Patent Eligibility: Where We Are Now

Since I last wrote on the Coons-Tillis patent eligibility reform in Congress, the Federal Circuit declined to take up an en banc rehearing of Athena v. Mayo. The court was deeply divided in the 7-5 decision, with all 12 judges believing that the diagnostic claims at issue should be patentable despite their holding, and with 7 judges writing separately to express their concerns, many of them expressly entreating the Supreme Court and/or Congress to reconsider and revamp the law of patent eligibility. (E.g., Judge Moore’s closing comment to the plaintiff: “Your only hope lies with the Supreme Court or Congress. I hope that they recognize the importance of these technologies, the benefits to society, and the market incentives for American business. And, oh yes, that the statute clearly permits the eligibility of such inventions and that no judicially-created exception should have such a vast embrace. It is neither a good idea, nor warranted by the statute.”)

More recently, the Court declined to grant cert on Athena, Vanda, Berkheimer, Cellspin or Power Analytics, and on January 27 further declined three petitions related to ChargePoint and Trading Technologies. The refusal to consider Athena was not only despite the opinions expressed by all 12 Federal Circuit judges writing en banc, but also contrary to the U.S. Solicitor General’s express recommendation that the Court opine on the case. In view of this pointed refusal, it seems entirely safe to conclude that the Court has no interest in reconsidering patent eligibility law.

In a recent Q&A session, Senator Tillis— one of the two senators who introduced the proposed legislation—stated that “I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress. … If we’re going to get anything done on this issue, everyone will have to compromise. Anything less than that is dead on arrival.”

Given the Court’s disinclination—and Congress’s present inability—to effect change, significant modification of the existing legal framework seems unlikely to take place any time soon.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.