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Case Law Meeting - American Axle Mfg. v. Neapco Holdings LLC, et al.
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When: Friday, September 18, 2020
12:00 PM EDT
Where: Zoom
Boston, Massachusetts 
United States
Contact: Case Law Committee

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Case Law Committee Meeting:


Friday, September 18, 2020

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Call-in instructions will be sent to registrants prior to the meeting.

Moderator: Scott Pierce, Foley Hoag

The Court of Appeals for the Federal Circuit recently denied a petition for rehearing en banc of a decision invalidating claims to a method of manufacturing motor vehicle axles for lack of patent eligibility under 35 U.S.C. § 101.


In a rare move, not only were the judges evenly split, issuing two concurring and three dissenting opinions, they modified the original decision that prompted the petition for rehearing.  While the significance of the decision has yet to be seen, the various opinions of the judges are insights to the state of patent eligibility ten years after the Supreme Court in Bilski v. Kappos, 561 U.S. 593 (2010), refused to consider the so-called “machine-or-transformation” test to be determinative.  Of particular concern is the emphasis placed by the concurring opinions on O’Reilly v. Morse, 56 U.S. 62 (1854), a nearly one-hundred and seventy year old case that is often cited, with many others, for the well-established understanding that laws of nature, naturally-occurring phenomena and abstract ideas are not protectable because to do so “shuts the door against inventions of other persons….”


Unlike many other recent cases, the claimed subject matter at issue in AAM v. NEAPCO is not directed to a method of use, software, or isolated products of nature, but rather to a method for manufacturing a product that claims no software and bears no resemblance to a product of nature.  Rather, the claims at issue in AAM v. NEAPCO arguably employed a law of nature (Hooke’s law) to manufacture a product and, arguably, like the method for curing rubber in Diamond v. Diehr, 450 U.S. 175 (1981), another well-known case.  Unlike Diamond v. Diehr, however, the eligibility of the claimed subject matter was upheld.  As stated by the Supreme Court in that case, “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requisite of § 101.”


Please join us for a discussion addressing whether AAM v. NEAPCO likely is an aberration, or an indicator that recent developments in the doctrine of patent eligibility may begin to call into question an ever-larger portion of settled case law and subject matter previously considered safe.

Please review the following documents prior to the meeting:
AAM v. Neapco Modified Opinion
AAM v. Neapco Order

Case Law Committee Co-Chairs:

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale
Michelle Nyein, Wolf Greenfield

N. Scott Pierce, Foley Hoag LLP

David Thibodeau, VLP Law Group


Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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