Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 1 of 27 PageID #: 886
`
` No. 20-891
`In the Supreme Court of the United States
`
`
`
`AMERICAN AXLE & MANUFACTURING, INC., PETITIONER
`v.
`NEAPCO HOLDINGS LLC, ET AL.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`
` ELIZABETH B. PRELOGAR
`Solicitor General
`Counsel of Record
`BRIAN M. BOYNTON
`Principal Deputy Assistant
`Attorney General
`MALCOLM L. STEWART
`Deputy Solicitor General
`JONATHAN C. BOND
`Assistant to the Solicitor
`General
`MARK R. FREEMAN
`DANIEL TENNY
`JOSHUA M. SALZMAN
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`THOMAS W. KRAUSE
`Solicitor
`FARHEENA Y. RASHEED
`Deputy Solicitor
`AMY J. NELSON
`Senior Counsel for Patent
`Policy & Litigation
`KAKOLI CAPRIHAN
`ROBERT E. MCBRIDE
`Associate Solicitors
`United States Patent and
` Trademark Office
`Alexandria, Va. 22314
`
`
`
`
`
`
` No. 20-891
`In the Supreme Court of the United States
`
`
`
`AMERICAN AXLE & MANUFACTURING, INC., PETITIONER
`v.
`NEAPCO HOLDINGS LLC, ET AL.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`
` ELIZABETH B. PRELOGAR
`Solicitor General
`Counsel of Record
`BRIAN M. BOYNTON
`Principal Deputy Assistant
`Attorney General
`MALCOLM L. STEWART
`Deputy Solicitor General
`JONATHAN C. BOND
`Assistant to the Solicitor
`General
`MARK R. FREEMAN
`DANIEL TENNY
`JOSHUA M. SALZMAN
`Attorneys
`Department of Justice
`Washington, D.C. 20530-0001
`SupremeCtBriefs@usdoj.gov
`(202) 514-2217
`
`THOMAS W. KRAUSE
`Solicitor
`FARHEENA Y. RASHEED
`Deputy Solicitor
`AMY J. NELSON
`Senior Counsel for Patent
`Policy & Litigation
`KAKOLI CAPRIHAN
`ROBERT E. MCBRIDE
`Associate Solicitors
`United States Patent and
` Trademark Office
`Alexandria, Va. 22314
`
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 2 of 27 PageID #: 887
`
`QUESTIONS PRESENTED
`Section 101 of the Patent Act of 1952, 35 U.S.C. 1
`et seq., provides that “any new and useful process, ma-
`chine, manufacture, or composition of matter, or any
`new and useful improvement thereof,” is eligible for a
`patent. 35 U.S.C. 101. The questions presented are as
`follows:
`1. Whether claim 22 of petitioner’s patent, which
`claims a process for manufacturing an automobile
`driveshaft that simultaneously reduces two types of
`driveshaft vibration, is patent-eligible under Section
`101.
`2. Whether patent-eligibility under Section 101 is a
`question of law for the court based on the scope of the
`claims or a question of fact for the jury based on the
`state of the art at the time of the patent.
`
`
`
`
`(I)
`
`
`
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`
`TABLE OF CONTENTS
`
`Page
`Statement ...................................................................................... 1
`Discussion ...................................................................................... 8
`Conclusion ................................................................................... 22
`
`TABLE OF AUTHORITIES
`
`
`
`Cases:
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014)..................................................... passim
`American Fruit Growers, Inc. v. Brogdex Co.,
`283 U.S. 1 (1931) ................................................................ 3
`Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
`788 F.3d 1371 (Fed. Cir. 2015),
`reh’g denied, 809 F.3d 1282 (Fed. Cir. 2015),
`cert. denied, 136 S. Ct. 2511 (2016) ................................... 20
`Association for Molecular Pathology v.
