Metro D.C. patent attorney Corey Smith spoke to Mark McCarthy of the online news source BioWorld MedTech about what is at stake in Athena v. Mayo and why he is hoping the Supreme Court will grant Athena’s petition for a writ of certiorari to hear this case.

Athena caught the attention of practitioners earlier this year when the Federal Circuit released an opinion on February 6, 2019 finding that the claims at issue were patent ineligible, and on July 3, 2019 the Federal Circuit issued a subsequent opinion declining to rehear this case, en banc.  In the en banc denial, the Court indicated their hands were tied in providing more guidance on the law of nature judicial exception to patent eligibility, especially regarding medical diagnostic methods.

Relying on the precedent of the Supreme Court’s 2012 ruling in Mayo v. Prometheus, the Federal Circuit felt legally bound to rule that Athena’s method for diagnosing a neurological disorder using a detection of autoantibodies that bind to an administered epitope is patent ineligible. The 86-page opinion included four concurring and four dissenting opinions, although all twelve Federal Circuit judges seemed to support the idea that the diagnostic method should be patent eligible. The opinion also called on Congress or the Supreme Court to clarify the law on diagnostic patents.

The Solicitor General did not issued a friend-of-the-court brief — a move that may ease the pressure on the Supreme Court to hear this case.

One person who has commented on the case is Paul Michel, the former Chief Judge of the Federal Circuit. He pointed to the Federal Circuit’s inconsistent record on patentable subject matter cases over the past decade, as the number of discrepancies among the judges’ opinions in Athena, as compelling reasons to grant review. In Bilski v. Kappos, which was decided by the Supreme Court in 2010, the Federal Circuit issued five differing opinions. In Athena, the Federal Circuit has eight.

Among patent attorneys, there is a growing consensus that the Supreme Court should take up the issue and provide better guidance on section §101. “A lot of practitioners felt they could have been clearer in Mayo v. Prometheus,” says Smith, adding that the Mayo decision complicates the Athena case because it seems to conflate “the novelty and obviousness tests within the umbrella of section §101.”

Smith suggests that sections §102 and §103, or the novelty and obviousness sections, respectively, should be considered on equal footing with section §101.  But, case law following Mayo has, at times, elevated subject matter eligibility above the other patentability sections within Title 35.

Where there was once hope for Congress to respond to the confusion — this past summer they were poised to act on several areas of intellectual property including potentially revising the law on patentable subject matter — hope is now shifting to the Supreme Court. Judging by the lack of action from the Solicitor General’s office, though, that could also be a dead end. “The whole thing is beginning to look like a hot potato nobody wants to touch,” Smith says.  

If the Supreme Court does grant cert, though, it will likely be to refine and/or clarify the framework for the patent eligibility test, especially as it applies to laws of nature.  The Court will have “a perfect opportunity to clarify what the law of nature exception,” says Smith, adding that the industry remains hopeful for a ruling that may provide greater consistency in this area.

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