On the last day of June to the dismay of many, the Supreme Court denied cert in yet another Federal Circuit patent eligibility decision, American Axle. Many had been hopeful of a grant because the Court had requested the Solicitor General’s view on the petition. In May the SG provided comments favoring granting cert. A dispassionate viewer would probably not have been surprised by the denial since it’s not apparent how any new decision by the Supreme Court could result in consistency from the Federal Circuit. As Judge Albright noted in deciding Health Discovery Corp. v. Intel Corporation, 6:20-cv-666ADA (WD TX December 27, 2021), he found it difficult to extract a unified theory of Alice’s two steps from the Federal Circuit’s § jurisprudence. The function of a circuit court is to take a Supreme Court decision and derive theory of how one is to apply it. While different circuit court’s may arrive at different conclusions as to how a decision is to be applied, it is rare for a circuit court to be unable to be consistent in its application of the law as announced by the Supreme Court. Yet this is the position of the Federal Circuit. A situation hardly conducive to “furthering the progress of the useful arts.”
The situation is most clearly demonstrated by the Federal Circuit’s June 21, 2022, decision on rehearing in Novartis v. Accord Health Care, Inc., 21 F.4th 1362 (Fed. Cir. 2022), reversing both its own previous decision and that of the district. In the original 2 to 1 decision the Federal Circuit affirmed Judge Jordan of the 3rd Circuit’s decision sitting in the District of Delaware. The issue was whether there was written description in U.S.P. 9,187,405, as filed, for a negative limitation added by amendment in the patent claims to method of administering fingolimod. Judge Jordan and Circuit Judges O’Malley and Linn found sufficient written description with Chief Judge Moore dissenting. After Judge O’Malley left the court a request for rehearing was granted and Judge Hughes replaced Judge O’Malley and the new panel without pointing to any error in the original decision, simply disagreeing with their reading of the patent specification, reversed the original decision. Effectively two judges trumped the opinion of three judges and the Patent Office which allowed the amendment.
In the years since Alice the Federal Circuit has failed to arrive at a unified approach to patent eligibility, why should one expect another Supreme Court decision to bring order out of the chaos that is the Federal Circuit? The Federal Circuit likes to use the rubric different facts yield different results even where the fact patterns are similar as discussed by Judge Albright. Using this rubric, the Federal Circuit will thwart any effort at developing a coherent patent eligibility policy. Perhaps the only solution is to give the Patent Office substantive rulemaking authority to achieve some sense of predictability.