`Myriad Genetics, Inc., 569 U.S. 576 (2013) ....................... 5
`Athena Diagnostics, Inc. v. Mayo Collaborative
`Servs., LLC:
`915 F.3d 743 (Fed. Cir. 2019),
`reh’g denied, 927 F.3d 1333 (Fed. Cir. 2019),
`cert. denied, 140 S. Ct. 855 (2020) ............................ 19
`927 F.3d 1333 (Fed. Cir. 2019),
`cert. denied, 140 S. Ct. 855 (2020) ............................ 20
`Bilski v. Kappos, 561 U.S. 593 (2010) ...................... 2, 3, 4, 12
`Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`935 F.3d 1341 (Fed. Cir. 2019),
`cert. denied, 141 S. Ct. 241 (2020) ..................................... 20
`Cochrane v. Deener, 94 U.S. 780 (1877).............................. 9
`Corning v. Burden, 56 U.S. (15 How.) 252 (1854) .............. 3
`CosmoKey Solutions GmbH & Co. KG v. Duo
`Sec. LLC, 15 F.4th 1091 (Fed. Cir. 2021) ......................... 17
`
`(III)
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 4 of 27 PageID #: 889
`
`IV
`
`Page
`Cases—Continued:
`Diamond v. Chakrabarty, 447 U.S. 303 (1980)................. 2, 3
`Diamond v. Diehr, 450 U.S. 175 (1981) .................... passim
`Eibel Process Co. v. Minnesota & Ontario
`Paper Co., 261 U.S. 45 (1923) ............................................ 12
`Funk Bros. Seed Co. v. Kalo Inoculant Co.,
`333 U.S. 127 (1948)................................................................ 2
`Kewanee Oil Co. v. Bicron Corp.,
`416 U.S. 470 (1974)................................................................ 3
`Le Roy v. Tatham, 55 U.S. (14 How.) 156 (1853) ................. 2
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) .......................................................... 22
`Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 566 U.S. 66 (2012) .................................. passim
`Neilson v. Harford,
`Webster’s Patent Cases 295 (1841) ................................... 12
`O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) ........ 8, 14, 15
`Parker v. Flook, 437 U.S. 584 (1978) ................................... 12
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014),
`cert. denied, 576 U.S. 1057 (2015) ..................................... 17
`Yu v. Apple Inc., 1 F.4th 1040 (Fed. Cir. 2021) .................. 20
`
`Constitution and statutes:
`U.S. Const. Art. 1, § 8, Cl. 8 .................................................... 1
`Patent Act of 1952, 35 U.S.C. 1 et seq. ................................... 1
`35 U.S.C. 101-103 (2006) ................................................... 2
`35 U.S.C. 101 ........................................................... passim
`35 U.S.C. 102 ...................................................................... 2
`35 U.S.C. 112 (2006) .......................................................... 2
`35 U.S.C. 112 .............................................................. 16, 21
`35 U.S.C. 112(a) ................................................................. 2
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 5 of 27 PageID #: 890
`
`V
`
`Page
`
`Miscellaneous:
`2019 Revised Patent Subject Matter Eligibility
`Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ......................... 20
`United States Patent and Trademark Office,
`Manual of Patent Examining Procedure
`(9th ed., rev. 10.2019, June 2020) ................................ 17, 19
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 6 of 27 PageID #: 891
`
`In the Supreme Court of the United States
`
`
`
`No. 20-891
`AMERICAN AXLE & MANUFACTURING, INC., PETITIONER
`v.
`NEAPCO HOLDINGS LLC, ET AL.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`BRIEF FOR THE UNITED STATES AS AMICUS CURIAE
`
`
`
`This brief is filed in response to the Court’s order in-
`viting the Solicitor General to express the views of the
`United States. In the view of the United States, the pe-
`tition for a writ of certiorari should be granted with re-
`spect to question 1 as framed in this brief.
`STATEMENT
`1. a. The Constitution authorizes Congress “[t]o
`promote the Progress” of “useful Arts, by securing for
`limited Times to * * * Inventors the exclusive Right to
`their * * * Discoveries.” U.S. Const. Art. 1, § 8, Cl. 8.
`The Patent Act of 1952 (Patent Act), 35 U.S.C. 1 et seq.,
`directs that “[w]hoever invents or discovers any new
`and useful process, machine, manufacture, or composi-
`tion of matter, or any new and useful improvement
`thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.” 35 U.S.C.
`101.
