteristic of the liner.
20:00
You start with a liner, the claim say, tune it, and then you have a result within the claim.
20:08
So you have the goal, you know what you're trying to achieve, but you don't know how to do it.
20:12
And if you take any number of these different characteristics, there's nearly a dozen of them, what you have is trial and error.
20:19
Judge Moore
And the only two of those characteristics of which there's nearly a dozen are mass and stiffness that are included within Hooke's law.
20:26
See, my problem with this isn't that these claims are broad, they're broad.
20:29
I grant you, they're broad.
20:30
I don't love the kind of broad claiming that I see here.
20:33
But my problem with this is trying to fit it within the umbrella of 101 as opposed to letting you slap it down under 103 or 112.
20:43
My problem with this is that the district court put all his eggs in the Hooke's law basket.
20:48
Hooke's law only involves two variables.
20:51
There's a lot more in these claims than those two variables which control the ability to have it performed consistent with the result part of the claim.
21:00
So it's not like the claim that you articulate in the wherein clause or in claim one is in maybe the last element.
21:06
So there's more than just mass and stiffness.
21:08
There's more than just Hooke's law at stake here.
21:11
So I'm not positive this kind of claim for me with all these other criteria fits neatly into the 101 box.
21:18
This feels more like Diamond versus Deere to me.
21:21
The use of a formula as one component in a manufacturing process.
21:25
Right.
21:25
Appellee Attorney (Dennis J. Abdelnour)
And to your honor, to your question.
21:28
The record shows that these other characteristics, and positioning to the side, but these other characteristics go to mass and stiffness.
21:36
It goes to Hooke's law.
21:38
Judge DYK
But even if that, I'm not sure that Chief Judge Stark got it right by saying that this is just a question of implementing Hooke's law.
21:48
There are other variables which can be taken into account here which seem not to relate to an implementation of Hooke's law.
21:57
And Diamond versus Deere makes clear that the fact that you're implementing a particular law anyway isn't determinative of one-on-one.
22:06
And the real question here is do we have anything more than a result here?
22:11
Even if you use all these different variables, it doesn't really tell you how to use the variables.
22:18
And that's the problem.
22:20
It's just, it's a patent on a result rather than a description of a method.
22:27
Right.
22:27
Appellee Attorney (Dennis J. Abdelnour)
And that's the problem with how to do it.
22:28
That's exactly right.
22:29
And so the result is, and the breadth in which the result is claimed is any effective vibration in shell mode, any effective...
22:39
Judge Moore
And you say that is exactly right.
22:40
Just to be clear, Judge Dyke articulated a completely different rationale for getting to the same result than did Judge Stark.
22:46
And he started by saying, the beginning of his question was, I'm not sure Judge Stark got this right.
22:51
And so your answer was, that's exactly right, Judge Dyke.
22:54
I just want to point that out to you.
22:56
For the record, you're going to understand, if I cut and paste portions of this oral argument, his question began, Judge Stark didn't get it right, and you said that's exactly right.
23:04
So I want to give you a chance to rehabilitate yourself so that I don't do that to you.
23:08
Okay.
23:09
Appellee Attorney (Dennis J. Abdelnour)
And I don't want you to do that to me.
23:11
So I think what you're, Judge Dyke, your articulation is the second half of Judge Stark's opinion where he goes through electric power and he says, and he looks at the Waring Clause and he says, truly this claim is to a result.
23:24
And so we're here and we're defending Judge Stark's opinion on the front end as well.
23:30
When you look at the methodology, it does not tell you how to get to the result.
23:34
So this truly is within electric power.
23:36
It's like Claim 8 in the Morse case.
23:39
And you have a result that is broadly stated and you have a direction to tune it at an abstract, high-level generality without anything more other than this conventional methodology of taking a liner, taking a prop shaft, and inserting the liner into the prop shaft, which the background of the patent and the specification says has been done for a long time.
24:03
Judge Moore
Does the mass and stiffness of the liner both go to manufacturer of the liner?
24:06
Yes.
24:06
The manufacturer of the liner.
24:08
Appellee Attorney (Dennis J. Abdelnour)
I'm sorry.
24:08
Judge Moore
Do mass and stiffness of the liner both go to the manufacturer of the liner?
24:12
You're not shaving off its mass on site when you're installing it, right?
24:16
The manufacturer of the liner determines the mass or stiffness.
24:21
Appellee Attorney (Dennis J. Abdelnour)
Absolutely.
24:22
Judge Moore
Now let's move to Red Brief, page 30.
24:27
Red is you, right?
24:28
You're Red.
24:28
Correct?
24:29
Yes.
24:30
All right.
