Reflections on Denial of Cert in Athena Diagnostics

“If the Supreme Court does not function as intended in the Constitution, and has in fact transformed the structure of our government from three co-equal branches of government to two co-equal branches governed by the Supreme Court, what do we do?” was at the JP Morgan Healthcare Conference when I learned a week ago that the Supreme Court of the United States (SCOTUS) had denied Athena Diagnostic’s Petition for Certiorari. I was shocked. We feel the same when as a child we discover there is no Santa Claus—a trusted institution is not as represented. SCOTUS ignored a recommendation from the U.S. Solicitor General in the strongly worded Vanda opinion that the Court’s opinions had veered away from Congress’ law; a desperate plea from the U.S. Court of Appeals for the Federal Circuit that it needed better guidance and thinks the law is on the wrong path; 11 thoughtful amicus briefs; and Athena’s petition. The Court was also referred to my law review article with Anthony Prosser “Unconstitutional Application of 35 U.S.C. 101 by the U.S. Supreme Court” based on almost a year of legal research. During the month after final briefing in Athena and after the U.S. Solicitor’s opinion, we saw a significant uptick in downloads of our article (cited in the amicus brief to the Court I co-authored with Meredith Addy of AddyHart on behalf of Freenome and New Cures for Cancers)—over 30 downloads during the holiday season and prior to the Court’s conference on January 10, when most IP practitioners are otherwise distracted, providing an unconfirmable assumption that the Court was reading it. All to no avail.

So, what did we learn?

  1. The Supreme Court does not care about the wording of Congress’ statutes (or at least patent statutes), and applies accepted statutory construction principles only when convenient to the holding.
  2. The Supreme Court does not care about legislative intent.
  3. The Supreme Court considers itself above Congress, instead of a co-equal branch.
  4. The Constitution may be a historic document in a museum instead of the highest law controlling a carefully balanced tripartite government.

Where Do We Go From Here?

If the Supreme Court does not function as intended in the Constitution, and has in fact transformed the structure of our government from three co-equal branches of government to two co-equal branches governed by the Supreme Court, what do we do? Do we just settle in and say this problem is too big for a solution? Or do we consider options?

Term Limits for Supreme Court

When the Constitution was ratified in 1788, the life expectancy was 35-40 years. Therefore, when the framers wrote in Art. III, Sec. 1 that “The judicial Power of the United States shall be vested in one Supreme Court” and that the Justices “shall hold their Offices during good Behavior”, they could not have imagined a life expectancy that would reach 100 years or more.

A survey of the first Supreme Court Justices indicated that most served for less than 10 years (John Jay, 6 years, resigned; James Wilson, 9 years, died; John Rutledge 0.5 years, resigned; William Cushing 2 years, died; John Blair, 6 years, resigned; James Iredell, 9 years, died; William Patterson, 13 years, died; Samuel Chase, 15 years, died; and Thomas Johnson, 163 days, resigned). The exception was George Washington’s nephew, Bushrod Washington, who served for 31 years and died on the Court (and he has a dubious legacy as the head of an organization trying to send all freed slaves back to Africa).

Recent Justices are serving far longer than the average of their historic counterparts. Currently, for example, Justice Ginsburg, born in 1933, at 86 has served for 26 years. Justice Breyer, born in 1938, at 81 has served 25 years and Justice Thomas, born in 1948, at 71 has served 28 years.

The pattern is clear. As life expectancy has increased dramatically, the effect of a life tenure has changed. And Justices are more often quite comfortable wanting to serve until they die or are incapacitated, a time frame which is growing on a yearly basis, resulting in a situation that renders it increasingly difficult to get fresh ideas and modern expertise on the Court. I doubt that was what the framers intended or what is best for the country.

Justice Ginsburg graduated from Cornell with a B.A. in government in 1954, about the same time that Watson and Crick discovered the structure of DNA. Justice Breyer graduated with a degree from Stanford in Philosophy in 1959, two years before ibuprofen was invented, and Justice Thomas graduated with an A.B. from College of the Holy Cross in 1971 in English literature, the year the measles, mumps and rubella (MMR) vaccine was licensed for use by Merck. And while Justice Thomas is credited as a constitutional originalist who follows the literal wording of the Constitution, of course, that couldn’t possibly be true because he wrote the Myriad decision, which the public doesn’t understand.