`
`(1)
`
`
`
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`2
`
`By “defin[ing] the subject matter that may be pa-
`tented,” Bilski v. Kappos, 561 U.S. 593, 601 (2010), Sec-
`tion 101 confines patents to particular types of innova-
`tions. To obtain a patent, an inventor “must also sat-
`isfy” additional statutory requirements, “includ[ing]
`that the invention be novel, nonobvious, and fully and
`particularly described.” Id. at 602 (citing 35 U.S.C.
`101-103, 112 (2006)). Those requirements complement
`Section 101 but serve different functions. Section 102’s
`novelty requirement, for example, ensures that an ap-
`plicant cannot obtain exclusive rights for another’s pre-
`vious discovery. And Section 112’s enablement require-
`ment mandates that a patent’s specification describe
`the “manner and process of making and using” the in-
`vention so “as to enable” others “skilled in the art” to
`do so. 35 U.S.C. 112(a).
`An invention thus might satisfy the Act’s other re-
`quirements but not Section 101, or vice versa. For ex-
`ample, a new way of structuring real-estate transac-
`tions might be novel and nonobvious, but it would not be
`patent-eligible under Section 101 because it would not
`be the type of innovation that has traditionally been un-
`derstood to fall within the “useful Arts.” Conversely, an
`application for a patent on Alexander Graham Bell’s tel-
`ephone would satisfy Section 101, but it would fail today
`for lack of novelty.
`b. Although Section 101’s coverage is “expansive,” it
`is not limitless. Diamond v. Chakrabarty, 447 U.S. 303,
`308 (1980). The Court has long recognized, for example,
`that “phenomena of nature” are not patent-eligible if
`materially unaltered by humankind. Funk Bros. Seed
`Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (cit-
`ing Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175
`(1853)). Thus, although a “human-made, genetically en-
`
`
`
`
`
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`3
`
`gineered bacterium” is patent-eligible, “a new mineral
`discovered in the earth or a new plant found in the wild
`is not.” Chakrabarty, 447 U.S. at 305, 309. Similarly,
`the Court has long held that newly discovered “ ‘manifes-
`tations of . . . nature’ ”—such as Newton’s “law of grav-
`ity” or Einstein’s “law that E=mc2”—are not patent-
`eligible. Id. at 309 (citation omitted).
`Many of the Court’s decisions recognizing that such
`discoveries are not patent-eligible can be understood as
`interpreting Section 101’s specific terms—“process,
`machine, manufacture, [and] composition of matter,”
`35 U.S.C. 101—based in part on history and statutory
`context. See, e.g., Corning v. Burden, 56 U.S. (15 How.)
`252, 267 (1854) (“machine”); American Fruit Growers,
`Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931) (“manufac-
`ture”); Chakrabarty, 447 U.S. at 308 (“composition of
`matter”); cf. Kewanee Oil Co. v. Bicron Corp., 416 U.S.
`470, 483 (1974) (“[N]o patent is available for a discovery,
`however useful, novel, and nonobvious, unless it falls
`within one of the express categories of patentable sub-
`ject matter.”). For example, the Court has interpreted
`“process” in Section 101 based on traditional usage of
`that term and its patent-law precursor (“art”). Dia-
`mond v. Diehr, 450 U.S. 175, 182-184 (1981) (citation
`omitted).
`In more recent decisions, the Court has articulated
`an alternative rationale for the conclusion that certain
`discoveries cannot be patented and has set forth a new
`framework for determining whether particular inven-
`tions are patent-eligible under Section 101. In Bilski,
`the Court stated that Section 101’s terms should bear
`their general-purpose “dictionary definitions.” 561 U.S.
`at 603. The Court further described three categories of
`discoveries traditionally viewed as outside Section 101’s
`
`
`
`
`
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`4
`
`scope—“ ‘laws of nature, physical phenomena, and ab-
`stract ideas’ ”—as judicially created “exceptions” to
`patent-eligibility that are “not required by the statu-
`tory text.” Id. at 601 (citation omitted). The Court then
`concluded that a method of hedging financial risk in en-
`ergy markets was “not a patentable ‘process’ ” because
`it “attempt[ed] to patent the use of [an] abstract idea.”
`Id. at 611-612; see id. at 601-604, 606-608, 609-613; id.
