[00:00:03] Speaker 03: Our final case this morning is number 18-1763, American Axle and Manufacturing versus Nippel Holdings, LLC. [00:00:29] Speaker 03: Mr. Nuttall? [00:00:40] Speaker 02: Good morning. [00:00:41] Speaker 02: It pleases the court. [00:00:42] Speaker 02: Jay Nuttall on behalf of American Axel, the appellant. [00:00:45] Speaker 02: We're here today to discuss the district court's decision finding claims directed to a method of manufacturing a prop shaft with liners to reduce prop shaft vibration and to whether or not those are ineligible patent subject matter. [00:01:01] Speaker 02: The district court found that the claims were directed to a law of nature, Hook's Law. [00:01:07] Speaker 02: Hook's law is a mathematical formula that determines the frequency of an object. [00:01:13] Speaker 02: The claims in this case, as construed by the court, require liners that are specifically designed to not only match, but to damp multiple different types of vibration modes, bending modes, shell modes. [00:01:27] Speaker 02: And the claims require that those liners damp those different modes in different ways. [00:01:33] Speaker 02: Prior to the inventions problem is it really doesn't tell you how to do it right it says Do tuning but it doesn't tell you how to do the tuning well both the claims and the spec talk about Controlling the characteristics of the liner and that the specification tells you Here's what you control you control the diameter of the liner the thickness of it and [00:01:56] Speaker 02: where you place the liner, location is important, and it tells you to tune the liner within about 20% or more of the prop shaft mode. [00:02:07] Speaker 03: It also tells you how... Looking at this patent, you couldn't tell how to do it. [00:02:12] Speaker 03: Someone skilled in the art wouldn't know how to do it. [00:02:14] Speaker 03: You'd need additional information, right? [00:02:18] Speaker 02: I disagree, Your Honor. [00:02:19] Speaker 02: The patent specification tells you what characteristics to control. [00:02:24] Speaker 02: And that the liner has to not only match, but it has to damp these different vibration modes. [00:02:29] Speaker 02: And those skilled in the art know what bending modes are and shell modes are. [00:02:34] Speaker 02: And they know that when you put a damper in and you can tell if that damper actually reduces vibration at those modes. [00:02:42] Speaker 02: And that's exactly what happened in this case. [00:02:44] Speaker 02: NIAPCO, prior to this invention, was not using tuned liners at all. [00:02:51] Speaker 02: And they studied the 9-11 patent, and they were able to come up with two liners from exactly that disclosure. [00:02:58] Speaker 02: So I do think that the patent teaches one skill in the art how to make a two liner to not only match the relevant frequency, but also damp those different modes. [00:03:07] Speaker 00: Well, claim 22, as I understand your argument in the wherein clause, contains physical limitations on the liner as well, right? [00:03:16] Speaker 00: Resistive and reactive. [00:03:17] Speaker 02: Absorber for attenuating to vibration modes and that one of skill in the art would understand both respect and in general Those are physical limitations on the type of liner that could even be used in this process That's correct your honor and in addition to that that it teaches exactly how the liner is going to damp those different modes and those skills in the art understand that the damp bending mode you need to have a reactive damper that's going to oscillate in opposition to that and [00:03:43] Speaker 00: You ended up with a very broad claim construction here from the lower court. [00:03:49] Speaker 00: And in particular, I'm talking about the tuning limitation. [00:03:55] Speaker 00: You had a very broad claim construction. [00:03:57] Speaker 00: And you might be up against problems on 102, 103, or 112 with that problem, like what a skilled artisan would understand or enablement. [00:04:07] Speaker 00: How is it that that, though, turns into a 101 issue in this case? [00:04:11] Speaker 02: Well, I think that, and that was one of the critical issues I wanted to talk about with the court today, the district court completely eliminated the wear-in clause from Claim 22 and didn't talk about any of the limitations in Claim 1. [00:04:25] Speaker 02: That does not include a wear-in clause. [00:04:26] Speaker 02: That specifically talks about these different steps of damping the different modes and how it's accomplished. [00:04:32] Speaker 02: So if you just look at Claim 2, after the court removed the wear-in clause, which requires the... Claim 22, you mean? [00:04:39] Speaker 02: Yes. [00:04:39] Speaker 02: The court removed the wear-in clause. [00:04:42] Speaker 02: Specifically, expressly said they're not going to give it any weight. [00:04:47] Speaker 02: While in most cases, parties may dispute about how you characterize claims, in this case, the court expressly said, I'm not going to give the wear-in clause any weight. [00:04:57] Speaker 02: And therefore, all that was left was this broad tuning term. [00:05:01] Speaker 00: We think that's inappropriate those claim terms were construed the court gave those terms meaning tuned reactive absorber requires Damping of bending mode in a certain way understand the tuning limitation to be limited by the wearing clause because you know specifically To a pretty high degree of certainty specific information about the type of liner [00:05:23] Speaker 00: that's going to be used by virtue of the wearing clause, and that therefore otherwise narrows the tune clause. [00:05:28] Speaker 00: Had the wearing clause not been there, tuning could be very, very, very broad. [00:05:33] Speaker 02: I agree, Your Honor. [00:05:34] Speaker 02: That's exactly right. [00:05:35] Speaker 02: And I think that's where the district court went wrong here. [00:05:37] Speaker 02: And wearing clause or not, I mean, claim one does not have a wearing clause. [00:05:42] Speaker 02: And it specifically recites these different limitations [00:05:45] Speaker 02: about the liner having to damp bending mode vibrations, the liner being positioned to damp shell load. [00:05:50] Speaker 03: That's just a statement of the result that doesn't tell you how to do it. [00:05:54] Speaker 03: I mean, when you look at the specification, it says you have all these variables, and your expert said, you know, basically do it by trial and error. [00:06:06] Speaker 03: You know, change this variable, change that variable, change the other variable. [00:06:12] Speaker 03: But it doesn't tell you how to change the variables, right? [00:06:16] Speaker 02: Two quick responses, Your Honor. [00:06:18] Speaker 02: I think the patent does disclose that it tells you how to tune the liner to a certain percentage. [00:06:25] Speaker 02: It tells you which variables to change. [00:06:26] Speaker 02: And there's not that many. [00:06:28] Speaker 02: It tells you where to place the liner, depending on where the bending mode is. [00:06:32] Speaker 02: The issue and the argument that NIAPCO has made is that there's not a specific. [00:06:37] Speaker 02: None of that is new. [00:06:38] Speaker 03: I mean, there were liners. [00:06:41] Speaker 03: There were changes to the liners to make them dampen, right? [00:06:45] Speaker 02: That was not new. [00:06:46] Speaker 02: Well, the liners had never been used to damp bending mode, which requires that they be tuned to have a certain frequency and damp bending mode by oscillating in opposition to them. [00:06:56] Speaker 02: Prior to this invention, people would shove cardboard into the prop shaft to try to keep the shell mode from, to damp the shell mode vibrations. [00:07:05] Speaker 02: But nobody had ever tuned a liner to have it specifically damp a bending mode or be able to damp multiple different modes. [00:07:12] Speaker 02: These prop shafts each prop shaft is different. [00:07:15] Speaker 02: They're different lengths. [00:07:16] Speaker 02: They're different widths So they have bending mode vibrations at different frequencies You can't say build this one specific liner, and it will fit for every prop shaft But what is was easy to do is easy for napko to do was to take this disclosure and say here's the prop shaft We know the bending mode frequency is at 300 Hertz. [00:07:35] Speaker 02: I'm going to build a liner that is [00:07:38] Speaker 02: damps bending mode at 300 hertz with these specific characteristics. [00:07:41] Speaker 02: I'm going to put it in the location so it will damp that bending mode. [00:07:45] Speaker 02: And so the claims do require that. [00:07:47] Speaker 02: The claims as construed require controlling characteristics so it has that properties. [00:07:52] Speaker 02: has those properties, it requires a location so that it damps those different modes. [00:07:57] Speaker 02: And that was all new and different, and liners had not been used for that. [00:08:00] Speaker 01: What's the difference between, let's just use the claim construction meaning of tuning. [00:08:07] Speaker 01: Tuning is controlling the characteristics of. [00:08:10] Speaker 01: That's all tuning means, right? [00:08:12] Speaker 01: And then the wherein clause and the various references to the two kinds of dampening [00:08:20] Speaker 01: What's the difference between if you substitute control the characteristics, you're saying controlling the characteristics so that [00:08:32] Speaker 01: a dual damping result follows. [00:08:36] Speaker 01: Why is that different from the kind of result-only, no-means specified claim that has been troubling for 150 years? [00:08:47] Speaker 02: Sure. [00:08:48] Speaker 02: To one quick point, claim one, as the tuning requirement was construed to be, controlling the characteristics to configure the liner to match relevant frequency to reduce two types of vibration [00:09:00] Speaker 02: It is a little bit different than the claim 22 construction. [00:09:04] Speaker 01: But says do something with material to produce either of two different or both of two results. [00:09:14] Speaker 01: One to soak up a kind of frequency and the other is to counteract it like noise canceling. [00:09:21] Speaker 02: It tells you to specifically build a liner that is built with the right length with diameter frequency. [00:09:30] Speaker 02: put it in the right location and use that to damp bending mode and shell mode vibration. [00:09:37] Speaker 02: It's not just a result. [00:09:38] Speaker 02: You have to make a specific liner that does that. [00:09:42] Speaker 01: But why is that? [00:09:43] Speaker 01: I guess here's what I'm struggling with. [00:09:45] Speaker 01: Ever since Leroy and O'Reilly against Morse, there's been a line. [00:09:53] Speaker 01: which has become a 101 line, even if it wasn't originally a 101 line, between saying, I want something that has a certain property, and I claim anything that has that property, which is a bad kind of claim, and a claim that