Our patent world was fairly “rocked” last week by the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision* . Now that the dust is starting to settle (and hopefully the “verbal vitriol” being thrown is starting to subside), I’ve reflected more on what this decision means for the patent-eligibility of analytical and diagnostic method specifically, and the informed interpretation of patent law generally. What I see expressed by Breyer’s opinion in this case is both ominous and alarming. Frankly, for the past 5 or 6 years, I’ve witnessed “patent law despotism” and “patent hostility” being expressed by the Supreme Court like I haven’t seen since the 1970’s.
For those who have “cheered” Breyer’s opinion in Mayo Collaborative Services, the end result, the invalidation of Prometheus’ claimed drug dosage calibration method as patent-ineligible under 35 U.S.C. § 101, is the least bothersome to me. That Prometheus’ claimed method would satisfy 35 U.S.C. § 101 was problematical to me after the Supreme Court’s decision in Bilski v. Kappos based on the final “determining step” and the “wherein clauses” which inform you (indirectly) when the dosage of the administered thiopurine drug is too high or too low. What Prometheus’ claimed method needed to do was use the measured metabolite levels gained by the “determining step” and, as guided by the “wherein clauses,” to achieve a useful result. As Steve Hansen has kindly pointed out on this blog, Claims 1 and 13, respectively, of Prometheus’ related U.S. Pat. No. 6,987,097 do exactly that by stating that the drug dosage should be increased (if the metabolite levels measured are too low) or should be decreased (if the metabolite levels measured are too high). If Claims 1 and 13 of the ’097 patent can’t pass the “patent-eligibility” bar under 35 U.S.C. § 101, then I don’t know what method or process claim can.
For other articles on this important decision visit IPWatchdog: Mayo v. Prometheus
But what remains troubling to me is the nonsensical and logically flawed reasoning in Breyer’s opinion. What Breyer’s opinion tries to do is determine the “patent-eligibility” question under 35 U.S.C. § 101 in a vacuum, divorced from any consideration of the other relevant patent statutes such as 35 U.S.C. § 102, and especially 35 U.S.C. §§ 112 and 103. That’s what Breyer’s opinion essentially does when he dismisses the approach suggested by the U.S. Solicitor General which I, Professor Michael Risch, Chief Judge Rader, and many others believe is the only way you can make rational, logical, and objective determinations of what is or is not “patent-eligible” under 35 U.S.C. § 101. That’s also why the Flook case that Breyer’s opinion so heavily relies upon for precedential support is so logically flawed: (1) it forces you to treat previously unknown “laws” (or relationships) as if they’re part of the prior art; (2) it dissects the claim language to try to separate out the supposed “law of nature” from the rest of the claim context. When you employ either of these techniques with the claim, you do so in contravention of what 35 U.S.C. § 103 explicitly says (especially that the claimed invention should be considered “as a whole”), as well as what is implicit in 35 U.S.C. § 112, second paragraph (that the claim defines what the invention is). Put differently, unless you’re willingly to address the claimed invention in the context of all of the relevant patent statutes (which Breyer and his 8 Supreme Court colleagues appear to be unwilling to do), I would be just as objective determining patent-eligibility under 35 U.S.C. § 101 using a Ouija board.
What has also finally dawned on me is that using the “law of nature” approach is one of (if not the most) fatal logical flaws in Breyer’s opinion. I frankly find the whole “law of nature” reference in Breyer’s opinion to be inappropriate for evaluating Prometheus’ claimed method. We’re not talking about Einstein’s “theory of relativity” or Newton’s discovery of the “law of gravity”, to use Breyer’s hypotheticals. Instead, we’re talking about administering a specific man-made thiopurine drug, measuring the levels of metabolites generated (which only humans can do, even if they use instruments), and evaluating (with human insight) the measured metabolite levels to decide whether the drug dosage needs to be adjusted because it’s too high or too low. You may rightly fault how Prometheus’ claimed drug dosage calibration method was written (the “draftsman’s art” as Breyer disdainfully calls it). But doing so on the basis of this claimed method being essentially nothing more than a “law nature” in the guise of “routine, conventional activity” is totally unpersuasive and illogical reasoning to me.
