AFTER DIPPING A TOE BACK IN THE PATENT
eligibility waters, the U.S. Supreme
Court has decided against diving all the
way back in.
The justices denied certiorari in January in two cases in which the court had
sought the views of the solicitor general,
HP v. Berkheimer and Hikma Pharmaceuticals USA v. Vanda Pharmaceuticals.
Either case could have forced the court to
reconsider a quartet of Section 101 cases
that have tilted the law of patent eligibility away from patent owners and more
toward accused infringers.
Solicitor General Noel Francisco had
recommended against taking each case but
had strongly urged the court to reconsider
its eligibility law generally, and to use
Athena Diagnostics v. Mayo Collaborative
Services as the vehicle. All 12 active members of the U.S. Court of Appeals for the
Federal Circuit had likewise called on the
court to use Athena to clarify the law of eligibility as it applies to diagnostics. But the
court rejected Athena as well.
The upshot is that no changes are
now likely to the court’s Section 101 case
law for the foreseeable future, shifting
the spotlight back to Congress, which
held hearings on the issue last spring and
“I think they are done with this,” says
Stanford University law professor and
Durie Tangri co-founder Mark Lemley.
“It’s hard to imagine a better case than
one where all 12 Federal Circuit judges
and the DOJ urge them to take it.
“I do think this will spark renewed
movement in Congress,” Lemley adds.
“But it also means the Federal Circuit
has very little constraint on what it can
do, even when it effectively underrules a
Supreme Court decision (as they did in
Hikma v. Vanda). So we may see more en
banc activity and more inconsistent panel
decisions in the meantime.”
The court could also be waiting on
further development of the law before
taking any more action, says Villanova
University law professor Michael Risch.
“As more patents are filed post-Alice,
we may see a reshaping of patent claiming
that eliminates the need for further case,”
Meanwhile, in other Supreme Court
patent news, the court also denied certiorari in Regents of the University of Minnesota
v. LSI, in which more than a dozen states
and hundreds of universities were demanding the restoration of their sovereign
immunity from administrative patent
validity challenges at the U.S. Patent and
Trademark Office. The universities had
argued the America Invents Act trials that
are conducted before the Patent Trial and
Appeal Board are similar enough to civil
litigation that their immunity should apply.
The Federal Circuit had disagreed.
As for eligibility, the Supreme Court
overhauled it beginning with Bilski v. Kappos
in 2010 and ending with Alice v. CLS Bank in
2014. The high court clarified its view that
abstract ideas, laws of nature and natural
phenomena are not eligible for patenting.
The U.S. Senate Judiciary’s IP Sub-
committee convened a series of hearings
on the subject last year and released a draft
framework of legislation that would over-
rule the Supreme Court’s decisions. But the
framework was met with criticism, and no
formal legislation has yet been introduced.
The USPTO issued new guidance
on Section 101 for patent examiners that
emphasized that abstract ideas or natural phenomena that are integrated into a
practical application can pass muster. But
the USPTO guidelines are not binding
The U.S. Court of Appeals for the
Federal Circuit, which has the last word
on patent law short of the Supreme Court,
has struggled to apply the high court’s
precedents on a consistent basis, with one
SCOTUS PASSES ON REVIEWING PATENT ELIGIBILITY
BY SCOTT GRAHAM
Noel Francisco, Solicitor General
of the United States