says, here is something about how I get that property. [00:10:19] Speaker 01: Why is this on the right side of that line? [00:10:23] Speaker 02: Yes, Your Honor. [00:10:24] Speaker 02: So the claim does not just say we're claiming a liner that has a certain frequency, or we're not claiming Hooke's law where you determine the frequency of a liner. [00:10:35] Speaker 01: We're claiming a liner that performs two functions, soaking up one kind of vibration and counteracting another. [00:10:44] Speaker 02: Right. [00:10:45] Speaker 02: We're claiming a method of manufacturing a prop shaft. [00:10:47] Speaker 02: So you have to know, you have to have the prop shaft first and then the liner that is going to not only match with the frequency, but is also going to damp those different modes. [00:10:56] Speaker 02: And in order to do that, you have to build a specific liner to accomplish that. [00:11:01] Speaker 02: So it's not a broad concept of, you know, any sign or some of the older cases that talk about the general concept. [00:11:09] Speaker 02: This is a claim. [00:11:10] Speaker 02: more like cells direct or exergen where even if you assume that Hook's law has some application to the claims, the claims have a method of producing a prop shaft that [00:11:22] Speaker 02: it results in a new and different result that hadn't been achieved. [00:11:26] Speaker 00: And uses characteristics other than mass and stiffness, which are the only factors in hooks to decide how to make that work. [00:11:34] Speaker 00: For example, location, right? [00:11:36] Speaker 00: Correct. [00:11:36] Speaker 00: I mean, you articulated all that in a string site, but I don't want it to get lost in this discussion, which is [00:11:41] Speaker 00: This could very well employ Hooke's law, but it also employs other characteristics in the choice of liner and location within the system to operate properly, none of which are utilized. [00:11:53] Speaker 00: They don't have a variable in Hooke's law for location and all of that, and all of that is critical. [00:11:57] Speaker 00: and specifically articulated in the claims. [00:11:59] Speaker 02: That's correct. [00:12:00] Speaker 02: That was the other point I wanted to make before I stepped down and say the rest of the question. [00:12:04] Speaker 02: But basically it's done by trial. [00:12:05] Speaker 03: And you start with a computer program, and then you do trial and error to come to the correct result, right? [00:12:12] Speaker 02: Well, we would say you'd start with making a liner. [00:12:14] Speaker 02: And you would test the liner. [00:12:16] Speaker 02: And just like Neopko did in this case, they created a liner log. [00:12:20] Speaker 02: And they said, after two months, this is great. [00:12:22] Speaker 02: This one works best because we've [00:12:24] Speaker 02: Got the right thickness, we have the right diameter, and we've picked the right characteristics that are disclosed in this pattern. [00:12:29] Speaker 02: How are those characteristics determined by trial and error, use of a computer program? [00:12:33] Speaker 02: What does the record tell us about that? [00:12:35] Speaker 02: The record tells us that those skilled in the art test the actual prop shaft and damper to see if it actually damps vibration. [00:12:41] Speaker 02: And so that's what the parties did in this case. [00:12:43] Speaker 02: And then adjust it. [00:12:45] Speaker 02: Yes, you could adjust it if a damper doesn't work. [00:12:47] Speaker 02: And so what Neapco had before was an untuned liner that they put in and didn't get the results that they wanted. [00:12:53] Speaker 02: They looked at the patent. [00:12:54] Speaker 02: They changed the characteristics to get the exact physical characteristics that they needed to damp the relevant modes. [00:13:01] Speaker 02: And the claims do talk about that. [00:13:03] Speaker 02: And Hook's Law does not inform all of those other elements, like liner shape and mode, location of the liner, fitness, interference fit, things like that. [00:13:13] Speaker 02: So with that, unless there's other questions now, I'd like to reserve a little time for rebuttal. [00:13:19] Speaker 02: OK. [00:13:19] Speaker 02: Thank you, General. [00:13:29] Speaker 04: I want to start and pick up where you left off. [00:13:40] Speaker 04: This is a claim to a goal, the result, and that is – and it's defined in the background [00:13:47] Speaker 04: of the invention, which is the idea of tuning a liner to dampen two different modes of vibration. [00:13:56] Speaker 04: The wherein clause is what American Axles pointed to as the inventive concept. [00:14:03] Speaker 04: In other words, tuning to two different vibration modes. [00:14:06] Speaker 04: But that's, as the district court correctly recognized, that is simply the result. [00:14:10] Speaker 04: That is what happens once the methodology is fully performed and achieved. [00:14:15] Speaker 04: And so when you do look at the methodology, what you're left with is taking a liner, taking a prop shaft, and putting the liner inside the prop shaft. [00:14:25] Speaker 04: And above that, you have the direction to tune it. [00:14:30] Speaker 04: as recited in the claims is the idea of changing a mass, an object's mass or its stiffness in order to alter its frequency. [00:14:39] Speaker 04: That is nothing more than Hooke's law with the direction to apply it. [00:14:44] Speaker 00: And to the... I mean, your problem with that's something that Hooke's law with the direction to apply it