Today, the Supreme Court requested the views of the Solicitor General in its consideration of American Axle's certiorari petition, which asks the Court to reverse the Federal Circuit's decision in American Axle & Mfg. v. Neapco Holdings LLC. That decision is noteworthy on several grounds. It is an application of the Federal Circuit's fractured jurisprudence on subject matter eligibility under 35 U.S.C. § 101 to a traditionally patent-eligible subject matter -- a method of producing shaft assemblies in a driveline system for trucks having reduced vibration during use. The case was the occasion for the full Court to illustrate the deep divisions among the Judges, with half of them voting to rehear the case en banc and the other half refusing to do so. Moreover, the decision not to grant rehearing en banc was accompanied by several opinions from various combinations of the Judges concurring or dissenting from the decision. And those opinions (as well as Judge Moore's dissent from the panel opinion) contained sharp rhetoric regarding not only the panel decision but the pattern and scope of the Court's attempts to consistently and coherently explicate the broad principles enunciated by the Supreme Court in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International (which, to be fair, may itself have been a Herculean task).
It is foolhardy to speculate on why the Court asked these views, except noting that a sufficient number of the Justices felt it would be beneficial to their deliberations (regarding whether to grant certiorari) to hear what the Government has to say, in view of the Executive's role in granting patents. However, it is evidence that there are several consequences of this decision that should be borne in mind.
The most immediate consequence is that it gives the Biden administration a chance to provide the Court (and the rest of us) with insights into how the administration views patent law in general and eligibility in particular. This is an aspect that may very well be clearer depending on the administration's choice for U.S. Patent and Trademark Office Director, and how that individual responds to questions during confirmation hearing on these topics.
The time it takes to receive the SG's views (which can be a few to several months) will delay the Court's decision whether to grant certiorari until the October Term. This may result in the certiorari decision (and if granted the Court's decision on the merits) being decided by a differently constituted Court, should for example Justice Breyer decide (as has been suggested) to retire. A Justice Breyer retirement could be significant on this issue because he wrote the Mayo opinion (and before that a dissenting opinion on dismissal of certiorari in LabCorp v. Metabolite) and thus bears some responsibility for shaping the precedent the Federal Circuit (and district courts as well as the Office) have had such difficulty in consistently applying.
With regard to the certiorari decision itself, regardless of how the SG comes down on the question, if the Court does not grant it could indicate a continued unwillingness to address patent eligibility. If the Court does hear arguments on the merits, of course, at a minimum the Justices could provide clarity regarding the "super-enablement" requirement that at least one Federal Circuit judge believes the panel majority has injected into the eligibility question, and more broadly the Court could provide more clarity on the eligibility issue in reassessing (or at least restating more clearly) the metes and bounds of what is patent-eligible subject matter.
On the other hand, it is possible (although hopefully unlikely) that the Court could further muddy the issue, making eligibility even less predictable, more confusing, and less clear. While in the short term this would be unfortunate, it may raise the possibility that Congress would be able to enact meaningful reform of Section 101 -- something that certain legislators have been threatening for the last two years.
As has been the case for the past decade, a period during which the Court has denied certiorari on this issue more than fifty times, all we can do it wait.