Supreme Court term limits would be political party neutral, because no one can predict who will be President when the term limit expires, and it would increase modern ideas, knowledge and fresh views. Unfortunately, it would take a Constitutional amendment to impose term limits on Justices, even if their salary and benefits are guaranteed for life to prevent potential conflicts of interest of future employment.

Specialist Supreme Court

The Constitution in Article II, Section 2, gives the President the Power to appoint Justices of the Supreme Court, subject to the advice and consent of the Senate. Would it be possible for the President to create a specialist IP Supreme Court panel and appoint specialist Supreme Court Justices who actually have scientific degrees and preferably corporate experience and who thus would have first-hand familiarity with the real-world difficulty and time involved in creating inventions and the cost of translating them into products? Would it be possible for the President to indicate that this panel of specialist Supreme Court Justices hear and decide all patent cases? It would take legal research to determine whether this is a possibility, but if so, it is intriguing. Of course, Congress has already created the specialist U.S. Court of Appeals for the Federal Circuit; however, the Athena denial shows how well that alone works unless also matched with a specialty Supreme Court panel. The Supreme People’s Court (SPC) in China established a specialist IP Tribunal in January 2019 and decisions made by it can be regarded as final decisions by the SPC. China is appointing impressive scientifically qualified and patent trained expert judges, so they are ahead of us in this area. (And this is of course not to say that one can’t be a thoughtful specialist IP Judge without such qualifications—with the excellent example of former CAFC Chief Judge Michel). Of course, the U.S. Supreme Court, which now considers itself superior to the other two branches of the U.S. government, could counter a specialist Supreme Court panel by simply refusing it on any ground it cares to.

Congressional Amendment to 101

In 2019, the revived Senate Judiciary Subcommittee on IP held three days of hearings on amendments to Section 101 to overrule the unauthorized Supreme Court case law on patent eligibility, and I appreciated the opportunity to testify. We applaud the efforts of Senators Thom Tillis (R-NC) and Chris Coons (D-DE) to fix 101. The Subcommittee has been earnestly working with a group of stakeholders to consider textual changes. My understanding is that the Senate Committee would be receptive to compromise language among stakeholders, but that the stakeholders can’t agree. If that continues, the stakeholders will have to share blame for the problem, and this blog and other press should start to name names. One hold-up is mixing in changes to Section 112 with changes to 101. Any progress should start with 101 only, which is a big enough problem, and then proceed to discuss other sections as necessary in a separate proposed bill.

Congress must act decisively and strongly to reclaim its co-equal status with the Supreme Court. Congress should also consider the “Shadow of the Leader” problem—if the Supreme Court doesn’t care about the wording of Congressional statutes or legislative intent, why should the lower courts? By the way, the Senate Judiciary Committee does indeed have a Subcommittee on the Constitution—what is it doing?

What can we do as citizens? Each person who cares about these issues should (i) contact their Senators and urge support for the Tillis/Coons initiative and (ii) seek out the stakeholders speaking with the Subcommittee to demand reasonable compromises for suitable language for an amendment.

In final, I was left at the JPM Healthcare Conference wondering how many business development meetings with personal diagnostic companies, universities and research institutions were turned on their head Monday after hope vanished and the reality sunk in that their impressive inventions would not be protectable in the United States. It was also a dark day for cancer patients, as well as brilliant U.S. inventors, and emerging companies and universities with great dreams to change healthcare. And it was a dark day for those who had to accept the reality that their High School Civics textbook was wrong (at least currently).

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Copyright: gustavofrazao 


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Join the Discussion

24 comments so far.

  • [Avatar for Anon]
    January 22, 2020 06:17 pm

    Mr. Cole,

    Yet again, you seek to play the “Supreme Court is not bad” gambit, and once again, I am obliged to correct your propensity to admire the naked emperor.

    Do you need that link to the PatentDocs discussion in which I thought that you had finally seen the error of your ways?

