Case: 18-1763 Document: 139 Page: 1 Filed: 10/23/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
ON MOTION
______________________
JAMES RICHARD NUTTALL, Steptoe & Johnson LLP,
Chicago, IL, for plaintiff-appellant. Also represented by
JOHN LLOYD ABRAMIC, KATHERINE H. JOHNSON, ROBERT
KAPPERS; CHRISTOPHER ALAN SUAREZ, Washington, DC.
J. MICHAEL HUGET, Honigman LLP, Ann Arbor, MI, for
defendants-appellees. Also represented by SARAH E.
WAIDELICH; DENNIS J. ABDELNOUR, Chicago, IL.
______________________
Before DYK, MOORE, and TARANTO, Circuit Judges.
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2 AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS
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Order for the court filed by Circuit Judge DYK.
Concurring opinion filed by Circuit Judge MOORE.
DYK, Circuit Judge.
ORDER
Plaintiff-appellant American Axle & Manufacturing,
Inc. (“AAM”) filed a motion to stay issuance of the mandate
pending the filing of a petition for writ of certiorari in the
Supreme Court. Defendants-appellees opposed the motion.
I
Federal Rule of Appellate Procedure 41 provides that a
motion for stay of the mandate “must show that the peti-
tion would present a substantial question and that there is
good cause for a stay.” Fed. R. App. P. 41(d)(1). The Advi-
sory Committee Notes state that “[t]he Supreme Court has
established conditions that must be met before it will stay
a mandate.” Fed. R. App. P. 41, advisory committee’s note
to 1994 amendment (citing Robert L. Stern et al., Supreme
Court Practice § 17.19 (6th ed. 1986)). In this respect, the
Advisory Committee Notes refer to the standard estab-
lished by the in-chambers opinions of the individual jus-
tices. See Stern et al., supra, § 17.19. The Supreme Court
itself has approved this standard in Hollingsworth v. Perry,
558 U.S. 183, 190 (2010).
This standard requires that the applicant show “(1) a
reasonable probability that four Justices will consider the
issue sufficiently meritorious to grant certiorari; (2) a fair
prospect that a majority of the Court will vote to reverse
the judgment below; and (3) a likelihood that irreparable
harm will result from the denial of a stay. In close cases
the Circuit Justice or the Court will balance the equities
and weigh the relative harms to the applicant and to the
respondent.” Id.
Chief Justice Roberts, acting as the Circuit Justice for
this court, specifically applied that standard in a patent
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case, denying a stay solely for lack of irreparable injury.
Teva Pharms. USA, Inc. v. Sandoz, Inc., 572 U.S. 1301,
1301–02 (2014) (Roberts, C.J., in chambers). After we held
certain of Teva’s patent claims invalid, Teva sought a stay
in order to prevent market entry by the generic pharma-
ceutical company respondents. The Chief Justice noted
that the first two requirements for a stay were met, be-
cause the Supreme Court had already granted certiorari
and Teva had “shown a fair prospect of success on the mer-
its.” Id. at 1301. But he denied a stay because a likelihood
of irreparable injury was not shown, explaining that
“[r]espondents acknowledge[d] that, should Teva prevail
. . . and its patent be held valid, Teva [would] be able to
recover damages from respondents for past patent infringe-
ment” and therefore “the extraordinary relief that Teva
[sought was] unwarranted.” Id. at 1301–02.
As a matter of Federal Circuit law, we interpret the
Rule as requiring application of the standard articulated
by the Supreme Court in Hollingsworth and the Justices’
in-chambers opinions. See Biodex Corp. v. Loredan Bio-
medical, Inc., 946 F.2d 850, 858 (Fed. Cir. 1991) (Federal
Circuit law, not regional circuit law, governs such matters).
II
In this case, AAM has not made the required showing
of a likelihood of irreparable injury absent a stay. With
respect to claim 22 and related claims, the decision of this
court requires no further action by the district court since
the claims have been held to be unpatentable. AAM argues
that “[i]f the Supreme Court grants review and decides that
the asserted claims of [AAM’s patent] are patent eligible
under § 101, this Court will have to recall its mandate to
conform its disposition with such a decision.” Mot. 14, ECF
No. 136. This action, common to every case in which the
Supreme Court does not affirm, is not irreparable harm.