`at 613-657 (Stevens, J., concurring in the judgment); id.
`at 657-660 (Breyer, J., concurring in the judgment).
`In Mayo Collaborative Services v. Prometheus La-
`boratories, Inc., 566 U.S. 66 (2012), the Court stated that
`Section 101 “contains an important implicit exception,”
`under which “ ‘[l]aws of nature, natural phenomena, and
`abstract ideas’ are not patentable.” Id. at 70 (citation
`omitted). The Court held that the claims in that case—
`which “cover[ed] processes that help doctors who use thi-
`opurine drugs to treat patients with autoimmune dis-
`eases determine whether a given dosage level is too low
`or too high”—were patent-ineligible. Id. at 72; see id. at
`77-92. The Court stated that the claims “set forth laws
`of nature—namely, relationships between concentra-
`tions of certain metabolites in the blood and the likeli-
`hood that a dosage of a thiopurine drug will prove inef-
`fective or cause harm.” Id. at 77. The Court concluded
`that the claims had not “transformed th[o]se unpatenta-
`ble natural laws into patent-eligible applications of those
`laws” because they did not “do significantly more than
`simply describe th[o]se natural relations.” Id. at 72, 77.
`The Court subsequently described Mayo as
`“set[ting] forth a framework for distinguishing patents
`that claim laws of nature, natural phenomena, and ab-
`stract ideas from those that claim patent-eligible appli-
`cations of those concepts.” Alice Corp. Pty. Ltd. v. CLS
`
`
`
`
`
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`5
`
`Bank Int’l, 573 U.S. 208, 217 (2014). First, a court “de-
`termine[s] whether the claims at issue are directed to one
`of those patent-ineligible concepts.” Ibid. “If so,” the
`court “ask[s], ‘what else is there in the claims’ ” to deter-
`mine whether any “additional elements ‘transform the na-
`ture of the claim’ into a patent-eligible application.” Ibid.
`(brackets and citation omitted); see id. at 212, 217-227 (ap-
`plying that rubric to hold that “a computer-implemented
`scheme for mitigating ‘settlement risk’ * * * by using
`a third-party intermediary” was a patent-ineligible at-
`tempt to claim an abstract idea).
`The Court has not invariably applied this two-step
`test, however. In Association for Molecular Pathology
`v. Myriad Genetics, Inc., 569 U.S. 576 (2013), the Court
`held that “a naturally occurring DNA segment” is a
`patent-ineligible “product of nature,” but that “syn-
`thetically created DNA” (or cDNA) “is patent eligible
`because it is not naturally occurring” and “is distinct
`from the DNA from which it was derived,” id. at 580,
`595; see id. at 589-596. The Myriad Court relied in part
`on Mayo in emphasizing the need for an appropriate
`balance between creating adequate incentives to inno-
`vate and preserving free access to natural laws and nat-
`ural phenomena. See id. at 589-590. The Court did not
`apply the two-step framework later described in Alice,
`but instead framed the question before it as “whether
`Myriad’s patents claim any ‘new and useful . . . compo-
`sition of matter,’ § 101, or instead claim naturally occur-
`ring phenomena.” Id. at 590.
`2. a. Petitioner is the assignee of U.S. Patent No.
`7,774,911 (’911 patent), which claims a method of manu-
`facturing automobile driveline propeller shafts (drive-
`shafts or propshafts) to reduce multiple types of vibration.
`Pet. App. 2a-7a. The ’911 patent’s specification explains
`
`
`
`
`
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`6
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`that driveshafts are prone to three types of vibration—
`“bending mode, torsion mode, and shell mode”—that can
`produce undesirable noise. Id. at 3a. The specification
`further explains that driveshaft manufacturers previously
`used separate mechanisms to reduce those types of vi-
`bration individually, but that existing methods were un-
`suitable for reducing them simultaneously. Id. at 5a;
`see C.A. App. 30.
`The ’911 patent describes a method of manufacturing
`driveshafts that reduces both bending-mode and shell-
`mode vibrations. Pet. App. 4a-5a; C.A. App. 30, 34-35.