is that Hooke's law may have variables that represent mass and stiffness, but they don't have variables that represent all those other characteristics. [00:14:57] Speaker 00: which are at issue in these claims, like positioning the liner. [00:15:01] Speaker 00: And he listed four or five different characteristics. [00:15:04] Speaker 00: I can't express that facility with it that he has, but he articulated them all. [00:15:08] Speaker 00: And that's not Hooke's law. [00:15:10] Speaker 00: Those are different from Hooke's law. [00:15:12] Speaker 00: Yet there are characteristics that go into helping to achieve the claimed invention. [00:15:16] Speaker 04: Two responses to that, Your Honor. [00:15:18] Speaker 04: First is the record shows that mass and stiffness are the two variables that matter. [00:15:24] Speaker 04: And when you look at the various other characteristics within the specifications. [00:15:26] Speaker 00: No, the claims expressly say positioning matters, as does the specification throughout it, that the location matters as well. [00:15:33] Speaker 04: Well, positioning without any other information about how you do it, and it simply says positioning the line or within the axle. [00:15:40] Speaker 00: Well, in each scenario, all the criteria matters, right? [00:15:42] Speaker 00: I mean, you know, your mass matters, your height matters, your width matters, you know, everything matters. [00:15:50] Speaker 00: Result is achieved not just by varying two variables which happen to appear in a particular formula This result is achieved by specifically limiting a lot of different characteristics well and those characteristics may have been recited in the Specification there are a lot of them and in the claims the characteristics are not recited in the claims other than mass and stiffness It was positioning the at least one-liner and claim one that's not a location limitation [00:16:19] Speaker 04: It's a method. [00:16:21] Speaker 04: It doesn't tell you where inside the prop shaft to place it. [00:16:25] Speaker 04: It simply says position it with inside. [00:16:27] Speaker 04: And the meat of this claim is the tuning limitation. [00:16:30] Speaker 04: That's been the focus of the party's dispute below. [00:16:34] Speaker 04: Let me turn to... [00:16:36] Speaker 04: the inventor's testimony in this case. [00:16:39] Speaker 00: My problem is you'd like me to just disregard the wear-in clause altogether in Claim 22, and I personally think it provides physical limitations for the claim and don't think it can be disregarded. [00:16:49] Speaker 00: So yeah, I take out that wear-in clause of Claim 22. [00:16:51] Speaker 00: Claim 22 is a heck of a lot broader, and you've got a much easier case. [00:16:55] Speaker 04: Well, and respectfully, the question of how broad the wear-in clause is, I think the district court was correct in saying it is nothing more than the result. [00:17:04] Speaker 04: And if you look at Claim 8 of the patent, [00:17:06] Speaker 04: I think this characterizes how broad the wearing clause is. [00:17:12] Speaker 04: I'm sorry, column 8 of the patent. [00:17:15] Speaker 04: That's at A33. [00:17:18] Speaker 04: At about lines 24, tuning, this is the discussion of how you tune, and it says in certain situations it may not be possible to exactly tune the liner to two or more relevant frequencies. [00:17:33] Speaker 04: Next sentence, it says, as such, it will be understood that a liner will be considered to be tuned to a relevant frequency if it is effective in attenuating vibration at the relevant frequency. [00:17:44] Speaker 04: Down below, around line 44, as another example, the liner can be considered to be tuned to a relevant shell mode frequency if it damps shell mode vibration by an amount that is greater than or equal to about 2%. [00:18:00] Speaker 04: And so the tuning, [00:18:01] Speaker 04: is defined effectively as the result that you're hoping to achieve. [00:18:06] Speaker 04: That's the goal. [00:18:09] Speaker 01: Judge Morton. [00:18:10] Speaker 01: Does that build in to the term tuning, the question of where the liner is located? [00:18:19] Speaker 04: Where the liner is located is actually [00:18:22] Speaker 01: And this is probably directly to... If you have, you know, trough crest misalignment, it's just not going to do the job. [00:18:32] Speaker 01: So, right, because you need to have those subtract each other. [00:18:38] Speaker 01: So, does that suggest that placement, the right positioning is part of what it means to tune? [00:18:47] Speaker 04: The at the top of column 8 of the patent again at a 33 it does refer to the location of the liners within the shaft member And that entire paragraph within the patent is a discussion of what it is to tune It's not a discussion of what the positioning limitation the claims is so so location of the liner is is something that is within this concept of tuning [00:19:12] Speaker 00: If location of the liner is within the concept of tuning, can you tune a liner without adjusting its mass or stiffness to achieve these results? [00:19:23] Speaker 00: Absolutely, you can't say no, because it's a matter of technology. [00:19:26] Speaker 00: Yes, of course you can. [00:19:27] Speaker 00: If you already have a certain mass and stiffness and you just move the location, that would be tuning. [00:19:33] Speaker 04: I would agree in some respect. [00:19:34] Speaker 04: In another respect, the location of the liner may affect the form fit and the stiffness of the