24:30
Because on Red Brief, page 30, you agree with American Axles expert that tuning can
24:36
be achieved in the right way.
24:37
So that's correct.
24:37
The tuning can be achieved in either the design, the manufacturer, or the installation
24:41
of a liner.
24:43
Appellee Attorney (Dennis J. Abdelnour)
That's correct.
24:44
Judge Moore
That would be positioning.
24:45
Installation is positioning.
24:47
Installation isn't mass and stiffness because that's manufacturer of the liner, and that's
24:52
what their expert says, their Mr. Ron on page 169 of the appendix.
24:56
And you agree with that in your Red Brief, that tuning can be achieved through any of
25:02
those modifications.
25:03
Appellee Attorney (Dennis J. Abdelnour)
And the response is, that truly illustrates how broad these conditions are.
25:07
claims are, if it could be the design, the manufacturer, or the installation. And back to
25:13
the claim saying positioning the liner doesn't tell you how to install the liner.
25:17
Judge Moore
But once again, what Judge Stark said here is this all boils down to Hook's law, and this claim is
25:21
just preempting Hook's law in this space. And you've agreed in your brief that tuning can be
25:27
achieved through installation, which has nothing to do with an impact or alteration of mass or
25:32
stiffness of the liner, which means it's only positioning. I don't see how a claim that
25:37
is a manufacturing claim, which can be achieved through a variable not included in the Hook's law
25:44
Appellee Attorney (Dennis J. Abdelnour)
equation, boils down to an application of Hook's law. And again, I think the methodology there is,
25:52
is it conventional? What was done before? And positioning liners and prop shafts had been done
25:57
for decades before. And do these claims tell you how to achieve the result? But we can't figure out whether this is an abstract idea.
26:02
Judge Moore
The fact that some of the steps have been done before isn't relevant to whether it's an
26:06
abstract.
26:08
Appellee Attorney (Dennis J. Abdelnour)
On the second part of the Alice Mayo step, that's what you're looking at.
26:12
Judge Moore
That's not what we're talking about when we're discussing Hook's law, is it? We're talking about, is this directed to an
26:17
abstract idea? And if it's not directed to an abstract idea, we don't get to the second part. So it doesn't matter
26:22
whether those things are in there.
26:23
Appellee Attorney (Dennis J. Abdelnour)
And Your Honor, I think Judge Stark's opinion does boil down to two different concepts.
26:28
Judge Moore
She's saying natural law, not abstract idea.
26:30
Appellee Attorney (Dennis J. Abdelnour)
The second portion of it...
26:32
Maybe it is abstract idea, not natural law.
26:35
Well, Judge Stark found...
26:37
At the end of his opinion at page A16, this claim boils down to the application of a natural law to a conventional method to achieve, and this is the electric power of Morse, to achieve an abstract solution.
26:50
Judge Moore
Yeah, but the application of the natural law that he cited was Hook's law, and you admit in your red brief that tuning can be achieved simply through positioning, which has nothing to do with Hook's law. So it's kind of hard for me to reconcile that.
27:01
Appellee Attorney (Dennis J. Abdelnour)
Well, again, we go back to the idea that tuning is so broad that you don't know how to achieve the result.
27:06
So what it boils down to is...
27:08
Hook's law is the relationship...
27:10
Judge DYK
The more variables there are, the more difficult it is to know how to do it, and the more guidance that's needed, and there's none as to the use of all these variables other than just use a lot of variables and figure it out.
27:23
Judge Moore
Doesn't that feel a lot like enablement? That really doesn't feel like 101, does it?
27:27
Appellee Attorney (Dennis J. Abdelnour)
And we go back to the Morse case.
27:28
Judge Moore
That was actually almost the exact articulation of what it means to enable a patent, what Judge Stryker said.
27:33
Appellee Attorney (Dennis J. Abdelnour)
And Judge Moore and I agree that there are other problems with these patents.
27:37
But the Supreme Court says 101 is a threshold issue.
27:40
The Morse case looked at this specific problem of breadth and preemption, which does underlie sexual...
27:48
Judge Moore
How does this preempt Hook's law?
27:49
Appellee Attorney (Dennis J. Abdelnour)
This preempts Hook's law in the particular...
27:51
Judge Moore
That's the only thing we're talking about. It's the only natural law we're talking about here, is Hook's law.
27:54
It's the only thing that's at play.
27:55
Appellee Attorney (Dennis J. Abdelnour)
And it preempts...
27:56
It is so broad, by claiming just the result and saying, tune the liner, it preempts the use of any automotive engineer from taking a liner and doing...
28:07
Any sort of trial and error analysis or even accidentally taking a liner and putting it inside a prop shaft.
