On October 23, 2020, a Federal Circuit panel issued a unanimous decision in American Axle & Manufacturing v. Neapco Holdings—a case we’ve discussed on this blog several times before—in which the panel denied American Axle’s motion to stay issuance of the mandate pending filing of a petition for writ of certiorari. This decision on procedural matters was only somewhat notable in that it was the first time the Federal Circuit applied the three-prong standard established by the in-chambers opinion of Chief Justice Roberts in Teva Pharmaceuticals v. Sandoz for stays in such situations. Nothing too significant about that.

What stood out, however, was the concurring opinion of Judge Moore. “I write separately to elaborate on how those prongs apply here,” she wrote. Yet her opinion stretched further than that. It presented the most explicit plea yet to the U.S. Supreme Court to once again review the issue of patent subject matter eligibility. There is little need for commentary on her remarks, as the few excerpts below are direct and to the point:

The Supreme Court often grants certiorari to resolve circuit splits that render the state of the law inconsistent and chaotic…. What we have here is worse than a circuit split—it is a court bitterly divided.

As the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101. All 12 active judges of this court urged the Supreme Court to grant certiorari in Athena to provide us with guidance…. [A]s we acknowledged in our decisions in Athena, that holding was at heart a reticent application of Mayo to similar claims.

The current case is the progeny of neither Alice nor Mayo. It is our own dramatic expansion of a judicial exception to § 101.

…. The claims here are not directed to a business method, internet or financial method, the likes of which the Court dealt with in Alice or Bilski. Nor does this case map onto the Court’s holding in Mayo regarding the patent eligibility of diagnostic inventions, as did our decisions in Ariosa and Athena. Instead, our decision in American Axle is a patent killing judicial exception of our own creation. The claims here are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself.

…. The Supreme Court has often corrected this court when we have defied precedent or strayed from our mandate by claiming de novo dominion over factual issues. We repeat this mistake again. We hold as a matter of law that the claimed result (a reduction in two types of vibration in a drive shaft) was achieved by nothing more than a natural law that appeared nowhere in the claims, patent or prosecution history…. And in doing so, we reject the undisputed testimony of both experts. This is simply not our role as appellate judges.

(citations omitted)

Time will tell whether the Supreme Court is receptive to Judge Moore’s entreaty.

 

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.