The US Court of Appeals for the Federal Circuit denied a motion to stay issuance of a mandate while a petition for certiorari regarding patentability under § 101 was pending before the Supreme Court of the United States, finding no irreparable harm if it did not do so. American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Case No. 18-1763 D.I. 139 (Fed. Cir. Oct. 23, 2020) (Dyk, J.) (Moore, J., concurring). In her concurrence, Judge Moore encouraged the Supreme Court to grant certiorari in order to clarify the scope of § 101.

This decision was the fourth opinion issued by the Federal Circuit in this case. In the Court’s first opinion, a divided panel affirmed that method claims for a mechanical invention were invalid under 35 USC § 101. American Axle & Manufacturing I. The patent owner, American Axle, filed a petition for rehearing and a petition for rehearing en banc. American Axle & Manufacturing II. Several amicus briefs were filed, including one by former Federal Circuit Chief Judge Paul R. Michel. In view of these petitions and amicus briefs, the original panel modified and re-issued its opinion to affirm that certain claims were invalid and to reverse its holding that one claim was invalid. Subsequently, the full Federal Circuit denied the petition for a rehearing en banc, polling 6–6 and demonstrating the Court’s division on the application and scope of § 101.

American Axle filed a petition for certiorari at the Supreme Court and sought a stay from the Federal Circuit of the issuance of the mandate. The Federal Circuit denied a stay, citing Rule 41 of the Federal Rules of Appellate Procedure, which “provides that a motion for stay of the mandate ‘must show that the petition would present a substantial question and that there is good cause for a stay.’” Fed. R. App. P. 41(d)(1). The Court explained that a three-prong test determines whether a stay in a patent case is appropriate under this rule. The applicant must show (1) a reasonable probability that four justices will grant certiorari, (2) a fair prospect that the Supreme Court will reverse judgment, and (3) a likelihood that irreparable harm will result if the stay is denied.

Relying exclusively on irreparable harm, the Federal Circuit denied a stay. With respect to the invalid patent claims, the Court explained that a stay was not warranted because no further action was required by the district court. The Court dismissed American Axle’s argument that it would have to recall its mandate if reversed by the Supreme Court, explaining that this occurrence is common for every case that is reversed. With respect to the valid patent claim, the Court explained that the burden of litigation and litigation expenses is insufficient to show irreparable harm. Thus, the Court dismissed American Axle’s motion to stay the mandate.

Judge Moore filed a concurring opinion asking the Supreme Court to grant certiorari. Moore explained that the Supreme Court often grants cases where there is a circuit split, and here the situation “is worse than a circuit split—it is a court bitterly divided.” She elaborated that the Federal Circuit is “at a loss how to uniformly apply § 101,” and that all 12 judges of the Federal Circuit have previously urged the Supreme Court to grant certiorari to clarify § 101.

Practice Note: Even if the Supreme Court does not grant certiorari in this case, litigants likely will cite Judge Moore’s concurrence when seeking Supreme Court review of a § 101 opinion.