28:15
Because if, by chance, by happenstance, it reduces vibration in more than one mode, American Axles claims would say, we're covered.
28:24
We have the whole solution.
28:26
And it does not matter how you get there.
28:27
Whether or not you position it correctly, whether or not you change characteristic A, B, or C, the mass or the stiffness, you're still getting to a result.
28:37
Which is abstract in and of itself.
28:41
Okay. Thank you, Mr. Allen.
28:42
Judge DYK
Thank you.
28:51
Mr. Nuttall?
28:52
Appellant Attorney (James Richard Nuttall)
Yes. Thank you, Your Honor.
28:54
A few quick points that I'll try to make.
28:56
I agree.
28:57
The claims have nothing to do with Hook's law.
28:59
And I think they're far and wide...
29:01
Judge DYK
They have nothing to do with it.
29:03
It's just my view that it's not sufficient to say that it's an application of Hook's law.
29:09
It's more complicated than that.
29:11
But it seems to me, perhaps no less abstract.
29:15
It, you know, it gives you a, it doesn't tell you, even, it doesn't, the claims themselves don't even provide you with a list of variables.
29:24
There are a lot of different variables.
29:25
It's done by trial and error.
29:27
And all the claims are telling you is to get, here's a desirable result, and use trial and error to get there.
29:36
Appellant Attorney (James Richard Nuttall)
Well, I think the patent does talk about the different characteristics that you control.
29:41
The claims talk about not only specific locations.
29:45
You put it at anti-nodes for specific modes.
29:48
The dependent claims also include that they have to be directed to the second bending mode or the second shell mode.
29:54
There are a lot of specific elements in those claims as well.
29:57
Judge Moore
Just to hold on for a second.
29:58
So I understand some of the procedure.
30:01
And if we go over, I will implore my presiding judge to give you extra time.
30:06
But was there an agreement as to representative claims in this case?
30:09
Appellant Attorney (James Richard Nuttall)
There was no agreement, Your Honor.
30:10
In fact, the court ordered specific briefing for both Claim 1 and Claim 22.
30:15
And so there was definitely no agreement.
30:17
Judge Moore
But beyond Claim 1 and Claim 22, you don't feel like, even if I thought that Claim 22, which is probably your broadest claim,
30:23
was, if it's not representative, I can look at the other claims in the patent, too.
30:27
You did not accede to the idea that everything stood or fell together.
30:30
That's correct, Your Honor.
30:30
Because you're pointing now out Claim 8 or other things.
30:32
You're wanting to point out, or not Claim 8, but you're wanting to point out to us elements of other claims in response to Judge Eich's question.
30:38
So none of those were given away.
30:40
Appellant Attorney (James Richard Nuttall)
That's correct, Your Honor.
30:40
Judge DYK
They weren't given away, but they weren't argued in your blue brief either.
30:44
Oh, they were.
30:45
They were, Your Honor.
30:45
Well, we certainly argued about Claim 1, Your Honor.
30:47
Well, yes, but I didn't see in the blue brief separate argument about features of the dependent claims.
30:55
Appellant Attorney (James Richard Nuttall)
Well, we certainly talked about the location of the liner that's in our briefs and talked about at length.
31:00
We talked about that just because you have a liner's frequency that matches a prop shaft frequency, that doesn't mean it will damp that.
31:07
Judge DYK
Where does the blue brief suggest that the other claims should come out differently?
31:13
Appellant Attorney (James Richard Nuttall)
I'm not suggesting that the other claims should come out differently.
31:15
I'm just suggesting that the other dependent claims include these expressed limitations to provide even more detail.
31:22
Judge Moore
Okay, well, let me ask another question, if you don't mind.
31:24
This case has at all times been about natural law, has it not?
31:27
Appellant Attorney (James Richard Nuttall)
Yes, Your Honor.
31:28
Judge Moore
At no point did the district court suggest this was an abstract idea.
31:32
That's correct.
31:32
If we were suddenly going to, in the first instance, on appeal, without ever having it happen below, decide, ah, well, you know, Judge Stark got it wrong on this whole natural law thing because hooks is limited to these two limitations.
31:45
And this is, instead, an abstract claim because of the breadth, might you have different arguments with regard to the claims here in front of us and the dependent claims that you would really like an opportunity below to be able to express, should Judge Dyke want to change the entire rationale for the decision?
32:01
Judge Taranto
Yes, Your Honor.
32:02
Okay, can I just ask you, can you address yourself to page 4604 of the appendix in which Nipko says the asserted claims attempt to claim the abstract idea of a solution to the problem in general as opposed to the actual problem?
32:16
As opposed to a particular solution, which I think is Nipko's opposition to your summary judgment of 101 validity.
32:26
Doesn't that seem to raise the question?