object. [00:19:41] Speaker 04: So in some sense, and it does go back to trial and error. [00:19:45] Speaker 00: May, but it also may not. [00:19:47] Speaker 00: You can tune a liner in this case to achieve the results in the claim simply by relocating it, can't you? [00:19:53] Speaker 04: Well, respectfully, I disagree, because the claim construction is changing characteristic of the liner. [00:20:00] Speaker 04: You start with a liner. [00:20:03] Speaker 04: the claim say, tune it, and then you have a result within the claim. [00:20:08] Speaker 04: So you have the goal, you know what you're trying to achieve, but you don't know how to do it. [00:20:12] Speaker 04: And if you take any number of these different characteristics, there's nearly a dozen of them, what you have is trial and error. [00:20:20] Speaker 00: And the only two of those characteristics of which there's nearly a dozen are mass and stiffness that are included within Hook's law. [00:20:26] Speaker 00: See, my problem with this isn't that these claims are broad. [00:20:28] Speaker 00: They're broad. [00:20:29] Speaker 00: I grant you they're broad. [00:20:31] Speaker 00: I don't love the kind of broad claiming that I see here. [00:20:34] Speaker 00: My problem with this is trying to fit it within the umbrella of 101 as opposed to letting you slap it down under 103 or 112. [00:20:43] Speaker 00: My problem with this is that the district court [00:20:46] Speaker 00: put all his eggs in the hooks law basket hooks law only involves two variables there's a lot more in these claims in those two variables which control the ability to have it perform consistent with [00:20:58] Speaker 00: The result part of the claim that you articulate in the wherein clause or in claim one is in maybe the last element. [00:21:06] Speaker 00: So there's more than just mass and stiffness. [00:21:08] Speaker 00: There's more than just Hooke's law at stake here. [00:21:11] Speaker 00: So I'm not positive this kind of claim, for me, with all these other criteria, fits neatly into the 101 box. [00:21:19] Speaker 00: This feels more like diamond versus deer to me. [00:21:21] Speaker 00: The use of a formula as one component in a manufacturing process. [00:21:25] Speaker 04: Right. [00:21:26] Speaker 04: And your honor, to your question, the record shows that these other characteristics, and put positioning to the side, but these other characteristics go to mass and stiffness. [00:21:37] Speaker 04: It goes to Hooke's law. [00:21:39] Speaker 03: But even if that, I'm not sure that Chief Judge Start got it right by saying that this is just a question of implementing Hooke's law. [00:21:48] Speaker 03: There are other variables. [00:21:51] Speaker 03: which can be taken into account here, which seem not to relate to an implementation of Hooke's law. [00:21:58] Speaker 03: And Diamond v. Deere makes clear that the fact that you're implementing a particular law anyway isn't determinative of one-on-one. [00:22:06] Speaker 03: And the real question here is, do we have anything more than a result here? [00:22:11] Speaker 03: Even if you use all these different variables, it doesn't really tell you how to use the variables. [00:22:17] Speaker 03: And that's the problem. [00:22:20] Speaker 03: It's a patent on a result rather than a description of a method of how to do it. [00:22:28] Speaker 04: That's exactly right. [00:22:30] Speaker 04: And so the result is, and the breadth in which the result is claimed, is of any effective vibration in show mode, any effective. [00:22:39] Speaker 00: And you say that is exactly right. [00:22:40] Speaker 00: Just to be clear, Judge Dyke articulated a completely different rationale for getting to the same result than did Judge Stark. [00:22:47] Speaker 00: And he started by saying, the beginning of his question was, I'm not sure Judge Stark got this right. [00:22:52] Speaker 00: And so your answer was, that's exactly right, Judge Dyke. [00:22:55] Speaker 00: I just want to point that out to you. [00:22:56] Speaker 00: For the record, you're going to understand. [00:22:57] Speaker 00: If I cut and paste portions of this oral argument, his question began, Judge Stark didn't get it right, and you said, that's exactly right. [00:23:04] Speaker 00: So I want to give you a chance to rehabilitate yourself so that I don't do that to you. [00:23:09] Speaker 04: And I don't want you to do that to me. [00:23:12] Speaker 04: I think what you're, Judge Dyke, your articulation is the second half of Judge Stark's opinion where he goes through electric power and he says, and he looks at the Waring Clause and he says, truly this claim is to a result. [00:23:25] Speaker 04: And so we're here and we're defending Judge Stark's [00:23:28] Speaker 04: Opinion on the front end as well when you look at the methodology it does not tell you how to get to the result So this truly is within electric power It's it's like claim eight in the Morse case and you have a result that is broadly stated And you have a direction to tune it at an abstract high level of generality Without anything more other than this conventional methodology of taking a liner Taking a prop shaft and inserting the liner [00:23:58] Speaker 04: into the prop shaft, which the background of the patent and the specification says has been done for a long time. [00:24:03] Speaker 00: Do the mass and stiffness of the liner both go to manufacturer of the liner? [00:24:08] Speaker 04: I'm sorry. [00:24:09] Speaker 00: Do mass and stiffness of