SCOTUS turns down chance to revisit Alice/Mayo this term
The US Supreme Court has declined to revisit the issue of patent subject matter eligibility, a move that one lawyer called “bad for the health of Americans and bad for our economy”.
The country’s top court yesterday denied certiorari in five separate cases dealing with the issue of which inventions should and shouldn’t be eligible for patent protection.
“Without clarification in the law, medical diagnostics have no future and life-saving inventions will not be developed,” said Irena Royzman, partner at Kramer Levin, in the wake of the decision in Athena v Mayo, on appeal from the US Court of Appeals for the Federal Circuit.
Thomas Hedemann, counsel at Axinn, said the Supreme Court’s decision was likely to put pressure on Congress to change the law.
“The overarching takeaway from the Supreme Court’s denial of cert in all of these cases is that the Court is content with the Alice/Mayo framework,” Hedemann said.
Those who want an overhaul of section 101 [of the Patent Act] law must therefore look to Congress, though the prospects of any legislation seems slim given the political climate, that it’s an election year, and that the influential pharmaceutical and tech industries have conflicting views,” he added.
Perhaps the highest-profile of the five cases, the Athena dispute arose after Athena appealed the invalidation of its medical diagnostics patent under the Supreme Court’s Alice/Mayo ruling.
Under the Alice/Mayo rule, inventions directed towards natural laws are not eligible for patent protection.
Several Federal Circuit judges last July called for the Supreme Court to provide greater clarity on the question of what qualified as patent-eligible subject matter.
The Federal Circuit refused to grant an en banc rehearing of Athena’s appeal on the grounds that their hands were tied by Alice/Mayo.
While many of the judges expressed their concern with the rule, they said they were nonetheless bound by the precedent.
Royzman said the Supreme Court’s denial of certiorari was a missed opportunity.
“This is a case where a medical innovation was taken out of the realm of patent eligibility although all the judges of the Federal Circuit agreed that medical diagnostics, such as those at issue in Athena, should be patent eligible,” Royzman said.
“Athena offered an opportunity to the Supreme Court to clarify what is patent-eligible subject matter and to instruct courts to consider the invention as a whole rather than separating the discovery of a biological phenomena from the steps that apply it to diagnose a disease, as courts do now,” she added.
Writing at the time, circuit judge Alan Lourie said that if he could “write on a clean slate”, he would allow patents to be granted for inventions which make use of natural laws.
Fellow judge Timothy Dyk said Alice/Mayo had left courts with “no room to find typical diagnostic claims patent eligible”.
Judge Timothy Hughes agreed that further clarification on the issue would be welcome. But it appears now that no such clarification will be forthcoming from the Supreme Court.
Other patent eligibility-related cases which were denied certiorari include HP v Berkheimer and Hikma Pharmaceuticals v Vanda Pharmaceuticals.
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