It’s Official: SCOTUS Will Not Unravel Section 101 Web

By Eileen McDermott
January 13, 2020

“While the IP community can at least breathe a sigh of relief that the Court did not choose to wade into Vanda and Berkheimer and potentially further muddy the 101 waters, the denial of Athena has already drawn sharp criticism.”

https://depositphotos.com/151134514/stock-photo-side-view-of-young-businessman.htmlThe Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely.

The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

In that brief, the government explained that, historically, claims like the ones at issue in Vanda were “well understood” to be patent eligible, “[b]ut the Court’s recent Section 101 decisions leave the proper analysis of such claims unclear.” Thus, while the analysis and precedent needs to be reviewed, the Court should address the issue in a more appropriate case, like Athena, said the SG.

The Court today took the SG’s suggestion to deny cert in Vanda, and also denied HP Inc. v. Berkheimer, another case in which the Federal Circuit actually found the patent in question eligible. While the IP community can at least breathe a sigh of relief that the Court did not choose to wade into those cases and potentially further muddy the waters, the denial of Athena has already drawn sharp criticism. On Twitter, @TysonBenson said, “This is unfortunate – #SCOTUS had the opportunity to clear up the 101 #patent mess.”

@Rachael_IP said: “Not a good day for patent litigation. My heart is heavy for all of the small companies (and people behind them) that this will harm.”

And @Anticipat wrote: “Congress, you’re our only hope.”

Below are the petitions dealing with Section 101 that were denied today:

HP INC. V. BERKHEIMER, STEVEN E.

HIKMA PHARMACEUTICALS, ET AL. V. VANDA PHARMACEUTICALS

POWER ANALYTICS CORPORATION V. OPERATION TECHNOLOGY, INC.

GARMIN USA, INC., ET AL. V. CELLSPIN SOFT, INC.

ATHENA DIAGNOSTICS, INC., ET AL. V. MAYO COLLABORATIVE, ET AL.

Here are some other IP cases that were also denied:

RIMINI STREET, INC. V. ORACLE USA, INC., ET AL.

CHESTNUT HILL SOUND INC. V. APPLE INC., ET AL.

MUSHKIN, INC. V. ANZA TECHNOLOGY, INC

Stay tuned for more reactions on this soon.

 

Image Source: Deposit Photos
Image ID: 151134514
Copyright: peshkov 

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments. Join the discussion.

  1. angry dude January 13, 2020 12:10 pm

    “anything under the sun that is made by man”

    Why is it so difficult to grasp for Scotus and Congress ?

    Why such a f%^*@&g intractable mess with 101 at present ?

    We all know why…

  2. Paul Cole January 13, 2020 12:45 pm

    It is very plain that the Supreme Court had a duty to consider the Athena case, and the failure of the justices to do so amounts to a clear failure in their duty. Ariosa was an insult to Oxford University and Athena is a renewed insult to Oxford University and an additional insult to Max Planck – two of the world’s leading research organizations. Unfortunately the justices do not seem to care about science very much.

  3. BP January 13, 2020 1:07 pm

    Would have been nice for the justices to comment on why the petition for Athena was denied.

    What does it say about the level of education/intelligence when the justices seem to grant petitions on numerous trademark cases while royally screwing up patent law and refusing to fix the mess.

    The justices are in-sync with the dumbing of society, placing advertising above science and technology.

  4. MaxDrei January 13, 2020 1:19 pm

    The Justices have opted out, I suppose, filing the papers away in the “Too difficult” cupboard. Having been burned once (at least) none of them was foolhardy or arrogant enough to volunteer again to step up to the plate and wrestle with the bear.

    It’s easier in Europe, where a specialist court, the Enlarged Board of Appeal of the EPO, acts as ultimate arbiter.

  5. Pro Say January 13, 2020 1:19 pm

    Congress: It’s now up to you.

    SCOTUS refuses to save us from the mess they themselves created.

    Either step and restore full patentability to all fields of innovation (without moving the Section 101 mess over to Section 112; or any other existing or new Section), or watch our Country’s innovation engine come to a screeching, painful halt.

