Certiorari Denied in Eligibility Cases

The Supreme Court has denied certiorari in the three leading patent eligibility petitions:

  • HP Inc. v. Berkheimer (18-415)
  • Hikma Pharmas v. Vanda Pharmas (18-817)
  • Athena Diagnostics, Inc. v. Mayo Collaborative (19-430)

Although there are several other pending eligibility petitions, I gave these three the highest potential for certiorari.  The result here is that the Supreme Court is now highly unlikely to take up eligibility anew this term.  The one exception is the copyright case of Google v. Oracle where the court will likely discuss a dividing line between patentable and copyrightable subject matter.

Additional cases denied certiorari on Jan 13, 2020:

  • Power Analytics Corporation v. Operation Technology, Inc., et al., No. 19-43 (eligibility)
  • Regents of the University of Minnesota v. LSI Corporation, et al., No. 19-337 (sovereign immunity)
  • Garmin USA, Inc., et al. v. Cellspin Soft, Inc., No. 19-400 (eligibility)
  • Medtronic, Inc. v. Barry, No. 19-414 (meaning “ready for patenting” for on sale bar)
  • Chestnut Hill Sound Inc. v. Apple Inc., et al., No. 19-591 (due process and R.36 affirmances)
  • Nuvo Pharmaceuticals, et al. v. Dr. Reddy’s Laboratories, et al., No. 19-584 (written description need for experimental data proving claimed effectiveness)
  • Mushkin, Inc. v. Anza Technology, Inc., No. 19-610 (relation back to the original complaint)

There are several petitions that remain viable for this term:

  • ChargePoint, Inc. v. SemaConnect, Inc., No. 19-521 (eligibility)
  • Trading Technologies International, Inc. v. IBG LLC, et al., No. 19-522; Trading Technologies International, Inc. v. IBG LLC, et al., No. 19-353  (eligibility)
  • Apple Inc. v. VirnetX Inc., et al., No. 19-832 (apportionment and preclusion)
  • Maxell, Ltd. v. Fandango Media, LLC, No. 19-852 (eligibility)
  • Collabo Innovations, Inc. v. Sony Corporation, No. 19-601 (due process and takings for IPR proceedings against Pre-AIA patents)
  • Cisco Systems, Inc. v. SRI International, Inc., No. 19-619 (eligibility)
  • Chrimar Systems, Inc. v. Juniper Networks, Inc., et al., No. 19-829 (role of evidence beyond that raised in the IPR petition)
  • Morris Reese v. Sprint Nextel Corporation, et al., No. 19-597 (eligibility)

Although several of these petitions raise important points, none of them have received the attention or support of the ones denied today.



41 thoughts on “Certiorari Denied in Eligibility Cases

  1. 6

    One thing confusing the 101 issue is that the Alice and Mayo unpatentable subject matters [and who’s oxen are being respectively gored] are really quite different.

  2. 5

    When you think about the big picture the goal of the Scotus with Alice was to generate a case that would allow the fact finder to invalidate any patent they felt like invalidating, but at the same time not weaken the protection for new molecules for pharma.

    The Scotus did an amazing job of judicial activism in meeting the goals that were set by large corporations for the Scotus. The Scotus grandfathered in pharma molecules, but burnt the rest of the patent system down.

    About the same thing they did for anti-trust law with the rule of reason.

    1. 5.1

      Alice in the big picture is summarize the invention in a few sentences as an abstract idea. Don’t consider the claims as a whole but piecemeal proclaim that all the elements of the claims were known. Conclude the claims are nothing more than an attempt to claim an abstract idea.

      What is interesting is that modern technology is not bound to a physical embodiment like a molecule. Software/hardware/firmware are all equivalent and any invention can be built using on or a combination of them. There are a few cases that don’t quite fit this, but they are not terrible interesting.

      So the Scotus was actually brilliant in finding a way to decimate all patents except ones that relied on physical embodiments like molecules. They essentially bifurcated the patent system for pharma, which pharma spent a huge amount of money lobbying for during the drafting of the AIA. And yes I know from first hand experience.

      Other things that rely on one physical embodiment are also saved, so that old technology like a gear or bicycle is saved, but all modern technology, e.g., all information processing and electronic circuits, is rendered not eligible subject matter by any fact finder that doesn’t like the claim.

      That is where we are. Of course the Scotus isn’t going to take cert. Mission accomplished as far as they are concerned.

      Why did they do this? The same reason they did the rule of reason. International competition where the large corporations said they had to do this for the corporations to survive and compete.