`Claim 22, which the courts below treated as represent-
`ative, Pet. App. 5a, recites “[a] method for manufactur-
`ing a shaft assembly of a driveline system,” id. at 6a (ci-
`tation omitted). That method consists of beginning with
`a “hollow shaft member”; “tuning a mass and a stiffness
`of at least one liner” so that it is both “a tuned resistive
`absorber for attenuating shell mode vibrations” and “a
`tuned reactive absorber for attenuating bending mode vi-
`brations”; and then “inserting the at least one liner into
`the shaft member.” Id. at 6a-7a (citation omitted). The
`district court construed “tuning” to mean “controlling the
`mass and stiffness of at least one liner to configure the
`liner to match the relevant frequency or frequencies” of
`vibration of the driveshaft. Id. at 7a-8a (citation omitted);
`see id. at 4a; C.A. App. 32-33. The specification identifies
`various “characteristics of the liner”—e.g., its material,
`thickness, and shape—that “can be controlled to tune its
`damping properties” to match a desired frequency, and it
`describes one specific embodiment in detail. C.A. App. 33.
`b. Petitioner sued respondents for infringement of
`the ’911 patent. Respondents contended that the claims
`are patent-ineligible under Section 101. The district
`
`
`
`
`
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`7
`
`court granted summary judgment to respondents. Pet.
`App. 133a-145a.
`3. In its initial opinion, a divided panel of the court
`of appeals affirmed. Pet. App. 84a-125a. Following a
`petition for rehearing, the panel issued a modified di-
`vided decision, again affirming in relevant part. Id. at
`1a-70a.*
`a. At step one of the Mayo/Alice framework, the
`panel majority held that claim 22 “is directed to a natu-
`ral law because it clearly invokes a natural law, and
`nothing more, to accomplish a desired result.” Pet.
`App. 21a. The majority explained that claim 22 calls for
`“controlling the mass and stiffness of ” a liner to match
`relevant frequencies to dampen vibrations, which “re-
`quires use of a natural law relating frequency to mass
`and stiffness—i.e., Hooke’s law,” “an equation that de-
`scribes the relationship between an object’s mass, its
`stiffness, and the frequency at which the object vi-
`brates.” Id. at 8a, 13a (citation omitted). The majority
`concluded that claim 22 “simply requires the application
`of Hooke’s law to tune a propshaft liner.” Id. at 10a; see
`id. at 13a, 21a.
`The panel majority further held that claim 22 “defines
`a goal”—“ ‘tuning a liner’ to achieve certain types of vi-
`bration attenuation”—without identifying specific steps
`or structures to achieve it. Pet. App. 13a. In the major-
`ity’s view, “[t]he focus of the claimed advance here is
`simply the concept of achieving [the desired] result, by
`whatever structures or steps happen to work.” Id. at
`16a. The majority analogized claim 22 to claim 8 of Sam-
`uel Morse’s telegraph patent, which claimed all potential
`
`* The panel’s modif ied opinion vacated the district court’s judg-
`ment holding patent-ineligible certain other claims not at issue here.
`Pet. App. 27a-28a.
`
`
`
`
`
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`8
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`uses of electromagnetism to print characters at a dis-
`tance and was held to be unpatentable in O’Reilly v.
`Morse, 56 U.S. (15 How.) 62 (1854). Pet. App. 20a-21a.
`At step two of the Mayo/Alice framework, the panel
`majority found no “ ‘inventive concept’ ” that “trans-
`form[ed] [claim 22] into patent eligible [subject] mat-
`ter.” Pet. App. 23a. The panel concluded that, apart
`from using Hooke’s law to “achieve[ ]” a “desired re-
`sult[ ],” claim 22 recites only “conventional” driveshaft-
`manufacturing steps. Id. at 24a.
`b. Judge Moore dissented. Pet. App. 37a-70a. In
`her view, petitioner’s claims are patent-eligible because
`they “contain a specific, concrete solution (inserting a
`liner inside a propshaft) to a problem (vibrations in
`propshafts),” and a claim is not “directed to a natural
`law simply because compliance with a natural law is re-
`quired.” Id. at 37a-38a, 44a. Judge Moore also stated
`that the majority’s conclusion that the claims merely re-
`cite a goal to be achieved had improperly introduced
`into Section 101 a “heightened enablement require-
`ment.” Id. at 66a.
