The Claims as a Whole, Including ‘Conventional’ Physical Components, Must Be Considered at Step One of the Alice Test for Determining Patent Eligibility Under Section 101

September 18, 2023

Reading Time : 3 min

By: Matthew George Hartman, Rachel J. Elsby, Ange Christiani (Law Clerk)

On remand from the Federal Circuit following an appeal and petition for cert to the Supreme Court, the District of Delaware considered whether the claims remaining in dispute in American Axle v. Neapco were invalid for failing to claim patent eligible subject matter. In this latest iteration, the district court found, as a matter of law, that the claims were not directed to an abstract idea and granted summary judgment in American Axle’s favor.

Prior to deciding the Section 101 issue, the district court addressed two preliminary issues. First, the district court considered Neapco’s argument that the claims should be found ineligible based on the law of the case doctrine. Specifically, Neapco argued that claim 1 of the ’911 patent was not meaningfully different from claim 22 of the same patent, which the Federal Circuit already held to be ineligible. And as a result, the law of the case doctrine dictates that claim 1 and its dependent claims are directed to ineligible subject matter. The district court rejected this argument. According to the district court, the issue presented here—whether claim 1 and its dependent claims are directed to a patent ineligible abstract idea—is distinct from the issue previously decided by the Federal Circuit—whether claim 22 was directed to a patent ineligible natural law. The district court further reasoned that the law of the case doctrine could not apply in view of the Federal Circuit’s directive on remand to the district court that it address the eligibility of claim 1 and its dependent claims in the first instance.

Next, the district court considered American Axle’s argument that Neapco waived its right to assert that claim 1 and its dependent claims are directed to an abstract idea by not raising the argument earlier in the case. Here again, the district court pointed to the Federal Circuit’s remand order, which instructed the district court “to address this alternative eligibility theory in the first instance,” and held that, because the argument fell squarely within the Federal Circuit’s remand order, it was not waived.

Turning to the question of patent eligibility, Neapco argued the claims recite the broad concepts of tuning and positioning, and defines those concepts only in terms of the results they are intended to achieve. But the claims lack any particular means or method of achieving the desired results, and thus fail to transform the abstract ideas of tuning and positioning into patent eligible subject matter. American Axle countered that the claims recite a new industrial process for manufacturing an improved driveshaft that includes specific steps for manufacturing the shaft assembly.

The district court agreed with American Axle, finding “[f]ar from an abstract idea, the claims are directed to a tangible system, or a method of using such a system, with an observable real-world impact.” By focusing on just the “tuning” and “positioning” limitations, Neapco failed to evaluate the character of the claims as a whole. And by characterizing the tangible components in the claim as old technology that should be ignored, Neapco improperly conflated step one with step two of the Alice test. The district court explained that Alice step two evaluates whether the addition of routine or conventional steps transforms an otherwise unpatentable method into a patentable one, “which is different from arguing that the physical components are conventional.” The latter argument being “more directed to novelty instead of eligibility.” Accordingly, the district court concluded that the claims are not directed to an abstract idea under Alice step one and therefore are patent eligible.

Practice Tip: The district court’s analysis in this case emphasizes two important points. First, step one of the Alice test looks at the claim as a whole read in light of the disclosures in the specification. Second, the presence of tangible components or methods of using them, even if conventional, may be sufficient to defeat a Section 101 challenge at step one. But specificity matters. Thus, the question of whether a claim is directed to an abstract idea may turn on the ability of a party to show that the claim covers a concrete application of an idea that is specifically tethered to tangible equipment having a real world impact.

Case: American Axle & Mfg Inc. v. Neapco Holding LLC, C.A. No. 15-1168-GBW (D. Del. July 19, 2023)

Share This Insight

Previous Entries

IP Newsflash

March 24, 2025

The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is conducted in private. According to the Federal Circuit, a sale must disclose the relevant aspects of the invention to the public to qualify for the prior art exception of Section 102(b)(2)(B).

...

Read More

IP Newsflash

March 21, 2025

Under the Lanham Act, a plaintiff who prevails on a trademark infringement claim may be entitled to recover the “defendant’s profits” as damages. The Supreme Court in Dewberry Group, Inc. v. Dewberry Engineers Inc. unanimously construed “defendant’s profits” in 35 USC § 1117(a) to mean that only the named defendant’s profits can be awarded, not the profits of other related corporate entities. The Court, however, left open the possibility that other language in § 1117(a) may allow for damages linked to the profits of related entities, if properly raised and supported.

...

Read More

IP Newsflash

March 13, 2025

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short, a parenthetical citation was held to be insufficient, while three passages discussing a cited reference met the test.

...

Read More

IP Newsflash

March 4, 2025

On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application of discretionary denials in cases with parallel district court litigation by specifying instances where discretionary denial could not be issued. With the withdrawal of the memorandum, individual PTAB panels will regain flexibility in weighing discretionary denials. While the long-term effect of that increased flexibility is not yet known, the immediate effect is likely to be a shift towards the discretionary analysis applied by PTAB panels before the issuance of the memorandum.

...

Read More

IP Newsflash

March 3, 2025

A District of Delaware judge recently granted a defendant’s motion to include a patent prosecution bar in its proposed protective order after determining that litigation counsel’s ability to practice before the Patent Office—without ever having represented the plaintiffs at the Patent Office in the past—weighed heavily in favor of the bar.

...

Read More

IP Newsflash

February 12, 2025

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit explained that written description and enablement are evaluated based on the subject matter that is claimed, not the products that practice those claims. As a result, the patentee was not required to describe unclaimed, later-discovered features of the accused products despite the broad language in the claims that undisputedly covered the products.

...

Read More

IP Newsflash

January 24, 2025

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement.

...

Read More

IP Newsflash

January 17, 2025

The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the court found the patentee’s complaint sufficiently alleged at least some uses of the claimed technology that, when taken as true, were not solely uses of a “patented invention” that were “reasonably related” to an FDA submission.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.