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Supreme Court Won’t Fix the Patentability Mess It Created A Decade Ago

Bruce D. Sunstein

Bruce D. Sunstein | Founder, Partner View more articles

Bruce is a member of our Litigation Practice Group, Patent Practice Group, Trademark Practice Group and Business Practice Group

In 2019 the Federal Circuit reached the extraordinary conclusion, in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC (which we reported here), that a patent for a method of making a drive shaft was invalid because it was directed to a natural law. This year, the Supreme Court had an opportunity to correct the Federal Circuit by granting American Axle’s petition for review of this decision. In determining whether to grant review, the Court asked the Solicitor General for the government’s views on this case.

In fact, the Federal Circuit’s decision in American Axle is only half of the story, because the decision was built, however flimsily, on a set of controversial Supreme Court decisions, including Mayo Collaborative Servs. v. Prometheus Labs., Inc. (2012), dealing with a diagnostic method (which we discuss here), Ass’n for Molecular Pathology v. Myriad Genetics, Inc. (2013), also dealing with a diagnostic method, and Alice Corp. Pty. Ltd. v. CLS Bank International (2014), dealing with a computer-implemented business method (which we discuss here).

Before appealing to the Supreme Court, American Axle sought a rehearing en banc from the Federal Circuit Court of Appeals. The request was denied, with six judges in favor of a review and six opposed. Judge Pauline Newman wrote a dissent that was joined by four judges in which she said: “The court’s rulings on patent eligibility have become so diverse and unpredictable as to have a serious effect on the innovation incentive in all fields of technology. The victim is not only this inventor …; the victims are the national interest in an innovative industrial economy, and the public interest in the fruits of technological advance.” With such a major split within the Federal Circuit bench, the Supreme Court had a responsibility to clean up the mess promptly unless the Solicitor General felt that this was not a good test case for clarifying the question of patent eligibility.

The Court did in fact hear from the Solicitor General. In a filing made on May, 24, 2022, she opined that “[t]he court of appeals erred in applying” principles of patent eligibility to the American Axle patent. She agreed with dissenting Judge Moore of the Federal Circuit that the patent claim in question is patent eligible because it “recites an ‘industrial process’ that entails a concrete application of Hooke’s law in a particular setting.” The Solicitor General noted, in discussing particulars, that “[t]his is only the most recent Section 101 case that has fractured the Federal Circuit,” and opined that it was a good opportunity for the Court to clarify the law.

On June 30, 2022, the Supreme Court nevertheless slammed the door on American Axle and the Solicitor General by denying review of the Federal Circuit’s decision. Given the Court’s unwillingness to address the fog of uncertainty created by its decisions, it would be valuable for users of the patent system to rekindle efforts made in Congress over the past decade to bring clarity to patent eligibility determinations.

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