`4. The court of appeals denied rehearing en banc over
`the recorded dissent of six judges. Pet. App. 150a-152a.
`Ten judges joined a total of five opinions concurring in or
`dissenting from the denial. See id. at 153a-197a.
`DISCUSSION
`The court of appeals held that claim 22 of the ’911
`patent, which claims a method of manufacturing auto-
`mobile driveshafts that uses specific mechanical struc-
`tures and calibrates particular physical properties, is
`patent-ineligible under Section 101. That holding is in-
`correct. Historically, such industrial techniques have
`long been viewed as paradigmatic examples of the
`“arts” or “processes” that may receive patent protec-
`
`
`
`
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`9
`
`tion if other statutory criteria are satisfied. The court
`of appeals erred in reading this Court’s precedents to
`dictate a contrary conclusion. The decision below re-
`flects substantial uncertainty about the proper applica-
`tion of Section 101, and this case is a suitable vehicle for
`providing greater clarity.
`The first question presented in the petition for a writ
`of certiorari focuses on the first step of the Mayo/Alice
`framework, i.e., “the appropriate standard for deter-
`mining whether a patent claim is ‘directed to’ a patent-
`ineligible concept.” Pet. i. But the second step of that
`framework has also produced uncertainty and confusion
`in the lower courts. Clarification of both steps is espe-
`cially important, both because a court’s step-two analy-
`sis often finally resolves the determination as to patent-
`eligibility, and because the nature of the initial step-one
`screen logically depends in part on the inquiry that
`courts will apply at step two. To ensure that the Court
`has the opportunity to consider how both steps should
`operate in resolving the ultimate question of patent-
`eligibility, the Court should grant review on question 1
`as framed in this brief. See p. I, supra.
`1. Under Section 101 as interpreted for more than
`150 years, petitioner’s claims recite a patent-eligible
`“process.” 35 U.S.C. 101. In the patent context, the
`Court has long construed that term to include “a mode
`of treatment of certain materials to produce a given re-
`sult,” or “an act, or a series of acts, performed upon the
`subject-matter to be transformed and reduced to a dif-
`ferent state or thing.” Diamond v. Diehr, 450 U.S. 175,
`183 (1981) (quoting Cochrane v. Deener, 94 U.S. 780, 788
`(1877 )); see p. 3, supra.
`Representative claim 22 of the ’911 patent recites a
`method of manufacturing automobile driveshafts so as
`
`
`
`
`
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`10
`
`to reduce multiple types of driveshaft vibration simul-
`taneously. Pet. App. 6a-7a. It sets forth a series of con-
`crete steps to achieve that outcome: taking a hollow
`driveshaft; calibrating the mass and stiffness of a liner
`to match one or more vibration frequencies of that
`driveshaft by controlling various physical characteris-
`tics of the liner; and inserting the liner into the
`driveshaft. Ibid. “Industrial processes such as this are
`the types which have historically been eligible to receive
`the protection of our patent laws.” Diehr, 450 U.S. at
`184; see id. at 182-184 & nn.7-8 (discussing historical
`understandings of the term “process” and its statutory
`predecessor, “art”); id. at 181-193 (upholding as patent-
`eligible claims for “an industrial process for the molding
`of rubber products”).
`2. The court of appeals held that claim 22 “is patent
`ineligible under section 101” based on its application of
`the “two-step test established in” Mayo Collaborative
`Services v. Prometheus Laboratories Inc., 566 U.S. 66
`(2012), and Alice Corp. Pty. Ltd. v. CLS Bank Interna-
`tional, 573 U.S. 208 (2014). Pet. App. 10a; see id. at
`10a-25a. Under that test, a court first “determines
`whether the claims at issue are directed to” a law of na-
`ture or another “patent-ineligible concept[ ].” Alice,
`573 U.S. at 217. “If so,” the court asks whether other
`“elements * * * ‘transform the nature of the claim’ into a
`patent-eligible application.” Ibid. (citation omitted).
