Mayo v. Prometheus – Some Observations and Opinions

by Ryan Alley on March 23, 2012

in General

Case No. 10-1150 (S.Ct. – Breyer)

Usually I focus here on Federal Circuit decisions. Supreme Court cases are well-covered elsewhere and often lack definite ramifications until the Federal Circuit or USPTO starts applying them, Mayo v. Prometheus included. So, while I address the case, this post is mostly scattershot thoughts and impressions on the Supreme Court’s subject matter eligibility jurisprudence as reflected by Prometheus, without many practitioner suggestions. Consume at your own risk.

Other & Better Voices
Firstly, there is already some great blog commentary on Prometheus. Check out Professor Michael Risch’s post on the case. Risch was cited in the opinion and critiques several interesting aspects of the Court’s reasoning. Kevin Noonan also has a very thorough post at Patent Docs. Dennis Crouch has a couple timely Patently-O posts with a boatload of community comments. And there are several other posts and viewpoints floating around the blogosphere.

General Impact
I thought the opinion started out narrowly drawn to the specific diagnostic methods at issue and seemed fairly reasonable in its limited analysis of the same. Reading on, the reasoning and rebuttals began to feel much broader and problematic for several areas beyond medicine. Additionally, because this is a unanimous opinion, I suspect the Court’s logic and approach to § 101 will manage to find broader application.

Judicial Exception Test
The touchstone of the Court’s analysis is that laws of nature (and presumably either of the other two judicial exceptions) cannot be claimed without a meaningfully limiting application of the law. Laws of nature include any physical correlation/property/phenomenon/effect, regardless of how narrow the field or how contrived its occurrence. Once the law of nature is identified in the claim, the remaining elements, in order to satisfy § 101, cannot be as generic as “apply it,” nor can they be “well-understood, routine, conventional activity already engaged in by the scientific community” or “when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” Here, the claimed administering step was both routine and too general, a mere audience-identifier required to observe the underlying law of nature – a thiopurine metabolite-drug effectiveness correlation. The opinion does not elaborate on what sort of step might have sufficed to limit the application of this law to a patent-eligible claim, except to agree that the rubber-curing process of Diehr possessed such sufficient application.

I think the Supreme Court’s test appears similar in some ways to the panel majority’s approach in Dealertrack, where the majority first extracted out a concept from the claim and then looked at the remainder of the claim to see if a specific enough application of this abstract idea was required by the claim. Consider any claim drafting lessons from that case?

Section 101 Policies
Around page 17, the opinion starts to get into some larger ideas and goals underlying the strict judicial exception test. Justice Breyer appears deeply concerned about the blocking effects of patents for future innovation. If a law of nature is discovered and all its applications generically claimed, nobody will be able to benefit from or improve upon the same. For example, Mayo’s infringing test is a blocked improvement over the asserted patent, and the asserted claims block “all processes that make use of the [claimed] correlations after measuring metabolites, including later discovered processes that measure metabolite levels in new ways.”

But some of Justice Breyer’s fears and examples look a little overstated. I’m not at all sure how much of an “improvement” Mayo’s test really was or whether measured metabolites could not be used in a different process in the future, as Justice Breyer asserts. Moreover, even if these examples are correct, why does the opinion not discuss cross-licensing as a potential solution to these problems? Further, the opinion’s concerns about over-claiming of a discovered law of nature blocking innovation are arguably already addressed by § 112. Where a patentee discovers a new law/property/correlation/effect/etc and generically over-claims every application of it, those claims will likely be invalid against future applications that were not enabled by the patentee, under § 112 (or maybe even the reverse doctrine of equivalents). For all the scholarship cited in the opinion, were none of the Merges’ articles identifying these solutions persuasive? This is perhaps the problem with having no dissent; nobody in a robe has neatly identified weaknesses in the opinion for us.

Workability and Avoidability of the Judicial Exception Test
A particular aspect of the policy concerns I think bears emphasizing is that the Court did not seem to care how specific or manufactured the discovered law was, but whether the claims clearly recited a limited application of the same. This is a red flag to me, because it puts applicants, examiners, and/or judges in the position of having to identify possible future applications of a discovered correlation in deciding if a claim monopolizes a new discovery. What if a short-sighted inventor discovers a very important and universal property but comprehends and discloses only a narrow aspect of the property and claims an application of that entire narrow aspect? To decide subject matter eligibility, does the inventor, Examiner, and/or judge have to figure out that the property is actually a much broader law such that the inventor has actually claimed only a narrow application of it? Do we just take the inventor’s disclosure as true on the entire extent of the law? Can applicants evade this rule by hiding the discovered property or phrasing it really broadly such that they seem to be claiming only a narrow aspect of it?

This aspect also seems to make opinion’s subject matter ineligibility stance easily translate to any other technology field where a discovered property/correlation/physical effect is incorporated into existing determination methods. I am thinking simulating, forecasting, and measuring methods are particularly susceptible. For example, the first person to discover that certain radioactive elements alter their decay rates based on impending solar flare activity might try to claim a method of predicting solar flares based on closely monitoring decay rates of these specific elements. Invalid claim due to claiming every application of the discovered property as stated, right? You can go on and on with examples like these – a method of predicting oil location based on a discovered vibration resonance in the oil detectable through conventional seismic monitoring; an updated method of calculating surface air temperatures that accounts for a discovered connection between monitoring atmospheric temperature and surface thermal radiation; a method of determining the likelihood of nuclear fuel damage based on a newly realized relationship between low-lying emergency power generators and high water conditions. . . anything that just generates a useful indication from conventional processes updated to account for a newly discovered law of nature. How much and what more do I have to add to such claims to save them? Recite them as machines? (Cybersource suggests even reciting a non-method will not work)

Down with M-o-T
The Supreme Court has now twice dismissed the machine-or-transformation test in favor of the judicial exception tests. The Prometheus opinion specifically finds the test inapplicable here because the recited “administering” step was merely audience-identifying and did not appropriately limit the use of the underlying metabolic correlation. How exactly, M-o-T is useable as a “clue” in the judicial exception test is not entirely clear.

No restraint on § 101
The opinion specifically declines to adopt the government’s position that § 101 issues should be reserved for claims that recite only laws of nature, instead plying §§ 102, 103, and 112 against claims reciting minimal applications of those laws. In the words of the Court, one cannot “substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.” I cannot understand what is meant by “established.”

Increase in Trade Secret Activity
A possible result of rigorous adoption of the Prometheus analysis is that innovators will keep their basic discoveries of material properties, biological reactions, physical interactions, etc. as trade secrets instead of seeking patent protection over tweaks to existing processes based on these discoveries. That’s not to say that these discoveries will never be pursued or disclosed; rather, such disclosure will likely just be delayed until the innovator has a machine or limited process that exploits the property in a valuable way.

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