This past summer, the Federal Circuit issued an en banc decision against rehearing in Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al. In the 7-5 decision, there were a staggering 8 separate opinions (four concurring and four dissenting). The common refrain in each was the need for the Supreme Court to address the binding precedent from Mayo.
On January 13, the Supreme Court denied that plea from the Federal Circuit by refusing to grant certiorari on the case.
This is not the only case in which the Supreme Court could have addressed §101, as it also declined to grant certiorari on both HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, which raised similar issues. However, it was viewed as the one most likely to be granted certiorari due to the direct plea from the Federal Circuit. In fact, the Solicitor General had even weighed in upon the Supreme Court’s request for views on Hikma, stating that the Court would be better served taking up the issue in Athena. As the Solicitor General emphasized, Athena’s petition “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.” The Court opted instead to deny both petitions.
With the Supreme Court’s declination to weigh in further, the Federal Circuit must place its hopes in the pending legislation in congress to reform subject matter eligibility under §101 and provide clarity to the ongoing situation.