    China, Europe, and the ROW are behind closed doors howling with delight at our self-inflicted foolishness.

  6. Curious January 13, 2020 1:48 pm

    Berkheimer was properly decided (although it didn’t go far enough) so them not taking up that case is a relief. However, it is a shame that SCOTUS didn’t attempt to inject some reasonableness into the 101 analysis by taking cert on Athena.

    The only real avenue for change appears to be Congress. However, in an election year, I don’t expect anything of substance in 2020. Depending upon how the balance of power shifts (one way or the other), perhaps something might happen in 2021, but that is more wishful thinking than anything. As such, I think we can look for another 2 or 3 years of the status quo (whatever that means — which is part of the problem).

  7. Concerned January 13, 2020 2:42 pm

    I did not see Trading Tech on the list of denied certs. Trading Techs asked SCOTUS if computer implemented processes HAD to improve the computer’s hardware. Alice did not imply as much.

    Somewhere the lower court amplified a SCOTUS decision and my examiner is using such a reasoning to reject my application (no case cited).

    Such reasoning is illogical and an examiner should be embarrassed to even argue as much after conceding a long sought solution was achieved by the process.

    So here we are, which is “I have no idealand?”

    One claim makes me larger,
    And one claim makes me small,
    And the patent system makes no since at all.

    Go ask Alice.

  8. Bemused January 13, 2020 3:35 pm

    Really, did we truly expect (deep in our hearts) that SCOTUS would grant cert in Athena? Of course, we all wanted them to but that isn’t that same as really expecting that they would.

    This is (relatively) the same SCOTUS which has uniformly and regularly issued patent-killing opinions for more than a dozen years. Add in the hubris of this black-robed clown posse about their infallibility and the denial of cert in Athena really isn’t all that surprising.

    Even worse, denying cert in these cases sends a signal to the other clown posse at the CAFC that they got it right in all those 101-based patent invalidations they’ve issued over the course of these past several years.

    Awful and sickening abdication by SCOTUS of their duties as the final arbiters of the law.

  9. Mark Tornetta January 13, 2020 3:42 pm

    Thanks Eileen for letting us know.

    Here is some more info to add to the story.

    I contacted Brad Watts at the office of Senator Tillis asking if the new 101 patent reform bill will be applied retroactively:

    Brad replied:
    From: Watts, Brad (Tillis)
    Date: Fri, Jan 10, 2020, 9:59 AM
    Subject: RE: Proposed Patent Eligible Subject Matter bill
    To: Mark Tornetta

    “We haven’t made a decision about retroactivity, and it’s likely a bill won’t be introduced this Congress.”

    I think congress and the senate should put politics aside on this one and put together a 101 reform bill that returns valuable patent rights back to inventors whose patents were wrongly killed by Alice section 101. The sooner the better.

  10. Anon January 13, 2020 3:54 pm

    Having been burned once (at least) none of them was foolhardy or arrogant enough to volunteer again to step up to the plate and wrestle with the bear.

    Not foolhardy or arrogant….?

    This has got to be the most bizarre and twisted spins to backhandedly support the fact that the Supreme Court is refusing to clean up their mess.

    It would NOT be “foolhardy” or “arrogant” to clean the mess that oneself made. By NOT doing so, they are showing the opposite: they were foolhardy to F things up AND they are arrogant enough to not care.

    I can suffer no apologist for the Court and her actions.

  11. Paul Johnson January 13, 2020 4:08 pm

    MaxDrei, good point. I wonder if it’s delusion (that Alice was a good decision) or embarrassment (at how bad Alice was) that prevents SCOTUS from fixing their mess.

  12. angry dude January 13, 2020 4:54 pm

    Curious @6

    “…another 2 or 3 years of the status quo”

    Yeah… another 2 or 3 or 5 years and there won’t be any efficient infringers in the US for lack of small patent holder’s patents to infringe

    Problem solved.

  13. Concerned January 13, 2020 5:23 pm

    Bemused @8:

    I agree about the implications and confirmations being correct on the other decisions at CAFC. Amplifications upon amplifications on decisions after decisions.

