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Warner Norcross + Judd LLP is a corporate law firm with over 230 attorneys serving clients in nine offices throughout Michigan. Among the largest law firms in Michigan, Warner works in virtually all areas of business law.

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In the eight years since the Supreme Court’s decision in Alice v. CLS Bank, patent stakeholders have struggled with whether inventions—typically in the software realm—are eligible for patent protection. This uncertainty remains the norm, particularly as the Supreme Court declined to take up American Axle’s appeal and clarify the legal test for determining patent eligibility.

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Closing out the 2021-2022 term, the Supreme Court denied certiorari in American Axle v. Neapco. This appeal turned on whether American Axle’s method for reducing drive shaft vibrations was patent eligible. At a high level, the method included “tuning” a liner to absorb vibrations and inserting the liner into a drive shaft. Applying the Supreme Court’s two-step analysis (discussed below) to American Axle’s claimed method, a divided Federal Circuit determined that the claimed method was patent ineligible as being directed to a law of nature. In particular, the Federal Circuit determined that the claimed method recited a desired result, not a patentable invention, that would have preempted the use of a law of nature (Hooke’s law) in the tuning of liners for vehicle drive shafts.

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The existing two-part test for patent eligibility requires lower courts to first determine if an invention is “directed to” a patent-ineligible concept, and if so, determine whether the claimed invention is sufficient to “transform” this concept into a patent-eligible invention. American Axle’s petition for certiorari raised concerns regarding the workability of the first step in this two-part test. A significant number of amicus briefs were filed in support of American Axle’s petition, reflecting the widespread interest in the Supreme Court’s patent eligibility jurisprudence. The Supreme Court even requested the views of the U.S. Solicitor General, which is typically a sign that a grant of certiorari is likely. For its part, the government joined American Axle’s request that the Supreme Court clarify its two-part test for patent eligibility.

After all of this activity, it was a surprise to many that the Supreme Court declined to take up American Axle’s appeal. For now, the Supreme Court’s two-part test for patent eligibility remains the law of the land. However, other appeals to the Supreme Court are likely to follow. For one, the American Axle patent is related to an alleged law of nature—not an alleged abstract idea, which is more typical of patent eligibility disputes. In addition, the American Axle appeal did not originate from the Patent Office, which arguably follows a more structured framework than district courts in the application of the Supreme Court’s two-part test. Consequently, it is possible that the Supreme Court will revisit its Alice decision when a more favorable vehicle for an appeal presents itself.

In the meantime, innovators should work with patent counsel to frame their inventions as significantly more than the application of laws of nature or abstract ideas. While not a guarantee of success, careful patent drafting can mitigate the uncertainty inherent in the Supreme Court’s existing patent-eligibility analysis, which may be the standard for many years to come.

If you would like more information regarding the patenting of new inventions or their enforcement in view of existing standards for patent eligibility, please contact Vito Ciaravino, Randy Peck or any of the intellectual property attorneys in our Automotive Industry Group.

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Supreme Court Declines to Clarify Test for Patentable Subject Matter

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Supreme Court Declines to Clarify Test for Patentable Subject Matter

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