      1. 5.1.1

        Agreed. Step 1. Craft the straw man; 2. Erect the straw man; and 3. Burn the straw man. Same thing as the “gist or heart of the invention” that the 2nd circuit used to invalidate every patent in it’s docket. As the old timers might recall staying out or in the 2nd circuit was outcome determinative. No patent can survive the gist test – BECAUSE you ignore the words of the claims. But the ’52 Act passed and Judge Rich fixed all that – read the claims! Opps, that is until C. Justice Rehnquist passed away. Then an apparently bored SCOTUS decided hey! Lets go screw up patent law – again. ‘Gist or heart’ rebooted as the abstract idea test. Alice suffers the exact same flaw.


          There is a long running joke in regards to Congress acting (again) in view of the Act of 1952:

          The next legislation will include the words: “and this time we really mean it.”

          Joking aside, ANY actual legislative fix may well still suffer the cruel fate of being exposed to the Court that christened itself (back before the — and that which prompted the — Act of 1952): “The only valid patent is one that has not yet appeared before us.”

  3. 4

    As previously noted, it was not realistic to think that a Supreme Court containg the same justices who wrote or supported Alice and Mayo were likely to reverse themselves. I.e., those decisions were not old enough or close enough.

    1. 4.1

      … especially without a champion at the CAFC who could rebuff Supreme Court overreaches (like Judge Rich — you know, someone that actually helped write the law that the Supreme Court wants to rewrite).

    2. 4.2

      I think both Paul and anon are on target.

      As far as the Scotus is concerned things are going swimmingly. The patent system has been decimated. Modern technology is having a difficult time being patented, large corporations can take whatever they want, suits in DC are down, etc. Mission accomplished as far as the Scotus is concerned.

  4. 3

    There are several petitions that remain viable for this term…

    Hm, you are more optimistic than am I. When I saw them deny cert. on Sequenom, I thought to myself “if they will not take cert. on that one, they will not take cert. on anything.” One could almost say the same of Athena, which was also denied this morning. This just further confirms my impression that the SCotUS is well and truly done with subject matter eligibility for a generation, and totally disinterested in revisiting the subject no matter how many times and ways interested stakeholders urge them to do so.

    There will be no latter-day Diehr to undo the damage of this generation’s Flook (i.e., Mayo/Alice). The rot will be allowed to remain, unless and until Congress intervenes.

    1. 3.1


      Maybe! Your analysis certainly makes sense. I am increasingly of the opinion that the Court may be more inclined to take a case once the Fed. Cir. has weighed in en banc.

      Athena was a case that it was urged to take, but if the Court agreed with the result and had nothing further to offer (perhaps believing the concerns raised by the Fed. Cir. are best addressed by Congress), then perhaps it may still choose to take another case at some point. In this regard, it may be that congressional signals that Congress may get involved actually weigh against the Court taking up any petitions in this area until Congress acts or stops signaling that it is interested in doing so.

      1. 3.1.1

        As one final thought, the CVSG’s may slightly suggest that the Court is not entirely closed to the idea of entertaining a 101 case.


          Sure. Asking the SG for input signals slightly more interest than 0%. The denial of cert., however, following the SG’s input indicates that the interest is only very slightly above 0%.

      2. 3.1.2

        [T]he Court may be more inclined to take a case once the Fed. Cir. has weighed in en banc.

        To my mind, this is like saying that the United States would be more likely to build the tower of Babel if the Roman Emperor agrees to pay for 50% of the construction costs. In other words, this is a more elaborate way of saying that it is never going to happen. The CAFC has no more desire to take a §101 case en banc than the SCotUS has to grant cert. on one.

      3. 3.1.3

        Because they have no answer and they know that they have nine separate views to match the 11 separate views on the CAFC.

        There simply can be no accommodation between the facts on the ground in the Information Age and the current language and structure of the Patent Act.

        Or to slightly modify that: they have not seen one yet.

        Dan Burk wrote in Patent Law’s Problem Children: Software and Biotechnology in Transatlantic Context (2014) that:

        In sum, all the doctrines common to trans-Atlantic software and biotechnology cases concern the disposition of information within patentable subject matter. Broad abstract claims constitute claims to information or information transfer; mental steps implicate the organic recording of information, just as printed matter necessarily implicates the codification of information. Patent doctrine attempts to confine software claims to a particular apparatus for data processing, or limit a DNA claim to the context of a particular function, in an attempt to avoid the hard question of how to situate these information technologies within a nineteenth-century legal framework. The cases deploying these doctrines, in any jurisdiction, are difficult to parse, but the deficiency lies not in the “problem” technologies they address. Rather the problem is in the capacity of patent law to function in the information age. Until patent law develops some way to accommodate information-based technologies, courts on both sides of the Atlantic will continue to struggle to apply subject matter limitations.

