One of Justice Breyer’s last acts as an Associate Justice of the Supreme Court might be voting to deny a petition for a writ of certiorari in an important patent eligibility case decided by the Federal Circuit. The case, American Axle & Manufacturing, Inc., tests the precedential value and limits of the test Justice Breyer himself created for patent eligibility ten years go in Mayo Collaborative Services v. Prometheus Laboratories, Inc. Today, the Supreme Court held its last conference of the current term; American Axle was on the list for consideration at today’s conference; and Justice Breyer notified President Biden that his retirement would be effective as of tomorrow at noon eastern.
As we previously discussed, the Solicitor General filed its amicus brief last month providing the view of the United States on this case. The government’s brief indicates the petition for a writ of certiorari should be granted with respect to the first question presented in the case. That question states:
“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?”
The government 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 government explains, 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.”
The government also argues 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 contends 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.” Thus, the government essentially suggests the Court reconsider the entirety of the two-part test Justice Breyer created in Mayo.
Perhaps given how busy the Court has been completing its opinions for the current term, the Court re-listed this case for consideration from June 23 to today, June 29. And although it is possible the Court could again delay its final consideration of the petition, the Court today likely held an up-down vote on whether to grant review. Four votes in favor of review are needed for the court to grant certiorari.
Again, it is Justice Breyer who authored the Court’s opinion in Mayo that would be analyzed and possibly overruled in this case. And, 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 had been 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 was based in significant part on Justice Jackson taking Justice Breyer’s seat on the Supreme Court bench prior to the Court’s vote on the petition in American Axle.
Instead, voting to deny review in American Axle may be one of Justice Breyer’s last acts on the Supreme Court. Later this week, and perhaps as early as tomorrow, the Supreme Court will likely release the results of today’s votes on petitions. So stay tuned.