Overview
(March 26, 2020, Chicago) — Steptoe's Intellectual Property Group secured a victory for American Axle & Manufacturing, Inc. in its latest dispute with Neapco Drivelines LLC over patented driveshaft technology. On March 25, the Patent Trial and Appeal Board (PTAB) found in favor of American Axle, ruling that all challenged claims of a patent owned by Neapco were unpatentable.
The case dates back to October 2018, when American Axle filed a petition for inter partes review of claims 11 and 12 of US Patent No. 5,772,520, owned by Neapco. American Axle filed its petition in response to a lawsuit filed by Neapco in the Eastern District of Michigan asserting infringement of its '520 patent.
The '520 patent relates to driveshafts having splined slip joint assemblies with vents. In its petition, American Axle argued that the challenged claims were unpatentable in view of several prior art patents and references that teach vented slip joint assemblies, including US Patent No. 5,655,968 to Burton.
The PTAB held an oral hearing on January 10. Steptoe's Robert Kappers argued on behalf of American Axle.
In its final written decision, the PTAB found that each of the asserted and challenged claims were unpatentable. The PTAB agreed with American Axle and declined to adopt Neapco's various proposed claim constructions. As for anticipation, the PTAB found that American Axle "persuades us by a preponderance of the evidence that claim 11 is unpatentable by Burton." The PTAB continued, and found that claim 12 is unpatentable as obvious over Burton in view of US Patent No. 3,063,266 to Rabson and US Patent No. 1,923,649 to Warner. Specifically, the PTAB sided with American Axle on the issue of motivation to combine: "[W]e agree with Petitioner that one of ordinary skill in the art would have been motivated to remove a spline in Burton, based on the teachings of either Rabson or Warner, in order to improve venting of Burton’s cavities." Lastly, the PTAB also agreed with American Axle on the issue of secondary considerations, finding "no persuasive objective evidence of nonobviousness in the record."
The Steptoe IP team that represents American Axle in this matter is led by partner Jay Nuttall, with associates Kate Johnson and Robert Kappers. All are based in the firm's Chicago office.
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