        I could not agree more. And y’all know what I think we should do about it.


          That was written early enough for inclusion in a book published in 2014. What makes you think that courts in Europe have been continuing ever since to “struggle” with eligibility issues?

          That would be news for me, Martin. On what recent European decisions do you rely, please?


            Max I have not studied EU Subject Matter Eligibility. Mr. Burk may or may not be on-target in his assessment. OTH, can you describe any substantial changes since 2014 that may have changed what we was attempting to describe?

            As to common law jurisprudence somehow breaking what was working here, its simple to make out a case that the Act never worked here for information inventions.


              Which of the statutory categories from 35 USC 101 does this “information” type of invention belong to?

              Or are you just being glib?


                Information is not going to be a composition of matter or manufacture unless the settled definition of those things changes. It could be possible to argue that certain information can be machine components. Almost every information claim I have seen is a result of a method.

                The 1952 Congress could not imagine an information economy, and surely not in relation to patent protection.

                Its entirely likely that none of the categories are applicable, and except for policy reasons, that’s the most reasonable conclusion.

                1. You do realize that you are moving the goal post again and inserting ‘information’ (as a result) in place of the statutory category of method, right?

                2. Notwithstanding In re Nuitjen (which while being current controlling law, is wrongly decided as a factual matter), you are aware that software is a manufacture, and as a design choice of ‘wares’ in the computing arts, is patent equivalent (note the distinction of equivalent and ‘exactly equal to’) to any of the design choices of computing wares, namely hardware and firmware, eh?

                  Being inte11ectually honest on this point is critical.

                  Also, this clearly is not a new point.

                  Part of the critical nature flows from when this nature of innovation in the computing arts is understood (and accepted), one may far more readily see that it is the Court (and its simian-in-a-cage-having-been-trained-with-a-firehose corrupted entourage of lower courts) that re-written the statutory law of eligibility and overridden the words of Congress from the Act of 1952 that had set eligibility as having a wide open gate of two (purposefully easy) requirements:

                  The applicant is to write their claim to their innovation so as to fall into at least one of the statutory categories, and

                  The claimed innovation must have utility in the patent sense.

                  That’s it. No “interpretation” needed.


              Martin, in the last 5 years or so, in Europe, the “line” on eligibility has become clearer. Before then, in data processing inventions, there was competition between various approaches, including “any hardware”, “technical contribution” and “mere technical character”. True, the UK maintains to this day that its split between eligibility and obviousness is more intellectually honest than the established line at the EPO, but all agree that it doesn’t matter which forum decides because “it comes to the same thing in the end”.

              Who (other than the judges in England) is troubled by the by now settled European line on eligibility/obviousness? Who here thinks it is too generous, or not generous enough? I want to know.


                I am curious, MaxDrei, do the caveats of “as such” and “per se” stop anyone any more from obtaining software patents? Has this not “settled into a bright line” pretty much solely due to the ‘scriviner’s art?’

                1. Round and round we go. “Process” cannot mean every human activity, and since every human activity can be characterized as a “process”, there has to be some limitation either in the common law or by some form of statutory interpretation.

                  Glad to hear that the Court of Appeals for Nutt job overturned In re Nuitjen, but back here on Earth, it stands.

                  Also glad to hear that same Appeals court helpfully re-defined “Manufacture” from an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations to whatever it wanted it to be.

                  And no, “information” does not replace “Process”, but when a purported statutory process produces only information as it’s result, the patent system has no reliable way of dealing with the claims, because they bump against other Constitutional protections and the long understood limits of the reach of patent protection. Both the USSC and the CAFC are both utterly aware of that problem and completely fragmented about what to do about it. Mere wishes that the problem would be ignored will never do, as we can see by decisions and these cert refusals.

                2. Part of the reason for going round and round is that legislating from the bench (your call for ‘interpretation’ and Common Law) IS the cause of the problem in the first place.

                3. because they bump against other Constitutional protections

                  Absolute nonsense.

                  Other than incoherent blog proclamations to that effect, do you have ANYTHING that would put substance to the assertion?

                  And “these decisions and cert refusals” are NOT linked just on your say-so (that’s also part of the problem in that such noise obscures the real issue here concerning patent law)

                4. In a word: no. You and I, anon, have been round and round on this one, many times before. Scrivening (form) has nothing to do with it. Only substance counts.

                  What counts for eligibility is “technical character”. Apparatus has technical character. Methods performed on a computer have technical character.

                  What counts for patentability (non-obviousness) is the use of technical means to solve a technical problem. Inventive activity in fields that are not technology cannot contribute to patentability at the EPO. Under GATT-TRIPS, Europe grants patents in all fields of technology but not in fields other than the fields of technology.