  • [Avatar for Paul Cole]
    Paul Cole
    January 22, 2020 04:49 pm

    Wouldn’t it be a good idea to figure out what the relevant SCOTUS cases really decided before throwing up our hands in despair? For example, with the utmost respect to Judge Linn in Ariosa, a decent advocate in that case could have driven a 32-ton semi-trailer truck between the facts in Mayo and those in Ariosa, and to say that Mayo was a decisive authority binding the courts in Ariosa and Athena was utter nonsense. But advocates have to get better at explaining the underlying scientific facts and the law to the courts.

  • [Avatar for Anon]
    January 22, 2020 04:33 pm


    One (major) problem with your view: the logic thereof applies to EVERY field of endeavor touched by patents, and if followed, would question why we even have a patent system at all.

    Your position boils down to: “innovation is bad because it may unsettle things.”

    That — on its face — is simply an untenable non-starter of a position.

  • [Avatar for Gwen Corcoran]
    Gwen Corcoran
    January 22, 2020 02:21 pm

    Okay, this may seem like a minor nitpicking point, but it is actually relevant to the underpinnings of the discussion of term limits, so bear with me here for a minute.

    The article states (under Term Limits For Supreme Court) that the life expectancy when the Constitution was ratified in 1788 was 35-40 years. That’s actually life expectancy *at birth* – while the source I found(1) only starts in 1850, life expectancy at birth in 1850 for white males was 38, but at age 10 it jumps to 58. The 35-40 year stat is reflective of infant mortality rates far more than actual adult lifespans. While I couldn’t find any comparable data for earlier than 1850, nor for anywhere outside the US, I found another source(2) that gives a wide variety of data for life expectancy *at birth* for a number of countries, which had data for the UK going back to the 1500s. That source shows that, at least in the UK (or what would become the UK), life expectancy at birth between 1788 and 1850 only changed by about 3 years, so I feel reasonably justified using the 1850 data for the US.

    Looking at the very first Supreme Court justices, then – for one, the high rate of early resignations sort of obfuscates the point about life expectancy (as does the note about Bushrod Washington that seems to try to write him off based on a non-SCOTUS-related point), so I looked at what the remaining life expectancies for all those justices would have been as of 1788, using the data from (1) with the age of each in 1788 (and interpolating some for intermediate ages).

    John Jay, age 43, expected to live about another 25 years (and actually lived another 35); James Wilson, age 46, 22-25 years expected; John Rutledge, age 49, 22 more years expected; William Cushing, age 56, 15-19 expected; John Blair, age 46, 22-25 expected; James Iredell, age 37, ~32 expected; William Patterson, age 43, 25 expected; Samuel Chase, age 47, ~24 expected; Thomas Johnson, age 46, 22-25 expected; and Bushrod Washington, age 26, 30-34 expected. (Note that, aside from Bushrod Washington, every single one of them was at or above the asserted 35-40 year life expectancy.)

    Also, of the ten justices immediately after Bushrod Washington? Alfred Moore resigned after a bit under four years, and Robert Trimble died after a bit over two years, but the other eight all served terms ranging from 14 to 34 years. The one in two resignation rate of the first set also stops with Alfred Moore, and resignation becomes significantly rarer.

    So… the argument about life expectancy and expected terms of service really falls apart in light of that.

    Mind, I absolutely agree that something has got to give with respect to SCOTUS, on so many fronts – but if you’re going to make arguments like this, base them on robust underlying data, because this one simply isn’t.

    (2) (under Life Expectancy Has Improved Globally – note that this page does not separate out infant mortality like the other one does)

  • [Avatar for angry dude]
    angry dude
    January 22, 2020 01:52 pm


    The current VERY SORRY state of US Patent System wasn’t brought upon us by financial or healthcare industries – they just took advantage of it like many other bad actors (e.g. infringers of Bunch-o-Balloons patents)

    The patent crisis lies solely within “BIG TECH” SV corporate boardrooms (aka “don’t be evil” Google) where all present patent legislation was planned, written down and financed all the way to Congress, SCOTUS, CAFC, PTO, PTAB etc