In fact, and without getting into whether Prometheus’ claimed method is patentable under 35 U.S.C. §§ 102/103 (of which the U.S. Solicitor General raises some very reasonable “doubts”), this claimed method is also highly vulnerable to attack under 35 U.S.C. § 112, second paragraph, as not “particularly pointing and distinctly claiming” what the invention is. Prometheus’ claimed method, as written, is analogous to what we used to call improperly describing a machine as “so many elements in box,” but not saying how those elements are connected and/or function together. Admittedly, the crux of what is unique (if anything) in Prometheus’ claimed method is the specifically identified ranges in the “wherein clauses” telling you whether the drug dosage is too high or too low, but those specific ranges recited in the “wherein clauses” are simply a “theoretical” exercise unless you do something to convert those ranges (and based on measuring the actual level of metabolites generated) into a useful result as Claims 1 and 13 do in the ‘097 patent. In fact, I would be perfectly fine with describing Prometheus’ claimed method, as written, as being too “abstract” under 35 U.S.C. § 101 in view of Bilski, or “indefinite” in view of 35 U.S.C. § 112, second paragraph.
Instead, Breyer’s opinion drops the equivalent of an atomic bomb on Prometheus’s claimed method because he and his 8 colleagues are too patent law ignorant, too “patent hostile” (and frankly too arrogant) to use a targeted “smart” bomb that the U.S. Solicitor General and others suggested (i.e., consider 35 U.S.C. §§ 102, 103, and especially 112 first before diving into the 35 U.S.C. § 101 “quagmire”). Not only does Breyer’s opinion use the wrong weapon to invalidate Prometheus’ claimed method, but the choice of that “wrong weapon” also causes, as Kevin Noonan has correctly pointed out on Patent Docs, severe and unnecessary “collateral damage” to IP protection for other analytical and diagnostic methods, both existing and in the future. Even worse, Breyer’s opinion is so full of logical inconsistencies and conflicting statements that all we know is that Prometheus’ claimed method didn’t make the patent-eligibility grade. We “mere mortals” are left with absolutely no rational and understandable guidance by Breyer’s opinion as to how to determine what analytical and diagnostic methods might reach the patent-eligibility zone. Unfortunately, since at least 2007, the Supreme Court has burdened us “mere mortals” with this “no rational and understandable guidance” problem over and over again, starting with KSR International v. Teleflex, then Bilski, and now Mayo Collaborative Services. Our Judicial Mount Olympus frankly shirks its responsibility when it continues to hurl “thunderbolts” at the Federal Circuit in patent cases without ever trying to render some patent law “order” out of the “damage” caused.
Another astute point made by Kevin Noonan on Patent Docs that I totally agree with is that the current Supreme Court pays far too little credence to those having more informed and experienced views on what the patent law actually is, and how those laws should operate (i.e., be administrated). In particular, these 9 technologically-challenged and patent law-ignorant Justices in our “court of last” resort literally exert “veto power” over 30 years of Federal Circuit precedent, the court which was intended by Congress (back in 1982 when the Federal Circuit was created) to be the true arbiter of patent law jurisprudence. So much for considering what the Legislative Branch mandated. As also noted above, the current Supreme Court even ignores a very cogent suggestion from the U.S. Solicitor General that it might be a better approach to look at the other patent statutes (i.e., 35 U.S.C. §§ 102, 103, and especially § 112) before jumping into the patent-eligibility “quagmire” of 35 U.S.C. § 101. So much for listening to the thoughtful advice from the Executive Branch. Instead, the current Supreme Court deliberately chooses to be “deaf, dumb, and blind” to any informed patent law advice of others.