32:29
I realize Judge Stark, Chief Judge Stark did not make this an abstract idea case, but I'm not sure whether there's a substantive difference between what he said about result versus means.
32:48
And what was said here, which appears to be an assertion of the abstract idea category, though, admittedly, in the second part of the analysis.
33:00
Appellant Attorney (James Richard Nuttall)
Right, and step two, I mean, clearly their briefs and their expert reports were directed at laws of nature.
33:06
They, in fact, claim there were two laws of nature that the claims were directed to, Hook's Law and Frich's Law.
33:10
Judge Taranto
But their briefings seem to evolve from initially something that was, this is Hook's Law, full stop, into when they,
33:18
got to this, something that started featuring more this idea about this is result only.
33:25
Appellant Attorney (James Richard Nuttall)
But I respectfully don't believe they ever argued that this was an abstract idea relating to matching.
33:31
This is in the second step of the analysis where they're quoting one case that happens to use the word abstract idea.
33:37
It was not in their briefing or their expert reports.
33:39
It certainly wasn't in Judge Stark's opinion that he ever found that this was an abstract idea.
33:45
Judge Taranto
And what do you think the difference would be in?
33:48
What kinds of arguments you might make if the theory of analysis were starting with LeRoy and O'Reilly and Tillman
33:58
through about 10 cases now here that one might summarize as using the electric power idea that this is results only and you haven't specified the means.
34:12
Appellant Attorney (James Richard Nuttall)
Right, so we still believe the claims are patentable.
34:16
But obviously that issue hasn't been.
34:18
Fully brief.
34:18
Judge Taranto
But I'm asking what is there that there might be, even might be to say that hasn't been said.
34:27
Appellant Attorney (James Richard Nuttall)
Well, electric power is very different than the facts in this case where they said you're.
34:31
Judge Taranto
Forget about electric power.
34:32
We're talking about the idea.
34:33
Let's just talk about the mid 19th century Supreme Court cases if you want.
34:37
There are now about a dozen cases in this court that focus on results versus means in a lot of different contexts.
34:45
And the mid 19th century cases are in a physical.
34:48
Product cases too, right?
34:49
Appellant Attorney (James Richard Nuttall)
And I believe this case is more like deer cells direct and exergen where they've said even if the claims use some kind of abstract idea or natural law, they're using that as part of a method and stops to achieve everything.
35:02
Judge Taranto
Everything in that line of cases turns on whether there is some allegedly new and different advance that is a concrete way of doing something.
35:15
And at least what I'm.
35:18
Listening for and I've been focused on throughout this.
35:22
Is there something like that here or is it only make and place a liner so that two damping effects occur?
35:31
You figure out how.
35:33
That seems to me kind of the question that we're we're struggling with.
35:37
Appellant Attorney (James Richard Nuttall)
Well, the specific solution in this case are liners that are disclosed in the patent and it's told you that how you how you make the liner.
35:47
So there is.
35:48
A specific solution.
35:49
It's not just you put something in the prop shaft and you get a result.
35:52
You have to actually design the liners with these different characteristics.
35:57
Judge Moore
And to be clear, don't your dependent claims actually explain a lot of that?
36:00
I mean, let's see.
36:01
Claim 13 talks about how you have to have a resilient member extending helically.
36:06
There's another claim that talks about how there has to be a drive system that operates below 600 hertz.
36:11
There is there.
36:13
It just seems like there are claims all over the place, small little dependent claims, one that says that the.
36:18
Material has to be selected from certain types of carbon fiber.
36:21
There are.
36:22
I mean, it just seems to me that you have a lot of dependent claims that add a great degree of specificity to characteristics of physical characteristics of the liner in the system.
36:32
Is that fair?
36:33
Appellant Attorney (James Richard Nuttall)
That is correct, Your Honor.
36:35
And I think it's different.
36:36
Judge Taranto
Did you assert that any of that was something other than in the prior?
36:41
All of that stuff.
36:44
Appellant Attorney (James Richard Nuttall)
Well, I think all of those things in the context of these claims is different than the prior.
36:48
Because.
36:48
Liners had never been able, never been tuned to damp bending mode vibrations before.
36:52
Dampers couldn't damp multiple different vibrations before.
36:56
In the prior art, they would have to use different dampers to use for a bending mode and a different damper for a shell mode.
37:02
So this solution, this tune liner that is tuned to not only damp and match these different frequencies was a different solution.
37:11
And I think under those cases, it's not invalid as ineligible subject matter under the old.
37:18
Um, cases that you referred to, Your Honor.
37:21
Judge DYK
Okay, anything further.
37:23
Okay, thank you. Mr. Council submitted that concludes our session for this morning.