This week–one year and three weeks after the Supreme Court’s order inviting the Solicitor General to express the views of the United States–the Solicitor General finally filed its amicus brief in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. In this case, the petitioner long ago requested the Supreme Court grant review to reconsider the appropriate standard for determining patent eligibility and to determine whether eligibility is a question of law or fact. This week the Solicitor General recommended the Court grant review to reconsider the first question presented, addressing the appropriate standard for determining eligibility. Here is an update on the case, including a review of the background of the case, a summary of the government’s brief, and a brief discussion of what comes next.
As we reported almost two years ago, at the Federal Circuit a panel of Judges Dyk, Moore, and Taranto considered the appeal. These judges issued an original panel opinion and an original dissent. Judges Dyk and Taranto joined together to affirm a district court’s determination that certain patent claims were ineligible under 35 U.S.C. § 101, while Judge Moore dissented. Later, after AAM petitioned for panel and en banc rehearing, the panel issued modified majority and dissenting opinions. The Federal Circuit then also issued an order denying the petition for rehearing en banc by a 6-6 vote of the Federal Circuit’s then-active judges, along with a raft of concurring and dissenting opinions.
In her original dissent, Judge Moore argued that “[t]he majority’s decision expands § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.” Specificially, she argued that the majority “parrots the Alice/Mayo two-part test, but reduces it to a single inquiry: If the claims are directed to a law of nature (even if the court cannot articulate the precise law of nature) then the claims are ineligible and all evidence of nonconventionality will be disregarded.” Further, she claimed that “there is a clear and explicit statutory section for enablement, § 112,” and the court “cannot convert § 101 into a panacea for every concern we have over an invention’s patentability.”
In its modified opinion, the majority took the opportunity to respond to concerns raised in the original dissent. First, the majority argued that it was not departing from existing § 101 precedent, “but rather faithfully following it in the narrow circumstances of this case.” Further, it said, “the longstanding rejection of eligibility for a claim to a ‘result’ or ‘effect’ . . . is not limited to claims that also state the natural law that produces the result or effect.”
Judge Moore also took the opportunity to modify her dissent. Indeed, she issued a blistering dissent taking issue with the majority on the merits as well as the procedure the majority used to reach its result.
The opinions dissenting to the decision not to rehear the case en banc took the panel majority and the Federal Circuit itself to task in various respects. Judge Newman, for example, wrote an opinion explaining that “[t]he court’s rulings on patent eligibility have become so diverse and unpredictable as to have a serious effect on the innovation incentive in all fields of technology.” She said she wrote her own dissenting opinion “to emphasize the far-reaching consequences of the court’s flawed Section 101 jurisprudence.” As another example, Judge O’Malley expressed her concern that the new panel opinion disregarded proper process and attempted to “achiev[e] its chosen result by whatever means it could conjure.”
The case garnered significant negative attention. As for the result reached by the district court and panel majority, I was quoted in Judge Moore’s dissent to the modified panel opinion explaining how the case served as a “poster child for how the current test for patent eligibility is being applied to reach rather absurd results.” Indeed, in this case the claims address a mechanical invention related to reducing vibrations, which one would think to be clearly eligible for patenting. As for the panel majority’s understanding of the law, on this blog Professor Jeff Lefstin explained in detail how the majority in this case set forth “two far-reaching expansions in the law of patent eligibility” unsupported by the cited Supreme Court and United Kingdom precedent.
At the Supreme Court, the patent owner presented two questions for the Supreme Court to review:
- “What is the appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?”
- “Is patent eligibility (at each step of the Court’s two-step framework) 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 art at the time of the patent?”
After the filing of a slew of amicus briefs in support of review, in May, 2021 the Supreme Court requested the views of the Solicitor General.
Views of the Solicitor General
This week the Solicitor General finally filed its amicus brief. The government’s brief presents the view of the United States that the petition for a writ of certiorari should be granted with respect to the first question presented.
According to the government, the Court of Appeals incorrectly held that the independent claim is patent-ineligible under Section 101 because “industrial techniques have long been viewed as paradigmatic examples of ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied.” The government, moreover, points out that “[t]he decision below reflects substantial uncertainty about the proper application of Section 101, and this case is a suitable vehicle for providing greater clarity.” While the first question presented “focuses on the first step of the Mayo/Alice framework,” the “second step of that framework has also produced uncertainty and confusion in the lower courts.” Thus, the government argues that “[c]larification of both steps is especially important, both because a court’s step-two analysis often finally resolves the determination as to patent-eligibility, and because the nature of the initial step-one screen logically depends in part on the inquiry that courts will apply at step two.”
