Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence

By James Carlson

On January 13, 2020, the Supreme Court of the United States denied certiorari in three pending cases:  Athena Diagnostics, Inc. v. Mayo Collaborative (19-430) (hereinafter “Athena”), HP Inc. v. Berkheimer (18-415) (hereinafter “Berkheimer”), and Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. (18-817) (hereinafter “Hikma Pharmas”).  Afterwards, the Supreme Court again denied similar petitions on January 27, 2020, in Trading Technologies Int’l. v. IBG LLC (19-522), Trading Technologies Int’l. v. IBG LLC (19-353), and Chargepoint, Inc., v. Semaconnect, Inc. (19-521). Based on this trend, the Supreme Court is unlikely to reconsider anytime soon their holding in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), and the resulting confusion prevalent among the lower courts regarding standards for patent eligibility.

We previously discussed the Athena case in our newsletter last September.[1]  In Athena, the Federal Circuit denied an en banc rehearing of a decision finding patent-ineligible a method for diagnosing the neuromuscular disease myasthenia gravis.  In concurring with the denial, Judge Hughes described the confusion on patent eligibility as being “not a problem that we can solve” because “[a]s an inferior appellate court, we are bound by the Supreme Court.”  However, Judge Hughes along with many of his fellow judges welcomed any further explanation from the Supreme Court regarding the standards for patent eligibility, especially in the area of diagnostics patents.  However, despite the justices’ pleas, the Supreme Court refused to reconsider the Athena decision.

Regarding the Berkheimer case, this was an especially strong candidate for granting certiorari.  The central holding of Berkheimer was that “[w]hether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts” and this issue can be decided on summary judgment as a matter of law only “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field.”  On January 7, 2019, the Supreme Court requested the U.S. Solicitor General file a brief expressing the United States’ views on the Berkheimer case.   After a long delay, the Solicitor General finally filed a brief with the court on December 6, 2019. [2]  In the brief, the Solicitor General admitted that “[the Supreme Court’s] recent decisions have fostered uncertainty concerning [] substantive Section 101 standards [for patent eligibility],” but took the position that granting review to address procedural questions would be premature.  Accordingly, the Solicitor General advocated that the Supreme court should deny certiorari in Berkheimer and only “grant review in an appropriate case to clarify those substantive standards, and it should defer resolution of ancillary issues such as the judge-jury question raised in HP’s petition.”  Where the Solicitor General is against the Supreme Court hearing a particular case, the Supreme Court typically follows suit.  Accordingly, the Supreme Court denied certiorari.

Regarding the Hikma Pharmas case, the appellant raised the question with the Supreme Court whether “patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.”[3] Similar to the rationale in the Athena decision, the Hikma Pharmas court found patent-ineligible a method of using iloperidone to treat schizophrenia, where the treatment was a simple administering step.[4]  Where the Hikma Pharmas court simply applied the Alice test in view of existing Federal Circuit case law, the question raised in the petition was clearly beyond the scope of the issues presented to the court of appeals.  Thus, the Hikma Pharmas case was a longshot at being granted.

With further clarification unlikely coming from the Supreme Court regarding patent eligibility, patent applicants remain in a good position for obtaining a patent under the USPTO’s revised examination procedures.[5]  However, patent enforcement remains a speculative endeavor given the growing complexity and confusion of Federal Circuit case law.   Accordingly, the United States Congress must act in order to provide certainty regarding which types of inventions have patent protection under U.S. law.  Without this certainty, the parties with the most resources for fighting a patent infringement lawsuit will be the ones to benefit in the short term.  Often times, these parties are patent infringers rather than the patent holders.

[1] https://oshaliang.com/uncategorized/the-wisdom-of-athena-justices-criticize-current-state-of-patent-eligibility-for-diagnostic-methods/

[2] https://www.supremecourt.gov/DocketPDF/18/18-415/124825/20191206211755583_18-415%20-%20HP%20v.%20Berkheimer.pdf

[3] https://www.supremecourt.gov/DocketPDF/18/18-817/77691/20181227120113327_Hikma%20-%20Vanda%20-%20SCT%20-%20Petition%20for%20Certiorari%20-%20FINAL.pdf

[4] Vanda Pharmaceuticals v. West-Ward Pharmaceuticals, 887 F. 3d 1117, 1135 (Fed. Cir. 2018).

[5] https://oshaliang.com/uncategorized/uspto-updates-changes-to-examination-procedures-for-subject-matter-eligibility/