the liner both go to the manufacturer of the liner? [00:24:12] Speaker 00: You're not shaving off its mass on site when you're installing it, right? [00:24:17] Speaker 00: The manufacturer of the liner is what determines the mass or stiffness. [00:24:21] Speaker 04: Absolutely. [00:24:22] Speaker 00: Now let's move to red brief page 30. [00:24:27] Speaker 00: Red is you, right? [00:24:28] Speaker 00: You're red, correct? [00:24:29] Speaker 00: Yes. [00:24:30] Speaker 00: All right. [00:24:31] Speaker 00: Because on red brief page 30, you agree with American Axles expert that tuning can be achieved in either the design, the manufacture, or the installation of a liner. [00:24:43] Speaker 00: That's correct. [00:24:44] Speaker 00: That would be positioning. [00:24:45] Speaker 00: Installation is positioning. [00:24:48] Speaker 00: Installation isn't mass and stiffness, because that's manufacturer of the liner. [00:24:52] Speaker 00: And that's what their expert says, Mr. Ron, on page 169 of the appendix. [00:24:57] Speaker 00: And you agree with that in your red brief, that tuning can be achieved through any of those modifications. [00:25:04] Speaker 04: And the response is that truly illustrates how broad these claims are, if it could be the design, the manufacturer, or the installation. [00:25:12] Speaker 04: And back to the claim saying positioning the liner doesn't tell you how to install the liner. [00:25:17] Speaker 00: But once again, what Judge Stark said here is this all boils down to Hook's Law, and this claim is just preempting Hook's Law in this space. [00:25:24] Speaker 00: And you've agreed in your brief that tuning can be achieved through installation, which has nothing to do with an impact or alteration of mass or stiffness of the liner, which means it's only positioning. [00:25:35] Speaker 00: I don't see how a claim that is a manufacturing claim [00:25:40] Speaker 00: which can be achieved through a variable not included in the Hook's Law equation, boils down to an application of Hook's Law. [00:25:49] Speaker 04: And again, I think the methodology there is, is it conventional? [00:25:54] Speaker 04: What was done before? [00:25:55] Speaker 04: And positioning liners and prop chefs had been done for decades before. [00:25:59] Speaker 04: And do these claims tell you how to achieve the result? [00:26:00] Speaker 00: But when time figure out whether this is an abstract idea, the fact that some of the steps have been done before isn't relevant to whether it's an abstract idea. [00:26:08] Speaker 04: On the second part of the Alice Mayo step, that's what you're looking at. [00:26:12] Speaker 00: Yes, but that's not what we're talking about when we're discussing Hook's law, is it? [00:26:15] Speaker 00: We're talking about, is this directed to an abstract idea? [00:26:18] Speaker 00: And if it's not directed to an abstract idea, we don't get to the second part. [00:26:21] Speaker 00: So it doesn't matter whether those things are. [00:26:23] Speaker 04: And Your Honor, I think Judge Stark's opinion does boil down to two different concepts. [00:26:28] Speaker 00: I should say natural law, not abstract idea. [00:26:32] Speaker 04: The second portion of it. [00:26:33] Speaker 04: Maybe it is abstract. [00:26:34] Speaker 04: Well, Judge Stark found at the end of his opinion at page A16, this claim boils down to the application of a natural law to a conventional method to achieve, and this is the electric power morse, to achieve an abstract solution. [00:26:49] Speaker 00: Yeah, but the application of the natural law that he cited was Hooke's law. [00:26:52] Speaker 00: And you admit in your red brief that tuning can be achieved simply through positioning, which has nothing to do with Hooke's law. [00:26:58] Speaker 00: So it's kind of hard for me to reconcile [00:27:01] Speaker 04: Well, again, we go back to the idea that tuning is so broad that you don't know how to achieve the results. [00:27:07] Speaker 04: So what it boils down to is [00:27:09] Speaker 04: Hook's law is the relationship. [00:27:11] Speaker 03: The more variables there are, the more difficult it is to know how to do it, and the more guidance that's needed. [00:27:16] Speaker 03: And there's none as to the use of all these variables other than just use a lot of variables and figure it out. [00:27:23] Speaker 00: Doesn't that feel a lot like enablement? [00:27:25] Speaker 00: That really doesn't feel like 101, does it? [00:27:27] Speaker 04: And we go back to the Moore space? [00:27:28] Speaker 00: That was actually almost the exact articulation of what it means to enable a patent, what Judge Steichter said. [00:27:33] Speaker 04: And Judge Moran, I agree that there are other problems with these patents. [00:27:37] Speaker 04: But the Supreme Court says 101 is a threshold issue. [00:27:40] Speaker 04: The Morse case looked at this specific problem of breadth and preemption, which does underlie Section 101. [00:27:49] Speaker 00: How does it preempt Hook's Law? [00:27:51] Speaker 00: Because that's the only thing we're talking about. [00:27:52] Speaker 00: The only natural law we're talking about here is Hook's Law. [00:27:54] Speaker 00: It's the only thing that's at play. [00:27:55] Speaker 04: And it preempts. [00:27:56] Speaker 04: It is so broad, by claiming just the result and saying, tune the liner, [00:28:01] Speaker 04: It preempts the use of any automotive engineer from taking a liner and doing any sort of trial and error analysis or even accidentally taking