`The Mayo/Alice framework has given rise to sub-
`stantial uncertainty. U.S. Amicus Br. at 11-21, Hikma
`Pharm. USA Inc. v. Vanda Pharm. Inc., 140 S. Ct. 911
`(2020) (No. 18-817). The broader context of the Section
`101 inquiry and principles this Court has emphasized,
`however, supply useful guideposts for applying the
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 16 of 27 PageID #: 901
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`11
`
`framework. We highlight four relevant considerations
`below.
`a. First, the Court has drawn a fundamental distinc-
`tion “between patents that claim the ‘building blocks’ of
`human ingenuity and those that integrate the building
`blocks into something more, thereby ‘transforming’
`them into a patent-eligible invention.” Alice, 573 U.S.
`at 217 (quoting Mayo, 566 U.S. at 72, 89) (brackets
`omitted). “[L]aws of nature, natural phenomena, [and]
`abstract ideas” are not patent-eligible, but “ ‘[a]pplica-
`tions’ of such concepts ‘to a new and useful end’ ” are
`“eligible for patent protection.” Ibid. (brackets and ci-
`tation omitted); see Mayo, 566 U.S. at 77. A principal
`purpose of the Mayo/Alice framework is to distinguish
`between those two types of claimed inventions. Mayo,
`566 U.S. at 72, 79; see id. at 77, 80, 87; Alice, 573 U.S. at
`217, 221, 223.
`The claims held to be patent-eligible in Diehr are il-
`lustrative. The Diehr Court upheld a patent on “a phys-
`ical and chemical process for molding precision syn-
`thetic rubber products,” which included “a step-by-step
`method for accomplishing” the stated objective. 450 U.S.
`at 184; see id. at 181-193. Although “several steps of the
`process” required use of a particular “mathematical
`equation”—the Arrhenius equation—the Court “d[id]
`not view [the] claims as an attempt to patent [that] math-
`ematical formula” or the relationship it expressed. Id.
`at 185, 192. Instead, the Court held that the claims were
`“drawn to an industrial process” that used the Arrhe-
`nius equation “in conjunction with all of the other steps
`in the[ ] claimed process.” Id. at 187, 192-193; see id. at
`187 (“[T]he respondents here do not seek to patent a
`mathematical formula. Instead, they seek patent pro-
`tection for a process of curing synthetic rubber.”).
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 17 of 27 PageID #: 902
`
`12
`
`b. Second, the Court has repeatedly recognized that,
`“[a]t some level, ‘all inventions . . . embody, use, reflect,
`rest upon, or apply laws of nature, natural phenomena,
`or abstract ideas.’ ” Alice, 573 U.S. at 217 (quoting
`Mayo, 566 U.S. at 71); see Pet. App. 44a (Moore, J., dis-
`senting). Courts therefore must “tread carefully in con-
`struing th[e] exclusionary principle lest it swallow all of
`patent law,” and “an invention is not rendered ineligible
`for patent simply because it involves” a patent-ineligible
`concept. Alice, 573 U.S. at 217 (citing Diehr, 450 U.S.
`at 187); see, e.g., Eibel Process Co. v. Minnesota & On-
`tario Paper Co., 261 U.S. 45, 52-69 (1923) (Taft, C.J.)
`(upholding the patentability of a paper-making machine
`whose improvement over the prior art was the use of
`gravity to accelerate the flow of the stock used in the
`production process).
`c. Third, the Section 101 inquiry is guided by histor-
`ical practice and judicial precedent. The Court in Bilski
`v. Kappos, 561 U.S. 593 (2010), described the “excep-
`tions” it recognized as rooted in decisions “going back
`150 years,” id. at 602. And the Mayo Court grounded
`its application of those exceptions in historical practice
`and precedent. See Mayo 566 U.S. at 80-85 (discussing
`Diehr, supra; Parker v. Flook, 437 U.S. 584 (1978); and
`Neilson v. Harford, Webster’s Patent Cases 295, 371
`(1841)); see also Alice, 573 U.S. at 218-219, 222-223.
`Courts thus should be skeptical of any assertion that a
`claim for the sort of process that has long been held
`patent-eligible, such as an industrial manufacturing
`process, is unpatentable under the “law of nature” ex-
`ception.
