This morning the Supreme Court denied the petition for certiorari in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, one of the most important patent cases in recent memory. In that case, the petitioner pleaded with the Court to revisit the doctrine of patent eligibility given the uncertainty and incorrect results generated by the Supreme Court’s 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., particularly in the area of life sciences technologies. Notably, the Court also denied review in two other cases raising issues related to patent eligibility, Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. and HP Inc. v. Berkheimer. We have the details.
In Athena, the petitioner asked the Court to review the question of “[w]hether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.”
In Hikma, the question presented was “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.”
And in HP, the petitioner asked the Court to consider “whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.”
The Court denied all three of these petitions in an order released this morning reporting on the results of last Friday’s conference.
By rejecting the petitioner’s plea in Athena in particular, the Court also rejected the suggestion of the Solicitor General that Athena ought to be heard by the Court.
The Court seems to have declared that it will not revisit the doctrine of patent eligibility no matter how urgent the crisis and the pleas, not only of those negatively affected directly, but also neutral third parties, including the federal government, Federal Circuit judges, experts, law professors, and other friends of the court who filed numerous amicus briefs in support of review in Athena.
In short, the Court appears unwilling or unable to resolve the crisis in the law of patent eligibility.
In effect, moreover, the Court has left it to Congress to reform patent eligibility law to provide clarity and correct results.
We will provide more coverage later this week on these cases as well as others in which the Court denied review this morning.