    That is the root cause of the problem and until that root cause is eradicated 230-year old US Patent System is as good as DEAD

    BUT… the root cause WILL be eradicated and soon

    There are entities out there which are much bigger and much more powerful than all of the combined wealth and power of Apple, Google, Amazon, Facebook, Dell, Cisco, MS etc (and btw don’t pay too much attention to their current stock valuations – they are all fake)

    Those entities are called “countries” – big countries like China or Russia with unlimited resources (China does not have much natural resources but it has unlimited human resources with over a billion population)

    China will eat USA with all of its “big tech” for breakfast soon

  • [Avatar for Jam]
    January 22, 2020 12:46 pm

    Seems like all three branches are paralyzed by the fear that “fixing 101” will create another financial crisis and worsen the ever-present healthcare crisis. Alice, for all its quirks, can be argued to have prevented another financial crisis (i.e., preventing too big to fail banks from getting sued over “bad patents”). Further, the unpatentability of medical diagnostics can be argued to be keeping healthcare prices down.

    Giving small inventors (of “good” or “bad” patents) the power to sue and get injunctions against banks and healthcare providers doesn’t sound like a very attractive way to bring stability to the healthcare and financial industries at first glance. In other words, one can argue that Washington has decided to trade for chaos in the patent system to bring stability to the financial and healthcare industries.

    Until a reasonable argument can be made that fixing 101 will help fix the healthcare crisis and help stabilize the financial industry, do not expect much movement from Congress or the courts.

  • [Avatar for angry dude]
    angry dude
    January 21, 2020 08:05 pm

    Paul Morinville @3

    “We can start with Google, Facebook, Amazon, Microsoft, Apple, Cisco, Dell and the rest of the Big Tech oligopoly. They don’t want patents because they don’t want competition.”

    Sure the want patents – they want their OWN sh1tty, obvious and not enabled patents to bully smaller creative companies just in case they get sued for patent infringement by one of them
    That’s why they hate NPEs (aka patent trolls) so much – those do not have much to lose except for patents themselves

    PTAB should look into BIG TECH sh1tty patents and invalidate like 95% of them for lack of actual inventive contribution
    I’d start with “Steve Jobs” patent – but who’s gonna pay for this public service?

    Oh well, to the morgue

  • [Avatar for Concerned]
    January 21, 2020 01:25 pm

    Curious @14:

    I000% agree. Yet my examiner is arguing that it must improve the hardware.

    And Trading Tech must have been denied by such as Trading Tech asked for cert on that very question. The premise is illogical on the surface.

    BTW: We argued and continue to argue BASCOM to no avail.

  • [Avatar for Anon]
    January 21, 2020 01:08 pm


    Schein is but one shear in the Kavanaugh Scissors.

    However, for the Court to use those scissors, they need be interested in granting cert.

    That plainly seems to not be in the picture.

    THIS though should be brought full force to Sen. Tillis and company.

  • [Avatar for Pro Say]
    Pro Say
    January 21, 2020 11:31 am


  • [Avatar for Curious]
    January 21, 2020 11:12 am

    where did the lower courts even get that computer implemented inventions HAVE TO improve the computer’s hardware?
    There isn’t a requirement. Software-based innovations and improvement to the usability of existing computer technology is patentable. See Finjan, Data Engine Tech, and Core Wireless. Improving an existing technological process is also patent eligible. See Bascom. While there are some decisions that mention computer hardware, I don’t recall seeing any decision stating that an improvement can only be to computer hardware.

  • [Avatar for angry dude]
    angry dude
    January 21, 2020 10:12 am

    The only way to challenge SCOTUS is to take something away from them based on their own decision:

    Like in 2005’s Kelo vs City of New London SCOTUS decision they decided to let corporation take a house from a private citizen (via proxies in municipal government)

    Then, in New Hampshire, various libertarian activists, in response to the decision, sought to use eminent domain to seize Justice David Souter’s farmhouse in Weare, New Hampshire and build the “Lost Liberty Hotel” on the site

    Unfortunately, none of the SCOTUS members have US patents

    To the morgue then…

  • [Avatar for Anon]
    January 21, 2020 09:00 am

    I dare say that expecting the CAFC to do anything meaningful in 101 is even more of a pipe dream than expecting Congress to act.