`d. Finally, the Court has “described the concern that
`drives th[e] exclusionary principle” and that “under-
`girds [its] § 101 jurisprudence” “as one of pre-emption”:
`
`
`
`
`
`Case 1:20-cv-00518-JLH Document 40-3 Filed 07/22/22 Page 18 of 27 PageID #: 903
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`13
`
`the “ ‘[m]onopolization’ ” by a patentee of one of “ ‘the
`basic tools of scientific and technological work.’ ” Alice,
`573 U.S. at 216, 223 (citations omitted); see id. at 217,
`223; accord, e.g., Mayo, 566 U.S. at 71, 86. The Mayo
`Court described its inquiry as seeking “practical assur-
`ance that the process” claimed “is more than a drafting
`effort designed to monopolize [a] law of nature itself.”
`566 U.S. at 77. And in applying Section 101, the Court
`has considered whether a claim would “tie up too much
`future use of laws of nature.” Id. at 87. A claim that
`confers exclusivity only over a narrow range of activity
`is less likely to implicate that concern. See Diehr,
`450 U.S. at 187 (finding that patentees “d[id] not seek
`to pre-empt the use of [the Arrhenius] equation” but
`“s[ought] only to foreclose from others the use of that
`equation in conjunction with all of the other steps in
`their claimed process”).
`3. The court of appeals erred in applying those prin-
`ciples to claim 22 of the ’911 patent.
`a. Claim 22 does not resemble the claims that the
`Court held patent-ineligible in Mayo and Alice. It does
`not “simply describe[ ]” or “recite[ ]” any natural law.
`Mayo, 566 U.S. at 77; see Alice, 573 U.S. at 220. Claim
`22 recites a physical process for producing a particular
`type of automobile component. It directs the user to
`begin with a hollow driveshaft; to “tun[e] [the] mass and
`[the] stiffness of [a] liner,” i.e., to “control[ ] [its] mass and
`stiffness * * * to configure the liner to match” one or
`more “frequencies” of the driveshaft so that the liner can
`dampen multiple modes of driveshaft vibration at once;
`and to insert the liner into the driveshaft. Pet. App. 6a-8a.
`Like “[e]very mechanical invention,” claim 22 “re-
`quires use and application of the laws of physics.” Pet.
`App. 44a (Moore, J., dissenting). The panel majority
`
`
`
`
`
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`
`14
`
`held that the “tuning” step “requires use” of Hooke’s law,
`which relates mass and stiffness to frequency. Id. at 13a.
`But because all useful inventions that operate in the
`physical world depend for their efficacy on natural laws
`(whether known or unknown), such dependence by itself
`cannot render claim 22 patent-ineligible. See p. 12, su-
`pra. Instead, like the claims held patent-eligible in
`Diehr, claim 22 recites an “industrial process” that en-
`tails a concrete application of Hooke’s law in a particu-
`lar setting. 450 U.S. at 192-193.
`The remaining guideposts articulated in this Court’s
`decisions point to the same conclusion. As discussed
`above, claim 22 recites an “[i]ndustrial process[ ]” of a
`kind that “ha[s] historically been eligible to receive the
`protection of our patent laws.” Diehr, 450 U.S. at 184;
`see pp. 9-10, supra. And it cannot accurately be de-
`scribed as “a drafting effort designed to monopolize”
`Hooke’s law. Mayo, 566 U.S. at 77. Claim 22 “do[e]s
`not seek to pre-empt the use of that equation,” Diehr,
`450 U.S. at 187, in general or in the specific context of
`manufacturing automobile driveshafts.
` It instead
`simply “foreclose[s] from others the use of that equation
`in conjunction with all of the other steps in [the] pro-
`cess.” Ibid.; see p. 11, supra.
`b. At step one of the Mayo/Alice framework, the
`panel majority stated that claim 22 “is directed to a nat-
`ural law because it clearly invokes a natural law, and
`nothing more, to accomplish a desired result.” Pet.
`App. 21a. The majority viewed claim 22 as implicitly in-
`voking Hooke’s law to dampen multiple modes of
`driveshaft vibration while “provid[ing] no details” ex-
`plaining how “to accomplish [that] desired resu
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