SCOTUS Declines to Wade Into 101 Morass

One of the more noteworthy IP law developments of 2019 was the patent subject matter eligibility (35 U.S.C. § 101) craze that swept Congress in the late spring of 2019.  With unprecedented marathon hearings, and almost universal agreement from dozens of witnesses on the unpredictable state of subject matter eligibility jurisprudence, a legislative fix appeared imminent. Yet, this craze was short-lived.  The significant momentum of the spring hearings fizzled into deadlock in late summer— then the entire effort was left for dead in the fall.  With Congress losing its traction, all eyes turned to the SCOTUS and the prominent cert petitions on the docket that raised the prospect of some form of 101 review from the high court.

But, the court denied all such cert petitions today. 

In the briefing leading to today’s denial, the gov’t was angling for Athena as the best vehicle to possibly re-calibrate 101 practices, but all were cleared from the docket in one fell swoop.

HP Inc. v. Berkheimer
Hikma Pharmas v. Vanda Pharmas
Athena Diagnostics, Inc. v. Mayo Collaborative

So, now what?

While possible that the court may be awaiting a better case to dig into the 101 debate, it doesn’t seem like such a case is on the immediate horizon.  And, for all we know the issue may be viewed by the Court as a problem for lawmakers to address.  So, we are essentially back to where we were in the fall of 2019.  That is, with the draft framework of 101 intermingled with functional claiming issues, and balkanized industry lobbies demanding for their view of the world to the exclusion of others.  The primary drivers of the earlier effort, Senators Tillis and Coons, are facing reelection in 2020. Given that, it is hard to imagine a scenario where anything meaningful gets done this year.