As we've written about multiple times, a petition for certiorari from the Federal Circuit's starkly divided decision in American Axle has been pending at the Supreme Court for some time (see here, here, and here). Many thought this would be the case in which the Supreme Court finally provided some clarification on Section 101. After all, the Federal Circuit split six-to-six in denying rehearing, with opinions stating the need for revisiting the Supreme Court's precedent. Well now the Supreme Court has finally acted, but perhaps not in the way many had hoped: it denied the petition this morning, perhaps signaling that the Federal Circuit will need to resolve the thorny 101 issues on its own en banc or Congress will need to act.
Although expectations were high for a cert. grant, the denial was not entirely a surprise. To be sure, the Supreme Court had called for the views of the Solicitor General in the case a year ago, which is usually a sign of at least some interest in the case at the Court. And when the Solicitor General finally filed her brief, she urged the Court to grant the petition. When the Solicitor General recommends a grant of certiorari, the Court almost always does so.
So why are we not surprised (or at least not shocked)? Well, two years ago the Supreme Court had a similar opportunity to clarify 101 in Hikma or Athena, and it declined. Like American Axle, the Court called for the views for the Solicitor General in Hikma. And while the Solicitor General didn't recommend granting in that case, the government said the Court's 101 standards needed clarification and identified another case (Athena) that the Court should review. At the time, the betting money would have expected a grant. Instead, the Court said no. We wondered then if the Court wanted to just take itself out of the 101 business (see our discussion here).
All of this begs the question of what happens next given the sharp division in the Federal Circuit on 101. It could be that the Supreme Court is just waiting for the right vehicle to address the issue. It didn't need to call for the views of the Solicitor General if it really was just opting out of 101 after denying cert. in Athena, which the Solicitor General said should have been granted two years ago. And while the propeller shaft manufacturing claims in American Axle involve a relatively accessible technology in the mechanical arts—like the gas pedal claims in KSR—the Court might have concluded that the mechanical arts are not where 101 guidance is really needed. There's some support for that kind of speculation—the Supreme Court could have denied cert. in its June 27 Order List but instead waited until the June 30 one. That suggests that someone in the Court may have been taking a second look at the petition.
Going forward, the truth is we don't know what the Supreme Court's appetite will be for these kinds of patent cases. Justices Kennedy and Breyer seemed particularly interested in patent cases. But now that they've retired, we don't know if the current Court will have that same affinity in the future.
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