In more detail, the government takes the position that the Federal Circuit “erred in applying” the underlying governing principles to the independent claim of the patent in this case. First, says the government, the claim does not simply describe or recite any natural law. Second, “[c]ontrary to the majority’s analysis,” the claim here “goes well beyond identifying the ‘goal’ of reducing multiple modes of vibration” and “recites a specific sequence of steps to achieve that goal.” Third, according to the government, the Supreme Court “did not intend to endorse a categorical rule that conventional claim elements should be disregarded in determining whether particular claims reflect an ‘inventive concept,’ or ‘add enough’ to natural laws or phenomena, so as to warrant patent protection.” The government explains that “[h]olistic consideration of a claim at the second step is incompatible with an approach that ignores individual claim elements that are conventional in isolation,” and that “[c]larification of this point is especially important.” Fourth, this case reflects “ongoing uncertainty” at the Federal Circuit. Fifth, according to the government, “[t]his case is a suitable vehicle for providing greater clarity.” In particular, while the respondents suggest review should be granted in a case involving software or life science, “in applying Section 101 to the more traditional industrial manufacturing method at issue here, the Court can more readily draw on historical practice and precedent to clarify the governing principles, which can then be translated to other contexts.”
Regarding the second question presented, related to the question of whether patent eligibility presents a question of law or fact, the government takes the position that “[a]nswering [it] would be difficult while uncertainty about the substance of the Section 101 inquiry persists.” The Court, the government says, should grant review of the first question and then, in this or a future case, analyze whether the standard “entails a legal, factual, or hybrid analysis.”
What Happens Next
The next step in this case is for the Supreme Court Clerk to distribute the government’s brief to all of the Justices and schedule the case for a second conference. At this next conference, the Court may hold an up-down vote on whether to grant review. Four votes in favor of review are needed for the court to grant certiorari. It is possible, however, particularly given how busy the Court is completing its opinions for the current term, that it will wait to hold such a vote.
It should be noted that the government’s brief does not guarantee that the Supreme Court will grant review and hear the case. Indeed, the last time the Solicitor General recommended the Supreme Court grant review to reconsider the law of patent eligibility, the Court denied review. The circumstance, however, was fairly unique.
About three years ago the Supreme Court requested the views of the Solicitor General in two cases addressing the doctrine of patent eligibility. Notably, however, the Court did so in two cases in which the Federal Circuit found for the patent owner, Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. and HP Inc. v. Berkheimer. The Supreme Court did not ask for review in another patent eligibility case decided by the Federal Circuit around the same time in which the Federal Circuit found against the patent owner, Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC. As we reported then, while the Solicitor General suggested the Court deny review in the two cases the Supreme Court asked about, remarkably the Solicitor General suggested the Court grant review in Athena Diagnostics, the case the Supreme Court had not asked about. In its amicus briefs, the Solicitor General explained that “[t]he confusion created by this Court’s recent Section 101 precedents warrants review in an appropriate case.” And, according to the government, while neither Hikma nor HP were the “optimal vehicle for bringing greater clarity,” the optimal vehicle was one of the “cases involving medical-diagnostic methods,” and in particular the then-pending Athena case. The argument, however, did not prevail. Later, the Supreme Court denied review in all three cases.
It is also important to recognize that–despite the relatively recent confirmation vote in favor of Ketanji Jackson joining the Supreme Court–Justice Breyer is still on the Court and Jackson is not. And it is Justice Breyer who authored the Court’s opinion in Mayo that would be analyzed and possibly overruled in this case. As I have written elsewhere, in Mayo, Justice Breyer created a test for patent eligibility that “both contradicts the historical approach to patent eligibility . . . and has had pernicious impact on the patent system and investment in development of technology, including, and in particular, medical technologies.” But Justice Breyer might be loathe to grant review in this case given his authorship of the Mayo opinion. I am still hoping that “the full Court, including his successor, will give the patent eligibility doctrine a fresh look when it reviews the government’s . . . amicus brief in American Axle.” But that hope is based in significant part on Jackson taking Justice Breyer’s seat on the Supreme Court bench. In short, “[w]ithout Justice Breyer on the bench, I have more hope the Court might reconsider the ‘inventive concept’ requirement he created in Mayo.”
We will continue to keep track of this case and report on developments.