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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Order for the court filed by Circuit Judge DYK.

Concurring opinion filed by Circuit Judge MOORE.

DYK, Circuit Judge.

O R D E R

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 petition would present a substantial question and that there is 

good cause for a stay.” Fed. R. App. P. 41(d)(1). The Advisory 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 established by the in-chambers opinions of the individual justices. 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 pharmaceutical company respondents. The Chief Justice noted 

that the first two requirements for a stay were met, because the Supreme Court had already granted certiorari 

and Teva had “shown a fair prospect of success on the merits.” 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 infringement” 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 Biomedical, 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 regard to the entirety” of our judgment and argues that “[s]ignificant 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 substantial and unrecoupable cost, does not constitute irreparable injury.” Renegotiation Bd. v. Bannercraft Clothing 

Co., 415 U.S. 1, 24 (1974); see also Commonwealth Oil Refin. 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 substantial harm that would result from the reactivation of 

proceedings in the district court during the limited pendency of the certiorari petition.”).

AAM has cited no authority suggesting that the prospect 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 necessitate 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 warranted, 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 denied.

 FOR THE COURT

October 23, 2020 /s/ Peter R. Marksteiner

Date Peter R. Marksteiner

 Clerk of Court

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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 muchneeded 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 paneldependent 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-inpart 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 threeprong 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). 

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