                  So, eligibility/patentability at the EPO is logical and in conformity with international Treaties. Simple to grasp, even for a lay person or a Justice of a Supreme Court.

                  Of course, at the margin, the cutting edge, the work of mapping what is a “technical” problem and what is not, will (hopefully) go on for as long as inventors invent. We don’t and can’t know yet what fields next year, or ten years from now, should be regarded as “technical” because those fields haven’t yet been invented. But with the addition of hundreds of data points (Appeal decisions) per year to the map sharpens up, year upon year, the borderline betwen what is inside the “technical” zone, and what is not.

                  When drafting a PCT case on the edge, it does help to keep all this in mind. That’s because, in any Ftf jurisdiction, one is held strictly to the invention that you described and claimed on your filing date. So, before you file, mull over what you are going to announce as the technical problem that your invention has solved.


          There simply can be no accommodation between the facts on the ground in the Information Age and the current language and structure of the Patent Act.

          The problem is NOT the Patent Act.

          The problem is the Supreme Court’s rewrite of the Patent Act.

          There is a HUGE difference.


          “they know that they have nine separate views”

          You really think each member of SCOTUS cares enough about patent eligibility to have their own opinion?


              And somehow I thought that the notion of Lady Justice holding the scales being blindfolded indicated an opposite purpose in life…

  5. 2

    Congress: It’s now up to you.

    SCOTUS refuses to save us from the mess they themselves created.

    Either step up and restore full patentability to all fields of innovation (without moving the Section 101 mess over to Section 112; or to any other existing or new Section/s), or watch our Country’s innovation engine come to a screeching, painful halt.

    China, Europe, and the ROW are behind closed doors howling with delight at our self-inflicted foolishness.

    1. 2.1

      Howling? Hardly. Europe well knows how hard it is to adjudicate eligibility. I think that we have here a great (and rare) example of civil law delivering more legal certainty than the binding precedent of English common law.

      Mind you, with 38 sovereign Member States feeding their collective wisdom into the Enlarged Board of Appeal of the EPO, one would expect the EPO’s EBA to come up with an intellectually defensible view of eligibility.

    2. 2.2

      China, Europe, and the ROW are behind closed doors howling with delight at our self-inflicted foolishness.

      Neither China nor Europe (nor anyone else, come to that) gains any sort of advantage from the U.S. shooting its own patent system in the foot. Chinese innovators draw just as much incentive from the U.S. patent system as do U.S. innovators. The suffocation of U.S. patents dims innovation worldwide.

      Congress: It’s now up to you.

      Exactly. I never had much hope of the SCotUS cleaning up its own mess, and this morning’s orders list confirms as much. It is up to Congress to solve this problem. This is an election year, and they never get much done in election years, so it probably will not arrive this year. Hopefully, however, 2021 will see the advent of the Tillis-Coons Patent Restoration Act (or some such) to undo the SCotUS’s subject-matter eligibility botch-up.

    3. 2.3

      “Either step up and restore full patentability to all fields of innovation (without moving the Section 101 mess over to Section 112; or to any other existing or new Section/s), or watch our Country’s innovation engine come to a screeching, painful halt.”

      My money is that they’ll take option #3: ignore the issue and watch the engine continue to chug along without any meaningful upheaval.

      1. 2.3.1


        Your “option” of choosing to ignore (the epitome of ignor-ance), ‘clenches tight your eyes, sticks your fingers in your ears and chants’ to the notion that Efficient Infringement IS a meaningful problem. Ignoring problems is guaranteed to cause an upheaval.

    1. 1.1

      Big tech, namely Google, owns Congress. Coupled with impeachment and other matters before Congress, Section 101 and the death of small business in the US is here to stay. Big tech will get bigger.

      1. 1.1.1

        I agree IPdude.

        Patents will continue a long slide. Now they are these things that create a barrier to entry for anyone but the large corporation. They aren’t much.


          Look out for a possible next evolutionary step (in the name of ‘patent quality’ of course) of the “barrier to entry” being higher hurdles (including costs) of merely filing an application.

          This of course would be opposite>/b> of how the Founding Fathers wanted this ‘fuel for innovation’ to play out (you know, strong, fully alienable, private personal full legal property rights to satisfy the Quid Pro Quo and turn (or mature)the inventor’s inchoate right based on the desire of the government to publish (and promote in the advertising sense, as well as the ‘improve technology’ sense).


            Lemley the destroyer of patent law has being trying to create the “gold plated patent” for a long time.

            Lemley is like one of those guys standing outside his wagon selling an elixir to solve all your problems. (Except, of course, that Lemley and his wife are pulling in millions burning down the system.)

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