    Let’s not forget that often it takes several fits, starts and stops to have Congress chug into action (even when that chugging is at the ‘voi€e$’ of juristic persons — and yes, read that as captured by the monied voices of the likes of Big Tech).

    One thing that would go a long way to changing my mind is if the CAFC actually had a chief judge with leadership capability. Miss Prost is not that leader. Perhaps when (if) the leadership ever rotates to O’Malley, I may become more optimistic.

  • [Avatar for Kirk Hartung]
    Kirk Hartung
    January 21, 2020 08:55 am

    Schein is perhaps the simplest and most straight forward fix to the 101 mess:
    no judicial exceptions to Congressional statutes. While Schein only considered one Act of Congress (the Federal Arbitration Act), which would the SCOTUS rationale not apply to the Patent Act, too, and eliminate the judicially created exceptions to 101?

  • [Avatar for EG]
    January 21, 2020 08:36 am

    Hey Concerned,

    A valid point to raise. In my opinion, the problem is the current Chief Judge (Prost) who I view as weak. As I noted, only once in the Limelight remand did Prost cobble together a 10-0 en banc opinion that accepted the challenge from SCOTUS. If there was a stronger Chief Judge like Markey, Michel, or Rader (and a Federal Circuit composed of more pro-patent judges like Newman), they would have forced their colleagues to push back against this blatant overreach by SCOTUS. Again, the Federal Circuit needs to get some spine. That SCOTUS has opined to the contrary in other areas of law hasn’t stopped other District or Circuit Court judges from “screaming” about SCOTUS articulating vague and, in the instance of two Ten Commandments cases that came out differently on similar facts. In regard to the later, consider Newdow v. U.S. Congress (2005 DC Cal.) where Senior District Court Judge Karlton make the following remarks in footnote 22:

    “This court would be less than candid if it did not
    acknowledge that it is relieved that, by virtue of the disposition above, it need not attempt to apply the Supreme Court’s recently articulated distinction between those governmental activities which
    endorse religion, and are thus prohibited, and those which acknowledge the Nation’s asserted religious heritage, and thus are permitted. As last terms cases, McCreary County v. ACLU, 125 S.Ct. 2722, 2005 WL 1498988 (2005) and Van Orden v. Perry, 125 S.Ct. 2854, 2005 WL 1500276 (2005) demonstrate, the distinction is utterly standardless, and ultimate resolution depends of the shifting, subjective sensibilities of any five members of the High Court, leaving those of us who work in the vineyard without guidance. Moreover, because the doctrine is inherently a boundaryless slippery slope, any conclusion might pass muster. It might be remembered that it was only a little more than one hundred ago that the Supreme Court of this nation declared without hesitation, after reviewing the history of religion in this country, that “this
    is a Christian nation.” Church of the Holy Trinity v. United States, 143 U.S. 457, 471 (1892). As preposterous as it might seem, given the lack of boundaries, a case could be made for substituting “under Christ” for “under God” in the pledge, thus marginalizing not only atheists and agnostics, as the present form of the Pledge does, but also Jews, Muslims, Buddhists, Confucians, Sikhs, Hindus, and other religious adherents who, not only are citizens of this nation, but in fact reside in this judicial district.”

    Please note that I’m a Christian, but I do endorse Karlton’s view that the First Amendment does not require adoption of a particular faith or any faith at all. Even, the Religious Free Exercise Clause says “freedom of,” not as atheist’s suggest, “freedom from” religion. What that particular clause was directed at was avoiding another “Church of England” in the USA where failure to adopt as one’s personal faith that sanctioned by the State could cause serious consequences, including disenfranchisement from being able to vote, hold property, etc. Also contrary to a popularly held belief, former IP lawyers like me (I’ve now been blissfully retired for 5 months after a wonderful 42 year career in IP law, primarily as a prosecuting patent attorney which I enjoyed very much for both the law and the science) do know something about those “other areas of the law,” including Constitutional Law.

