“Despite Fears, American Axle Is Rarely Used To Nix Patents”

In an article published in Law360 on August 17, 2023, Partner Ryan Schermerhorn and Summer Associates Christopher “Topher” Zahn and Daniela Dulworth examine the impact 2019’s American Axle decision has had on patent practitioners focused on mechanical technologies in relation to Section 101 of the U.S. Patent Act.

The article dismantles widespread fears that a 2019 decision issued by a three-judge panel of the Federal Circuit Court would dramatically impact the prosecution of patents related to the mechanical arts. That decision invalidated claims for a method of manufacturing a driveshaft as being directed to ineligible subject matter and, in a subsequent decision, the full Circuit decided not to rehear the case. In 2022, the U.S. Supreme Court declined to hear an appeal, despite the Solicitor General’s recommendation to the contrary.

The attorneys juxtapose several attempts by legislators and others to clarify the ruling amid confusion in the profession over the real extent of American Axle’s impact.

Using patent rejection data from U.S. Patent and Trademark Office Tech Centers and by analyzing patent litigation cases citing American Axle, Ryan, Topher, Daniela make a compelling argument that “the decision’s impact isn’t nearly what critics feared.”

The authors conclude, “The biggest concern was that the decision would be used to invalidate claims under Section 101. While that may occur in some very specific circumstances, the case has actually been more frequently used to show that patents are still valid under Section 101 and thus the impact has not been as substantial as was feared.”

Access Ryan, Topher, and Daniela's article "Despite Fears, American Axle Is Rarely Used To Nix Patents" published in Law360.