What is really sad (and appalling) about the current situation was that the Supreme Court did let the Federal Circuit carry out the role it was mandated by Congress in 1982 to do for about 25 years, up until around 2006 or 2007 (i.e., starting with the eBay and KSR International cases). Every once and awhile in those 25 years, the Supreme Court exerted some gentle (and appropriate) “correction” such as occurred in 2001 with Festo. But what we now have with this almost endless “vetoing” of Federal Circuit patent law decisions is, in effect, “patent law despotism” being exerted by the Supreme Court. If you won’t accept the jurisprudence of the court (the Federal Circuit) designated by Congress to be the prime arbiter of patent law, if you won’t listen to the Executive Branch (i.e., the U.S. Solicitor General) about what might be better approach to resolving patent claim validity, if you simply render decisions as if the patent statutes enacted by Congress (the Legislative Branch) don’t exist, then what else, pray tell, do we have?
In fact, the current Supreme Court brings back some very unpleasant memories from the 1970’s (i.e., the era of the Gottschalk v. Benson and Flook cases). Frankly, I haven’t seen a Supreme Court as “patent hostile” as this one is (and Justice Breyer is now the “new” Justice Douglas in terms of “patent hostility”) since that time. (I also know those who are “cheering” Breyer’s opinion will “mentally hyperventilate” at me suggesting that the current Supreme Court is “patent hostile.”) Fortunately, back in the 1970’s, Congress realized that this “hostile” patent law jurisprudence was having a damaging impact on promoting and encouraging American innovation, thus creating the Federal Circuit in 1982. Unfortunately for us now, Congress, as expressed in the AIA (the Abominable Inane Act) is starting to become as “patent hostile” as the current Supreme Court.
Frankly, the only hope we likely have to overcome this “patent law despotism” by the current Supreme Court is how resistant the current Federal Circuit is to being “vetoed” on patent law jurisprudence. Given what I’ve seen the Chief Judge say recently, I’m hopeful that Rader will lead to the charge to try to “cabin” decisions like Mayo Collaborative Services to lessen their illogical impact and avoid significant “collateral damage” to patent law jurisprudence. In other words, the Federal Circuit needs to engage in a “battle of attrition” to wear down this “patent law despotism” by the current Supreme Court, and thus render some “balance” and “logical order” in patent law jurisprudence authored by a court (the Federal Circuit) that was mandated by Congress to do so and, which knows (exponentially) far more about patent law then does 9 technologically-challenged and patent law-ignorant Justices.
The Federal Circuit can also win such a “battle of attrition.” The late Chief Judge Markey did so back in the 1980’s when he first led the Federal Circuit to “cabin” some of the more atrocious and illogical Supreme Court patent law decisions authored at least as far back as the 1950’s. The fact is the Supreme Court can’t take every single patent law decision by the Federal Circuit that they might disagree with. I also know this sounds “Machiavellian” to suggest the Federal Circuit could (and should do) pursue this course. But with the current Supreme Court exerting such unprincipled “patent law despotism,” we’re also now in a “battle for survival” to make sure our patent law jurisprudence is based on a logical, rational, and balanced, and especially an informed (not deliberately ignorant) interpretation of our patent statutes and case law precedent. Because the Federal Circuit was mandated by Congress in 1982 to be the prime arbiter of patent law jurisprudence, the Federal Circuit is in by far the best position to retard, minimize, and control (gently, tactfully and over time) the impact of such Supreme Court “patent law despotism.”
Those supporting the reasoning in Breyer’s opinion repeatedly “crow” that Mayo Collaborative Services was a 9-0 decision. But the fact that 9 technologically-challenged Justices reached a unanimous decision based on nonsensical, as well as logically and legally-flawed, reasoning does not impress me, or persuade me. That those 9 Justices simply chose to “trounce” the Federal Circuit’s decision without leaving any understandable guidance in its place for us “mere mortals,” chose to deliberately ignore a thoughtful suggestion from the U.S. Solicitor General, and simply determined patent-eligibility under 35 U.S.C. § 101 in a vacuum divorced from any consideration of the relevant context of other patent statutes just makes Breyer’s opinion result-driven and despotic. Such “patent law despotism” does not earn my respect, only my scorn.
*© 2012 Eric W. Guttag. Posted March 26, 2012 on IPWatchdog.com