Gov't urges SCOTUS to take up the IP case that fractured the Federal Circuit

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Elizabeth Prelogar, President Joe Biden's nominee to serve as U.S. solicitor general, testifies before a Senate Judiciary Committee hearing on Capitol Hill in Washington. U.S. Senate/Handout via Reuters

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  • U.S. top lawyer says clarity needed on hot-button issue of patent eligibility
  • Case in question "bitterly divided" patent appeals court

(Reuters) - U.S. Solicitor General Elizabeth Prelogar told the Supreme Court Tuesday that it should address one of the most contentious debates raging in intellectual property law, ending a year-long wait for the government's take on the dispute over patent eligibility.

The government's brief said American Axle & Manufacturing Inc. v. Neapco Holdings LLC is a "suitable vehicle for providing greater clarity" on when an invention can be patented.

The Supreme Court last addressed patent eligibility in 2014 in Alice Corp v. CLS Bank International, a landmark decision that helped establish a two-part patent-eligibility test under Section 101 of the Patent Act.

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The test requires courts to determine if the patent is directed to a abstract idea, natural phenomenon or law of nature, and if so, whether it includes an "inventive concept" that would save it.

Critics say that Alice v. CLS and its descendants have led to unpredictable decisions and the cancellation of valid patents. The Court of Appeals for the Federal Circuit invalidated American Axle's patent on a method of manufacturing quieter automobile driveshafts in 2019, finding it was an unpatentable application of Hooke's law, a physics principle.

The split ruling led to a 6-6 decision denying a rehearing, with five separate opinions. Dissenting judges said the court had turned the U.S. patent system from a "once-reliable incentive to innovation and commerce" to a "litigation gamble."

The case left the only patent appeals court "bitterly divided" and "at a loss" on how to apply Section 101, in one of its judges' own words.

The solicitor general said Tuesday that American Axle's invention was a "paradigmatic" example of an industrial manufacturing method that should be patent eligible.

"Under Section 101 as interpreted for more than 150 years, petitioner's claims recite a patent-eligible process," the government's brief said.

The high court rejected a chance in 2020 to review another patent-eligibility case that split the Federal Circuit, despite the solicitor general's recommendation to consider it.

American Axle said in a statement that it was pleased that the government supports its position.

The U.S. Patent and Trademark Office declined to comment. Neapco, its attorney, and the U.S. Department of Justice did not immediately respond to requests for comment.

The case is American Axle & Manufacturing Inc v. Neapco Holdings LLC, U.S. Supreme Court, No. 20-891.

For American Axle: James Nuttall of Steptoe & Johnson

For Neapco: Michael Huget of Honigman

Read more:

U.S. Supreme Court asks for Solicitor General's take on patent-eligibility case

Case to Watch: Supreme Court could clarify patent law that 'bitterly divided' Fed. Circuit

Fed Circuit passes up chance to review patent-eligibility ruling in 6-6 tie

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at