With respect to claim 1 and related claims, the decision
of this court remands to the district court for further
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proceedings. AAM argues that there is “good cause for a
stay” because it “intends to petition for certiorari with re-
gard to the entirety” of our judgment and argues that “[s]ig-
nificant burdens and expenses would accrue” should the
mandate issue because “the parties and district court
would continue to litigate issues related to claim 1.” Id. at
12–13. Continued litigation with respect to claim 1 cannot
be irreparable injury. “Mere litigation expense, even sub-
stantial and unrecoupable cost, does not constitute irrepa-
rable injury.” Renegotiation Bd. v. Bannercraft Clothing
Co., 415 U.S. 1, 24 (1974); see also Commonwealth Oil Re-
fin. Co. v. Lummus Co., 82 S. Ct. 348, 349 (1961) (Harlan,
J., in chambers) (denying motion for stay of the mandate
where the only possible harm from denial of the stay was
that it could “set in motion the machinery for arbitration
and . . . other matters affecting the possible future conduct
of the arbitration”); Nara v. Frank, 494 F.3d 1132, 1133 (3d
Cir. 2007) (need to “prepar[e] to commence trial within 120
days while simultaneously filing a petition for certiorari”
was not irreparable injury under Rule 41); United States v.
Microsoft Corp., No. 00-5212, 2001 WL 931170, at *1 (D.C.
Cir. Aug. 17, 2001) (denying motion to stay mandate under
Rule 41 because movant “failed to demonstrate any sub-
stantial harm that would result from the reactivation of
proceedings in the district court during the limited pen-
dency of the certiorari petition.”).
AAM has cited no authority suggesting that the pro-
spect of further district court proceedings while the case is
on review could constitute irreparable injury. AAM points
to the Practice Note to this court’s Rule 41, which reminds
litigants that their right to seek certiorari is unaffected by
the issuance of the mandate and, “[c]onsequently, a motion
to stay the mandate should advance reasons for the stay
beyond the mere intention to apply for certiorari, e.g., to
forestall action in the trial court or agency that would ne-
cessitate a remedial order of the Supreme Court if the writ
of certiorari were granted.” Fed. Cir. R. 41 practice note.
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But that Practice Note would not displace the governing
stay standard if they conflicted. Even by its own terms,
moreover, the Practice Note’s language does not support a
conclusion that the trial court proceedings that might occur
regarding claim 1 and related claims would support a stay.
Under the standard applied by the Supreme Court, this is
not a situation in which the Court would issue a “remedial
order” staying our mandate if certiorari were granted since
the only claimed irreparable injury is litigation cost.
We conclude that the irreparable injury requirement is
not satisfied here. On this ground alone a stay is not war-
ranted, quite apart from the merit or lack of merit of the
petition for certiorari.
Accordingly,
IT IS ORDERED THAT:
The motion to stay the mandate pending the filing of a
petition for writ of certiorari in the Supreme Court is de-
nied.
FOR THE COURT
October 23, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
Case: 18-1763 Document: 139 Page: 6 Filed: 10/23/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMERICAN AXLE & MANUFACTURING, INC.,
Plaintiff-Appellant
v.
NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES
LLC,
Defendants-Appellees
______________________
2018-1763
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:15-cv-01168-LPS, Chief Judge
Leonard P. Stark.
______________________
MOORE, Circuit Judge, concurring.
Today, we adopt the three-prong test for staying a
mandate adopted by our sister circuits and several
individual Justices. I write separately to elaborate on how
those prongs apply here. While American Axle has
established a reasonable probability that certiorari will be
granted and a fair prospect that the majority of the Court
will reverse, it fails to establish irreparable harm and thus
a stay is not warranted.
I
The Supreme Court often grants certiorari to resolve
circuit splits that render the state of the law inconsistent
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and chaotic. See, e.g., Braxton v. United States, 500 U.S.
