In the post-Mayo/Alice era, patent eligibility under 35 U.S.C. § 101 has been decidedly more challenging for internet applications, medical diagnostic methods, and other inventions deemed to be laws of nature, natural phenomenon or abstract ideas. Mechanical inventions were largely immune to Mayo/Alice challenges – until now. In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, the Federal Circuit affirmed ineligibility under § 101 in invalidating claims directed to manufacturing a drive shaft. The court indicated that “the patent claims do not describe a specific method for applying Hooke’s law [and] simply state that the [driveshaft] liner should be tuned to dampen certain vibrations” and thus amount to simply stating a law of nature. Judge Moore voiced her concerns in a dissent accusing the majority of ignoring the second step of the Alice/Mayo test, stating that “[t[he majority’s validity goulash is troubling and inconsistent with the patent statute and precedent.”
In Curver Luxembourg, SARL v. Home Expressions Inc., a case of first impression, the Federal Circuit recently held that claim language can indeed limit the scope of a design patent. Curver has a design patent that, although entitled “Pattern for a Chair,” merely illustrates “a design pattern disembodied from any article of manufacture.” Curver sued Home Expressions arguing their baskets incorporated a similar pattern and infringed. The Federal Circuit instead held that claim language can limit the scope of a design patent because “long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se.”
The Toro Company sought inter parties review of an MTD Products patent. While the Patent Trial and Appeal Board (PTAB) knocked the patent out holding the claims obvious, the PTAB determined the claim term “mechanical control assembly” was not a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6. In MTD Products Inc. v. Iancu, the Federal Circuit disagreed. The court remanded the case noting the term is a “nonce term” that is not sufficiently structural to a person of ordinary skill in the art. The court further noted the specification does not demonstrate that the patentee intended to define the nonce term as the “ZTR control assembly” of the preferred embodiment.
In Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit refused to “rewrite established law to permit ABPA to evade Ford[‘s] patent rights.” Like many auto manufacturers, Ford regularly uses design patents to protect the design of replacement parts. In an attempt to open up the replacement part market, ABPA argued that Ford’s design patents were invalid because replacement parts are “primarily functional”, that anyone repairing a vehicle will want replacement parts that “aesthetically match” the original design. The court rejected ABPA’s theory, holding “even in this context of a consumer preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional.”
In Return Mail, Inc. v. U.S. Postal Service, the Supreme Court held that the U.S. Government is not a “person” that can institute AIA review proceedings. Return Mail had sued the U.S. Postal Service (USPS) for infringement of U.S. Patent No. 6,826,548. In response, the USPS petitioned the United States Patent and Trademark Office (USPTO) to review the ‘548 patent, the claims of which were subsequently cancelled by the USPTO, and the cancellation affirmed by the Federal Circuit. The Supreme Court granted certiorari, reversed the lower courts, and determined that a federal agency is not a “person” eligible of petitioning for AIA review. In response to the Government’s arguments in favor of eligibility, Justice Sotomayor wrote for the Court: “None Delivers.”