13 January

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

in Blog

The 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.”