    SCOTUS writes they did not want the entire patent law swallowed, then sits idle as it happens.

  14. angry dude January 13, 2020 6:51 pm

    Mark Tornetta @9

    “The sooner the better”

    It’s already too late – Congress critters will be whipped by their Big Tech SV masters if they even attempt to think in that direction…
    Retroactive application of 101 fix means hundreds of dudes will come out of woods to re-litigate their back-from-the-dead patents…
    No gonna happen with this Congress
    But applying AIA’s IPRs and PTAB retroactively seemed to be fair to them…

    The doc said “to the morgue” – to the morgue it is!

  15. Joe Williams January 13, 2020 7:55 pm

    SCOTUS rejected the hearing… I do not know the odds of a Solicitor General telling SCOTUS to act v times denied, however, that will likely come out soon and the outcome seems like a fixed coin.

    I am not surprised as a SCOTUS justice’s only incentive is legacy building — so uncertainty helps add more horses for them to trade by enabling lawyers to further debate about their ambiguous definitions. It’s a horse trade for the frailing justices to live forever if one writes the majority opinion for cases they select…

    Another vantage point may be that SCOTUS is bucketing copyright and patent law together because of the Oracle v Google case about APIs being copyright protectable (this is a guess by me as a non lawyer).

    However, the forcing function isn’t SCOTUS– it is in the district courts of Delaware completely getting overwhelmed with patent cases.

    Congress will act because so much business relies on Delaware’s certainty.

    I can’t guess timeline, but these lawyers seem to already be scheming their next Athena.

    Another vantage point may be that SCOTUS is bucketing copyright and patent law together because of the Oracle v Google case about APIs being copyright protectable (this is a guess by me as a non lawyer).

    However, the forcing function isn’t SCOTUS– it is in the district courts of Delaware completely getting overwhelmed with patent cases.

    Congress will act because so much business relies on Delaware’s certainty.

    I can’t guess timeline, but these lawyers seem to already be scheming their next Athena.

    “””

    Rooting for the good guys that still exist,

    Joe

  16. Night Writer January 14, 2020 7:21 am

    Reality is that there is no way Congress will do anything about this anytime soon.

    Not going to happen unless corporate lobbying laws change.

    Just look at where the major players get their money.

    The most likely thing to happen next is the bifurcation of the patent laws where somehow the Scotus figures out how to completely destroy all patents that aren’t pharma.

    You can keep your new molecules but all else will be gone.

    The big thing about this is the underlying factual conclusions that the justices are making about innovation.

  17. Anon January 14, 2020 9:48 am

    Miss McDermott,

    Really only a minor nit – your cleverness with the title of the article misses the mark just a little. Webs are supposed to be sticky and difficult to unravel.

    Perhaps a better analogy would be the Gordian Knot, and the unwillingness of the Court to cut the Knot that they themselves started (which would reinforce the avenue that I have outlined FOR the Court to do just that: the Kavanaugh Scissors).

    If the Court did not mean to do the damage that it has so evidently done, then the Court does have a path out of its own created mess.

    If.

    Hmmm.

    … on the other hand, maybe the analogy of purposefully making things difficult and catching victims (that is, innovators as mere bugs) in its web so that the life juices could be sucked out IS an appropriate one.

    If indeed purposeful, THAT would be a greater condemnation.

  18. angry dude January 14, 2020 2:11 pm

    Anon @17

    “…innovators as mere bugs”

    Dude,

    Inventors are not bugs – they posses higher level of intelligence than bugs (and most patent lawyers too)

    I myself predicted almost exactly what would happen to 230-year old US Patent system 13.5 (!!!) years ago and I still have my (worthless in the current environment) US patent intact and most of my money too (while causing one SV not-so-efficient infringer to lose 200 million(!!!) in one night … but that was before AIA … nowadays they would bury me in IPRs)

    Fool me once – shame on you, fool me twice – shame on me

  19. Anon January 14, 2020 5:25 pm

    Please stop reacting with emotion and use some reason with what I posted.

    I am clearly NOT the identified identity that would treat inventors as bugs.

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