a liner and putting it inside a prop shaft. [00:28:16] Speaker 04: By chance, by happenstance, it reduces vibration in more than one mode. [00:28:22] Speaker 04: American Axles claims would say, we're covered. [00:28:24] Speaker 04: We have the whole solution. [00:28:26] Speaker 04: And it does not matter how you get there. [00:28:28] Speaker 04: Whether or not you position it correctly, whether or not you change characteristic A, B, or C, the mass or the stiffness, you're still getting to a result which is abstract in and of itself. [00:28:41] Speaker 04: OK. [00:28:41] Speaker 03: Thank you, Mr. Allen. [00:28:43] Speaker 03: Thank you. [00:28:51] Speaker 03: Mr. Nowell? [00:28:52] Speaker 02: Yes, thank you, your honor. [00:28:55] Speaker 02: A few quick points that I'll try to make. [00:28:56] Speaker 02: I agree. [00:28:57] Speaker 02: The claims have nothing to do with Hook's law. [00:29:00] Speaker 02: And I think they're far worse from that. [00:29:01] Speaker 03: It's not that they have nothing to do with it. [00:29:04] Speaker 03: It's just my view that it's not sufficient to say that it's an application of Hook's law. [00:29:09] Speaker 03: It's more complicated than that. [00:29:11] Speaker 03: But it seems to me perhaps no less abstract. [00:29:16] Speaker 03: It doesn't tell you [00:29:20] Speaker 03: even doesn't the claims themselves don't even provide you with a list of variables. [00:29:24] Speaker 03: There are a lot of different variables. [00:29:25] Speaker 03: It's done by trial and error. [00:29:27] Speaker 03: And all the claims are telling you is here's a desirable result and use trial and error to get there. [00:29:37] Speaker 02: Well, I think the patent does talk about the different characteristics that you control. [00:29:42] Speaker 02: The claims talk about not only specific locations you put it at, anti-nodes for specific modes. [00:29:48] Speaker 02: The dependent claims also include [00:29:50] Speaker 02: They have to be directed to the second bending mode or the second show mode There are a lot of specific elements in those claims as well Just a just a hold on for a second so I understand some some of the procedure and if we go over I will [00:30:03] Speaker 00: and for my presiding judge to give you extra time. [00:30:06] Speaker 00: But was there an agreement as to representative claims in this case? [00:30:09] Speaker 02: There was no agreement, Your Honor. [00:30:11] Speaker 02: In fact, the court ordered specific briefing for both claim one and claim 22. [00:30:16] Speaker 02: And so there was definitely no agreement. [00:30:17] Speaker 00: But beyond claim one and claim 22, you don't feel like, even if I thought that claim 22, which is probably your broadest claim, [00:30:23] Speaker 00: was, if it's not representative, I can look at the other claims in the patent, too. [00:30:27] Speaker 00: You did not accede to the idea that everything stood or fell together. [00:30:30] Speaker 00: That's correct, Your Honor. [00:30:31] Speaker 00: Because you're pointing now out claim aid or other things. [00:30:33] Speaker 00: You're wanting to point out, or not claim aid, but you're wanting to point out to us elements of other claims in response to Judge Icke's question. [00:30:38] Speaker 00: So none of those were given away. [00:30:40] Speaker 02: That's correct, Your Honor. [00:30:41] Speaker 03: They weren't given away, but they weren't argued in your blue brief either. [00:30:44] Speaker 03: Oh, they were, Your Honor. [00:30:45] Speaker 03: Well, we certainly argued about claim one, Your Honor. [00:30:48] Speaker 03: Well, yes. [00:30:48] Speaker 03: But I didn't see in the blue brief separate argument about [00:30:53] Speaker 02: Features of the of the dependent clients well we certainly talked about the location of the liner That's in our briefs and talked about at length We talked about that just because you have a liner frequency that matches a project frequency that doesn't mean it will damp that The evidence where does the blue brief suggests that the other claims should come out differently I? [00:31:13] Speaker 02: I'm not suggesting that the other claims should come out differently. [00:31:15] Speaker 02: I'm just suggesting the other dependent claims and [00:31:18] Speaker 02: include these express limitations to provide even more detail. [00:31:23] Speaker 00: Let me ask another question if you don't mind. [00:31:24] Speaker 00: This case has at all times been about natural law, has it not? [00:31:28] Speaker 02: Yes, your honor. [00:31:28] Speaker 00: At no point did the district court suggest this was an abstract idea. [00:31:32] Speaker 00: That's correct. [00:31:33] Speaker 00: If we were suddenly going to, in the first instance, on appeal, without ever having it happen below, decide, ah, well, you know, Judge Stark got it wrong on this whole natural law thing because Hooks is limited to these two limitations and this is instead an abstract claim because of the breadth, [00:31:49] Speaker 00: might you have different arguments with regard to the claims here in front of us and the dependent claims that you would really like an opportunity below to be able to express? [00:31:58] Speaker 00: Should Judge Dyke want to change the entire rationale for the decision? [00:32:02] Speaker 01: Yes, Your Honor. [00:32:03] Speaker 01: Can I just ask you, can you address yourself to page 4604 of the appendix in which [00:32:09] Speaker 01: Neepko says the asserted claims attempt to claim the abstract idea