  • [Avatar for Concerned]
    January 21, 2020 07:05 am


    Good points and perhaps challenging SCOTUS would work.

    Yet how do you explain the Federal Circuit’s contrary actions regarding the “practical application” approach by the USPTO Director? The Director’s approach seems consistent with SCOTUS’ view that claims with a “new and useful” end are patentable even with abstract ideas.

    And where did the lower courts even get that computer implemented inventions HAVE TO improve the computer’s hardware? Was this cert by Trading Tech also passed on by SCOTUS last week, I could not tell.

    I’m not sure the lower courts even know where they stand to get anyone to blink except if the lower courts were standing in front of the mirror themselves. But it would be nice if a miracle happened and the lower courts challenged SCOTUS.

  • [Avatar for angry dude]
    angry dude
    January 21, 2020 06:51 am

    From eBay Inc. v. MercExchange SCOTUS decision (2006):

    “For example, some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so”

    They LIED !!!

    The SCOTUS lied all the way from 2006 to 2020 (and before)

    Liars in black robes…

  • [Avatar for EG]
    January 21, 2020 05:38 am


    I’m as heartbroken as you are by this denial by Our Judicial Mount Olympus, but not surprised. They are frankly too arrogant and cowardly to admit they’ve overreached with this nonsensical doctrine of “implicit exceptions” in 101. And I share your disdain for them so ruling by Judicial Fiat.

    Expecting Congress to fix this mess in 101 is a pipedream, given the current political climate in Congress. What the Federal Circuit needs to do is get some spine and challenge SCOTUS to explain why their recent ruling in the Schein does not undermine this “implicit exceptions” doctrine in 101. The Federal Circuit did this once before in the recent Limelight case when SCOTUS dared them to rule that “whoever” in 271(a) means there can be multiple infringing actors. And SCOTUS “blinked” then when the Federal Circuit so rule 10-0, including Linn who had previously held to the contrary. The Federal Circuit should do it again with this “implicit exceptions” doctrine in 101 and dare SCOTUS to “put up or shut up.” I see no other way to confront SCOTUS with the fact they’ve grossly overreached in this area of patent law jurisprudence.

  • [Avatar for anonymous]
    January 20, 2020 11:31 pm

    Who are these “stakeholders”? Name them. We need to know who has a seat at the bargaining table with Congress.

  • [Avatar for angry dude]
    angry dude
    January 20, 2020 10:04 pm

    The doc said “to the morgue” – to the morgue it is!

  • [Avatar for Pro Say]
    Pro Say
    January 20, 2020 07:13 pm

    The year is 2020.

    Welcome to the dark ages of American innovation.

  • [Avatar for Paul Morinville]
    Paul Morinville
    January 20, 2020 06:27 pm

    “One hold-up is mixing in changes to Section 112 with changes to 101. Any progress should start with 101 only, which is a big enough problem, and then proceed to discuss other sections as necessary in a separate proposed bill.”


    “the Senate Committee would be receptive to compromise language among stakeholders, but that the stakeholders can’t agree. If that continues, the stakeholders will have to share blame for the problem, and this blog and other press should start to name names. ”

    We can start with Google, Facebook, Amazon, Microsoft, Apple, Cisco, Dell and the rest of the Big Tech oligopoly. They don’t want patents because they don’t want competition.

  • [Avatar for Concerned]
    January 20, 2020 06:01 pm

    There is no Santa Claus? Tell that to SV!

    And the insubordination does not stop at SCOTUS. The insubordination to authority is up and down the ladder. Everyone is advancing holdings that reflect their personal opinions or agenda. There is no rule of law.

    One attorney on this site said that he would not approve my patent application even though he readily admitted in the same sentence his view was not consistent with patent law.

    Patent examiners advancing unsubstantiated arguments that possibly cannot be substantiated, the arguments are too illogical on the surface. Really…routine, conventional and well understood when nobody on Earth, not one person, does the inventive concept?

    And there you are.

  • [Avatar for Appearance of ...]
    Appearance of …
    January 20, 2020 05:59 pm

    Other countries, such as Canada, limit the ability of their Supreme Courts to modify Federal laws. A new constitutional amendment, perhaps?