American Axle Part 2 – Not an Abstract Idea

August 4, 2023

On July 28, 2023, Judge Williams of the Delaware District unsealed his decision on remand from the Federal Circuit addressing competing summary judgment motions regarding the patent eligibility of remanded claim 1. The Federal Circuit remanded the case to the district court to determine if claim 1 was directed to an abstract idea argued by Neapco on appeal for invalidity.  Claim 1 provided:

1. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:

providing a hollow shaft member;

tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and

positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.

In deciding the motions, the court addressed eligibility by first noting that if there is no risk of preemption then the claims remain eligible for a patent. Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).  The court then turned to the Alice two methodology.

Neapco argued that claim 1 was directed to the abstract idea of “tuning one or more” to achieve the desired result of attenuating “more than one mode of vibration.”  Neapco alleged that claim 1 lacks the specificity to explain how to tune the liner to attenuate more than one mode of vibration.  The court disagreed finding that the claims do not recite merely obtaining the desired result of attenuating vibration modes by simply tuning and positioning, but rather when the claim is taken as a whole it is much more.  The court pointed to the steps of “tuning at least one liner” and positioning the liner within the shaft.  The court then turned to the specification as to how these steps were to be performed.  The specification explained how the liners could be tuned to achieve the result and where and how to position the liner.

The court then turned to the prior Delaware decisions relating to abstract ideas for further confirmation, Carrum Techs. v. BMW of N Am., C.A. No. 18-1645-RGA, 2019 WL 1779863 (D. Del. Apr. 23, 2019); Axcess Int 'l, Inc. v. Genetec (USA) Inc., 375 F. Supp. 3d 533, 537 (D. Del. 2019). The court found that the American Axle claims, like those cited, describe a real-world application of designing and manufacturing a liner for a propshaft system to achieve the desired damping of two modes of vibration, as opposed to an "untethered" abstraction.  The claim recited specific steps described in the specification. That is, the claims did not preempt the field, only the specific steps.

The key to avoiding the abstract idea 101 rejection is to have claims where not only the result or function is claimed, but also that the means for achieving the function or result is recited.