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Patent Eligibility Clarity Tops Attorneys’ New Year’s Wish List

Dec. 26, 2019, 11:00 AM

Patent attorneys are hoping that Congress or the Supreme Court will provide more clarity in 2020 about what inventions are eligible for patent protection.

“We’re still searching for where the line is,” said attorney Michelle Armond, who founded Armond Wilson LLP and represents clients in a broad range of intellectual property disputes. “I don’t know if that’s going to come from the Supreme Court at this point or from a legislative fix, but this is an area of law that definitely needs some consistency.”

The Supreme Court will have opportunities to wade into patent eligibility standards. The justices have already signaled interest in a pair of appeals, asking the Trump administration for its views.

One case, HP Inc. v. Berkheimer, deals with a Federal Circuit ruling that patent eligibility can involve factual issues, making it harder to knock out patents early in litigation. The other, Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., is an appeal of a ruling that found a method of treating schizophrenia is eligible for patent protection.

Solicitor General Noel Francisco recommended that the justices not take up either case and instead offered Athena Diagnostics Inc. v. Mayo Collaborative Services LLC as a better candidate to clarify patent eligibility.

“I think if there is going to be a case where the Supreme Court looks at it again, it probably would be Athena this term,” Armond said.

The invalidation of Athena’s patent on a method for diagnosing a medical condition exposed sharp divisions at the Federal Circuit, which denied the company’s request for a full-court rehearing in an 86-page order that included eight separate opinions. Athena petitioned the Supreme Court for review in October.

“When you see the Federal Circuit with that many disparate opinions in an en banc denial, I think the court potentially needs further guidance and is looking for further guidance,” said Yar Chaikovsky, global co-chair of the IP practice at Paul Hastings LLP.

Federal Circuit Judge Todd Hughes, in the Athena rehearing order, wrote the various opinions were “illustrative of how fraught the issue of” patent eligibility had become, while Federal Circuit Judge Kathleen O’Malley wrote separately to encourage Congress to amend patent law to address the confusion and disagreement.

‘Ground to a Halt’

Attorneys question whether Congress will act in 2020, as recent efforts to clarify patent eligibility have stalled on Capitol Hill.

House and Senate lawmakers efforts to amend Section 101 of the Patent Act, which outlines the requirements for patent eligibility, led to a draft bill but no legislation.

“They really seemed hell-bent on getting some legislation proposed” in 2019 said Matthew Rizzolo, a partner at Ropes & Gray LLP who helps clients enforce intellectual property rights and fend off infringement claims. “And then everything kind of ground to a halt.”

Legal practitioners are watching closely to see whether those efforts will be reinvigorated, and lawmakers will act.

But Scott McKeown, a Ropes & Gray partner who focuses on post-grant patent counseling and litigation matters, suggested lawmakers might take a wait-and-see approach, taking time to see if the Supreme Court sheds some light on patent eligibility.

“It seems like the ball has been passed to the Supreme Court,” he said. “I don’t know that Congress will be interested in picking it up until they see what happens in these other cases.”

To contact the reporter on this story: Matthew Bultman at mbultman@correspondent.bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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