344, 347 (1991) (“A principal purpose for which we use our
certiorari jurisdiction . . . is to resolve conflicts among the
United States courts of appeals and state courts concerning
the meaning of provisions of federal law.”); see also Rogers
v. Grewal, 140 S. Ct. 1865, 1875 (2020) (Thomas, J.,
dissenting from the denial of certiorari) (“This case gives
us an opportunity to provide lower courts with much-
needed guidance, ensure adherence to our precedents, and
resolve a Circuit split. Each of these reasons is
independently sufficient to grant certiorari.”). What we
have here is worse than a circuit split—it is a court bitterly
divided.
As the nation’s lone patent court, we are at a loss as to
how to uniformly apply § 101. All twelve active judges of
this court urged the Supreme Court to grant certiorari in
Athena to provide us with guidance regarding whether
diagnostic claims are eligible for patent protection. There
is very little about which all twelve of us are unanimous,
especially when it comes to § 101. We were unanimous in
our unprecedented plea for guidance. But, as we
acknowledged in our decisions in Athena, that holding was
at heart a reticent application of Mayo to similar claims.
The current case is the progeny of neither Alice nor
Mayo. It is our own dramatic expansion of a judicial
exception to § 101. Section 101 is clear: “[w]hoever invents
or discovers any new and useful process,” like the claims
here, “may obtain a patent.” Yet, we have struggled to
consistently apply the judicially created exceptions to this
broad statutory grant of eligibility, slowly creating a panel-
dependent body of law and destroying the ability of
American businesses to invest with predictability. See
Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting-in-
part and concurring-in-part) (characterizing § 101 doctrine
as “indeterminate and often lead[ing] to arbitrary results”).
Our confusion has driven commentators, amici, and every
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judge on this court to request Supreme Court clarification.
See Athena Diagnostics, Inc. v. Mayo Collaborative Servs.,
LLC, 927 F.3d 1333 (Fed. Cir. 2019). If a circuit split
warrants certiorari, such an irreconcilable split in the
nation’s only patent court does likewise.
This case is a model of our divide. To be sure, natural
laws are “basic tools of scientific and technological work,”
“free to all men and reserved exclusively to none.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70–71 (2012). Before this case, we applied this exception
narrowly, because “all inventions at some level embody,
use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas,” so “too broad an
interpretation of this exclusionary principle could
eviscerate patent law.” Id. at 71. In a divided panel here,
we struggled to marry these concepts into an administrable
distinction between eligible and ineligible claims. The
majority concluded as a matter of law that claims to a
manufacturing process are not eligible for patent
protection because they are directed to a law of nature even
though no law of nature appears in the claims, the patent,
or the prosecution history. Under the majority’s new
“Nothing More” test, claims are ineligible when they
merely make use of a natural law. We have strayed too far
from the text of the statute. I dissented, proposing that we
follow the narrow test announced in Alice and that we
refrain from usurping the district court’s factfinding role.
Equally divided in a 6-6 vote, the full court denied
rehearing en banc and, in doing so, detailed its further
divided views. Am. Axle & Mfg., Inc. v. Neapco Holdings
LLC, 966 F.3d 1347, 1348 (Fed. Cir. 2020) (prompting two
opinions concurring in the denial and three opinions
dissenting from the denial). I believe American Axle has
established that there is a reasonable probability certiorari
will be granted.
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II
The claims here are not directed to a business method,
internet or financial method, the likes of which the Court
dealt with in Alice or Bilski. Nor does this case map onto
the Court’s holding in Mayo regarding the patent eligibility
of diagnostic inventions, as did our decisions in Ariosa and
Athena. Instead, our decision in American Axle is a patent
killing judicial exception of our own creation. The claims
here are directed to a process for manufacturing car
parts—the type of process which has been eligible since the
invention of the car itself. They do not preempt the use of
a natural law, a building block of science, which should be
freely available to all. To nonetheless hold these claims
ineligible, the majority broadens the judicial exceptions in
a way that threatens to swallow the whole of the statute.
See Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967
F.3d 1285 (Fed. Cir. 2020), reh’g denied, 966 F.3d 1347,
1365 (Stoll, J., dissenting) (“I grow more concerned with
each passing decision that we are, piece by piece, allowing
the judicial exception to patent eligibility to ‘swallow all of
patent law.’”) (quoting Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014) and citing Mayo, 566 U.S. at 70–
73). Such a rejection of the plain language of the patent
statute in favor of a vast and amorphous judicial exception
in which we Federal Circuit judges get to decide de novo
not just the legal principles, but the application of the
science itself, cannot stand. American Axle has established
a fair probability that the Supreme Court will reverse.
The Supreme Court has often corrected this court when
we have defied precedent or strayed from our mandate by
claiming de novo dominion over factual issues. See, e.g.,
Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1931–
34 (2016); Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S.
318, 324–27 (2015); KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007). We repeat this mistake again. We hold as
a matter of law that the claimed result (a reduction in two
types of vibration in a drive shaft) was achieved by nothing
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more than a natural law that appeared nowhere in the
claims, patent or prosecution history. We approach as a
question of law whether the vibrations in the drive shaft
were reduced by application of Hooke’s Law and nothing
more. And in doing so, we reject the undisputed testimony
of both experts. This is simply not our role as appellate
judges. American Axle has established a fair prospect that
the Supreme Court will reverse our usurpation of the
district court’s fact-finding role and our decision to expand
the natural law exception to cover an automotive
manufacturing process in direct contravention of the plain
statutory language.
III
Our remand to the district court of claim 1 and its
dependent claims will surely cause redundant, expensive
process. We unanimously held that claim 1 and its
dependent claims are not directed to a natural law. But as
the majority explained: “On appeal, Neapco relied on both
the natural law and abstract idea categories of ineligibility
in defending the district court’s decision. But the abstract
idea basis was not adequately presented and litigated in
the district court.” Am. Axle, 967 F.3d at 1300–01. Still,
the majority ordered the district court to consider the
abstract idea arguments on remand. Whether a claim is
directed to Hooke’s Law is a different question than
whether a claim is directed to an abstract idea. I dissented
from our remand which requires the district court to
consider a defense which we concluded was not adequately
presented and litigated. Whether to allow such a new
defense ought to be within the sound discretion of the
district court, but the majority’s remand dictates
otherwise. The court and parties will now be forced to
undertake significant, expensive and burdensome process
addressing this new defense.
Due process demands that American Axle be given the
“opportunity to be heard at a meaningful time and in a
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meaningful manner” regarding Neapco’s new arguments.
Mathews v. Eldridge, 424 U.S. 319, 333 (1976) (internal
quotation marks omitted). Therefore, discovery must be
reopened, new expert reports permitted, and new summary
judgment briefing allowed. And since the defendant gets
to challenge these patent claims on an entirely different
ground (abstract idea versus natural law), American Axle
as the patentee is free to make whatever arguments it
chooses in defense—such as arguments regarding the
factual underpinnings of the second part of the Alice-Mayo
test and the level of detailed structure present in the
dependent claims. The majority’s forced do-over works
both ways. And depending on the actions of the Supreme
Court, there could be significant wasteful, duplicative or
parallel process, including on American Axle’s dependent
claims, which we refused to separately address. Or
American Axle may choose to seek certiorari on the
propriety of our remand as to claim 1, and the Supreme
Court may determine that our remand instructions were
improper.
Although American Axle faces significant expense and
potentially duplicative process, this is not irreparable
harm. Thus, I join the majority’s adoption of the three-
prong test and its decision that we cannot stay the mandate
in this case under these circumstances. It bears noting,
however, that although we have not stayed our mandate,
the district court retains “the power to stay proceedings” as
to claim 1 and the dependent claims, which “is incidental
to the power inherent in every court to control the
disposition of the causes on its docket with economy of time
and effort for itself, for counsel, and for litigants.” Landis
v. N. Am. Co., 299 U.S. 248, 254 (1936) (reviewing decision
to stay for an abuse of discretion).
American Axle & Manufacturing v. Neapco Holdings LLC
Combined Opinion