On July 31, 2020, the Federal Circuit issued a precedential opinion in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. This opinion has substantial legal significance for several reasons. First, it expands the application of 35 U.S.C. 101 to manufacturing method claims. Second, this opinion establishes a boundary between patent claims that comply with the ever-expanding provisions of 35 U.S.C. 101, and the claims that violate the legal principles of this statute. Finally, this opinion brings to the forefront the rift between the Federal Circuit judges and underscores the urgent need for a Supreme Court clarification, or, even better, a clear legislative solution.
Recently, Smith & Hopen managing partner Anton Hopen published two articles on the subject of patent claims: Patent What is Necessary and Patent the Boring Stuff. Both articles provide excellent practical advice regarding patent drafting strategies. Specifically, the articles discourage patent claims covering broad and unspecific systems. Instead, Mr. Hopen’s advice is to patent the exact technological innovation that is essential for the commercial success and dominance. Had American Axle heeded this advice, the Federal Circuit would not have invalidated its patent claims.
A Goal without a Plan is just a Wish
The main takeaway from American Axle boils down to the following quote from the opinion: “claims that state a goal without a solution are patent ineligible.” The Federal Circuit invoked a century-old Supreme Court case expressing concern that overly-broad, unspecific patent claims would stifle innovation because they “would prohibit all other persons from making the same thing by any means whatsoever.” (citing Corning v. Burden, 56 U.S. 252, 268 (1853)). Based on this precedent, the Federal Circuit issued the following guidance to prospective patentees: “to avoid ineligibility, a claim must have the specificity required to transform the claim from one claiming only a result to one claiming a way of achieving it.”
On one hand, American Axle provides a powerful shield against harassment by those seeking to enforce unreasonably broad and vague claims. On the other hand, this case instructs patent attorneys to use surgical precision to tailor method claims to specific steps, rather than general concepts. Going forward, broad method claims drafted to capture any and all infringing activity will likely fall under 35 U.S.C. 101. The American Axle decision reinforces our longstanding principles: patent the boring stuff and patent what is necessary.