of a solution to the problem in general as opposed to a particular solution, which I think is Neepko's opposition to your summary judgment of 101 validity. [00:32:27] Speaker 01: Doesn't that seem to raise the question? [00:32:30] Speaker 01: I realize Chief Judge Stark did not make this an abstract idea case. [00:32:38] Speaker 01: I'm not sure whether there's a substantive difference between what he said about result versus means and what was said here, which appears to be an assertion of the abstract idea category, though admittedly, [00:32:58] Speaker 01: in the second part of the analysis. [00:33:00] Speaker 02: Right, and in step two, I mean, clearly their briefs and their expert reports were directed at laws of nature. [00:33:06] Speaker 02: They, in fact, claimed there were two laws of nature, that the claims were directed to Hooke's Law and Fritchey's. [00:33:10] Speaker 01: The briefing seemed to evolve from initially something that was, this is Hooke's Law full stop, into when they got to this, something that started featuring more this idea about this is result only. [00:33:26] Speaker 02: But I respectfully don't believe they ever argued that this was an abstract idea relating to matching. [00:33:31] Speaker 02: This is in the second step of the analysis where they're quoting one case that happens to use the word abstract idea. [00:33:37] Speaker 02: was not in their briefing or their expert reports. [00:33:40] Speaker 02: It certainly wasn't in Judge Stark's opinion that he ever found that this was an abstract idea. [00:33:45] Speaker 01: And what do you think the difference would be in what kinds of arguments you might make if the theory of analysis were starting with Leroy and O'Reilly and Tillman through about 10 cases now here [00:34:02] Speaker 01: that one might summarize as using the electric power idea that this is results only and you haven't specified the means. [00:34:13] Speaker 02: Right. [00:34:13] Speaker 02: So we still believe the claims are patentable, but obviously that issue hasn't been fully briefed. [00:34:19] Speaker 01: But I'm asking what is there that [00:34:23] Speaker 01: there even might be to say that hasn't been said. [00:34:27] Speaker 02: Well, electric power is very different than the facts in this case, where they said you're- Forget about electric power. [00:34:32] Speaker 01: We're talking about the idea, let's just talk about the mid-19th century Supreme Court cases, if you want. [00:34:38] Speaker 01: There are now about a dozen cases in this court that focus on results versus means in a lot of different contexts. [00:34:45] Speaker 01: And the mid-19th century cases are in a physical product cases, too. [00:34:50] Speaker 02: And I believe this case is more like dear, self-direct, and exorgen where they've said even if the claims use some kind of abstract idea or natural law, they're using that as part of a method and stops to achieve it. [00:35:02] Speaker 01: Everything in that line of cases turns on whether there is some allegedly new and different advance that is a concrete way of doing something. [00:35:16] Speaker 01: and at least what I'm listening for and have been focused on throughout this, is there something like that here or is it only make and place a liner so that two damping effects occur? [00:35:32] Speaker 01: You figure out how. [00:35:34] Speaker 01: That seems to me kind of the question that we're struggling with. [00:35:38] Speaker 02: Well, the specific solution in this case are liners that are disclosed in the patent and it's told you that [00:35:46] Speaker 02: How you how you make the liner so there is a specific solution? [00:35:49] Speaker 00: It's not just you put something in the prop shaft and you get a result you have to actually design the liners With these different characteristics and should be clear don't your dependent claims actually explain of a lot of that I mean let's see claim 13 talks about how you have to have a resilient member extending helically There's another claim that talks about how there has to be a drive system that operates below 600 Hertz and [00:36:11] Speaker 00: There is there it just seems like there are claims all over the place small little dependent claims One that says that material has to be selected from certain types of carbon fiber There are I mean it just seems to me that you have a lot of dependent claims that had a great degree of specificity to Characteristics of the physical characteristics of the liner in the system is that fair that is correct your honor, and I think it's different But did you assert that any of that was something other than? [00:36:40] Speaker 01: in the prior art. [00:36:45] Speaker 02: All of that stuff. [00:36:53] Speaker 02: couldn't damp multiple different vibrations before. [00:36:56] Speaker 02: In the prior art, they would have to use different dampers to use for a bending motor and a different damper for a shell mode. [00:37:02] Speaker 02: So this solution, this tuned liner that is tuned to not only damp and match these different frequencies was a different solution. [00:37:11] Speaker 02: And I think under those cases, it's not invalid. [00:37:15] Speaker 02: It's ineligible subject matter under the old cases that you referred to, Your Honor. [00:37:21] Speaker 02: Okay, anything further? [00:37:24] Speaker 03: Okay, thank you, Mr. Noddle. [00:37:25] Speaker 03: Thank you both, Council. [00:37:26] Speaker 03: The piece is submitted. [00:37:27] Speaker 03: That concludes our session.