This morning, the Supreme Court denied the petition for certiorari in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, an important patent eligibility case decided by the Federal Circuit in 2019. In this case, the petitioner 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. The Solicitor General previously recommended the Court grant review to reconsider the first question presented, addressing the appropriate standard for determining eligibility. But today the Court denied the petition.
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?”
As we previously discussed, the Solicitor General filed its amicus brief last month providing the view of the United States that the petition for a writ of certiorari should be granted with respect to the first question presented. In its brief, the government maintained that American Axle “reflects substantial uncertainty about the proper application of Section 101, and . . . is a suitable vehicle for providing greater clarity.” The government also argued that 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 maintained 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 suggested the Court reconsider the entirety of the two-part test Justice Breyer created in Mayo Collaborative Services v. Prometheus Laboratories, Inc. The Court, however, rejected the recommendation of the Solicitor General and denied the petition for writ of certiorari in an order released this morning.
As we also previously reported, the last time the Solicitor General recommended the Supreme Court grant review to reconsider the law of patent eligibility, the Court denied review.
About three years ago, the Supreme Court requested the views of the Solicitor General in two patent eligibility 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, the Solicitor General suggested the Court deny review in both Hikma and HP. Remarkably, however, 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.
Despite numerous calls for clarity on the subject of patent eligibility, this result is not all that surprising. The Supreme Court recently denied certiorari in Ameranth, Inc. v. Olo, Inc., a case that presented the same two questions presented to the Court in American Axle. In today’s order, the Court also denied the petition in Spireon, Inc. v. Procon Analytics, LLC, which also raised the same two questions. Notably, two still-pending petitions raise some of the same questions presented in American Axle. In Interactive Wearables, LLC v. Polar Electro Oy, two of the three questions presented match those in American Axle. Similarly, one of the questions presented in Worlds Inc. v. Activision Blizzard Inc. is identical to the first question presented in American Axle. Those petitions will likely be denied soon.
In addition, as we previously discussed, voting to deny review in American Axle was likely one of Justice Breyer’s last acts as an Associate Justice of the Supreme Court before his official retirement today at noon. American Axle would have tested the precedential value and limits of the test Justice Breyer himself created for patent eligibility ten years go in Mayo. As we noted in our post yesterday, Justice Breyer might have been reluctant to grant review in this case given his authorship of the Mayo opinion.
After today’s development, it is apparent that the Supreme Court is unwilling or unable to resolve the crisis in the law of patent eligibility—another sign that much-needed reform of patent eligibility law is a matter for Congress. As I have written elsewhere in an article comparing the modern problem with patent law to the problem that existed in 1952:
As in 1952, today there is a clear need for legislative reform. In 1952 the problem was the invention requirement. Today the problem is the inventive concept requirement.
In 1952, the solution to the then-existing problem was to amend the patent statute to eliminate the Supreme Court’s invention requirement. Today, the solution to the current problem is another amendment to the patent statute, this one to eliminate the Court’s inventive concept requirement.
And if it feels like we’re going in circles, that feeling is, unfortunately, real. In the same article, I highlighted the underlying struggle:
Modern critics of the patent system should understand that current problems with patent law doctrines reflect a much larger and longer ebb and flow in efforts to shape and control patent law by various institutional and non-institutional actors. In particular, the Supreme Court’s desire to inject an inventive concept requirement into patent law is not new. It has happened before, in the form of the invention requirement . . . . In the words of Homer Schneider, “[i]sn’t that a remarkably consistent pendulum? And only as a pendulum are the Supreme Court shifts consistent. But the record isn’t all that surprising—history has a way of repeating itself.”