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29 March 20216 minute read

Supreme Court Corner

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC

PATENT – March 1, 2021

In the Q3 2020 edition of Supreme Court Corner, we noted the probability of a forthcoming petition for writ of certiorari in American Axle v. Neapco, in light of a divided, evenly split denial of rehearing en banc. American Axle involves another chapter in the Federal Circuit’s ongoing exposition of the law of patent eligible subject matter, and another case that suggests Supreme Court guidance would be helpful.

Having sought certiorari at the Supreme Court, patentholder American Axle has a number of amici who are urging the Court to take the case. This post is an amicus roundup, canvassing the approaches taken by the different amici.

A number of amici propose that the Court look to history in guiding present-day patent eligibility. Namely, where an invention resembles historically patentable subject matter, the new invention should be patentable. According to these amici, since the patent at issue claims the driveshaft of a car, and improved components of cars were historically patentable, this patent claims patentable subject matter.

This approach resembles the way federal courts approach many other issues. However, it may only kick the analytical can down the road because it does not address how to determine the degree of resemblance to historical analogues. Indeed, the rehearing decision at the Federal Circuit rejected precisely these analogy arguments by finding that the claims were directed not to a driveshaft itself, but to a law of nature embodied within a driveshaft. And would this inquiry be a factual question (i.e., a degree of technical comparability), or a question of law, or a mixed question?

Other amici suggest that the Court should strengthen the first step of the two-part framework set out by Alice v. CLS Bank. These amici argue that the court should only find patents ineligible when they are entirely “directed to” unpatentable subject matter, and that the patents in this case “merely involve” such subject matter. The inquiry would then turn on whether the patent focuses centrally, partially, or incidentally on unpatentable subject matter.

As with the prior test, this rule is easy to state, but may be harder to apply. What distinguishes a patent that merely involves an unpatentable idea from one which is “directed to” it? How does this test differ from the current inquiry, which requires courts to ask whether the claims embody “significantly more” than the unpatentable subject matter, as part of the Alice Step 2 analysis?

Still other briefs focus on strengthening the application of rules of procedure to patent eligibility. One brief focuses exclusively on Federal Rule of Civil Procedure 56, arguing only that the Federal Circuit misapplied that rule by adjudicating factual issues on a motion for summary judgment. Since patent eligibility is frequently raised in a motion to dismiss or a motion for summary judgment, a decision expanding the number or type of factual issues could preclude Rule 12 and Rule 56 determination of eligibility.

A final group of briefs do not propose an affirmative test for eligibility, and urge instead that the Federal Circuit’s decision below should be rejected. These briefs argue that the Federal Circuit conflated the issues of patent enablement and patent eligibility by focusing on the degree of specificity in the claims. In general, the Federal Circuit has held that patents which claim inventions only at a high level of generality (or patents with functional claim limitations) are particularly susceptible to eligibility challenges. These briefs argue that the Federal Circuit should be required to excise that analysis from the eligibility context, performing it only in the enablement context (with its clearer safeguards and precedent). Such a decision, though, may not clarify what lower courts should do to determine eligibility.

Given the diversity of approaches proposed by these amici, we will keep a fixed eye on this space to see if the Supreme Court clarifies this area of the law and how.


United States Patent and Trademark Office v. B.V.

TRADEMARK – Decided: June 30, 2020

In the Q3 2020  edition of Supreme Court Corner, we reported on the June 30, 2020 Supreme Court decision in USPTO v. B.V., in which the Supreme Court held that the term “” is not generic and therefore eligible for federal trademark registration.  The Court based its decision on the general proposition that a term styled "" is a generic name for a class of goods or services only if the term has that meaning to consumers.

In response, the USPTO issued new guidance to its examiners in October that “a generic top-level domain, such as ‘.com,’ is not automatically generic, nor is it automatically non-generic.  Instead, as in any other genericness analysis, examining attorneys must evaluate all of the available evidence, including the applicant’s evidence of consumer perception, to determine whether the relevant consumers perceive the term as generic for the identified class of goods and/or services or, instead, as capable of serving as a mark.” 

The examiner is also instructed to determine whether the mark has acquired distinctiveness under 15 U.S.C. § 1052(f), though “applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.”

Mark holders or practitioners seeking to register a generic top-level domain may wish to heed the USPTO’s guidance.  In particular, the guide identifies a non-exhaustive list of evidence that examiners are instructed to consult, including dictionaries, usage by the applicant, usage by consumers and competitors, use in the trade, consumer declarations, and relevant and probative consumer surveys.  Applicants would be wise to amass and submit as much of this evidence as it can when seeking to register a mark to assist the examiner’s highly factual inquiry.

The USPTO’s guidance can be found here: