As many of you now understand, I’ve got many bones to pick with the reasoning in Breyer’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision*. See also A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*. But I may have found the ultimate “doozy” for why Breyer’s reasoning in the Mayo Collaborative Services opinion should be “hung, drawn, and quartered.” (And I wished I had discovered this faux pas earlier.)
For lack of a better word, I call this faux pas “selective precedent amnesia.” What I’m referring to is a paragraph from the Supreme Court’s 1981 case of Diamond v. Diehr (which held that a claimed rubber molding method using an Arrhenius equation was patent-eligible under 35 U.S.C. § 101). Or more appropriately, Breyer’s opinion in Mayo Collaborative Services repeatedly doing what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101.
This paragraph from Diehr says the following:
In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.
I’ve also underlined the “key” statements from the above quoted paragraph. Let me also say that, before Mayo Collaborative Services, this quoted paragraph from Diehr was binding precedent on the Supreme Court, and is also directly on point as to the patent-eligibility issue involved in Mayo Collaborative Services.
Do those underlined portions from the Diehr paragraph have a somewhat familiar ring relative to what was said in the Mayo Collaborative Services opinion? For example, we see the following statements in Mayo Collaborative Services:
“[T]he steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.”
“The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?”
“[T]o consider the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.”
“To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.”
“These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”
Trying to square the above noted statements from Mayo Collaborative Services (as well as the Mayo Collaborative Services opinion generally) with this quoted paragraph from Diehr defies all logic. Does the opinion in Mayo Collaborative Services simply overlook such binding precedent that is directly on point? It does not, but instead dissipates what this quoted paragraph from Diehr stands for by scattering portions of it throughout the opinion in Mayo Collaborative Services, rather than considering what this paragraph collectively says “as a whole. Most significantly, Mayo Collaborative Services neglects to even fully quote the first crucial sentence from this paragraph in Diehr.
As I said above, you could attribute what happened here to “selective precedent amnesia.” But frankly such mishandling of binding Supreme Court precedent in Mayo Collaborative Services is a huge problem. (As one commentator has astutely noted, we now have Supreme Court precedent going off in two diametrically opposed directions on essentially the same patent-eligibility issue.) Any persuasiveness (or balance) in the opinion in Mayo Collaborative Services is greatly undermined by failing to directly (and fairly) address this paragraph from Diehr. Indeed, if a patent attorney like me had glossed over this quoted paragraph from Diehr collectively said in my brief, even the judges from the Federal Circuit would have let me know it in spades.
*© 2012 Eric W. Guttag. Posted March 28, 2012 on IPWatchdog.com