One of the reasons that those knowledgeable about patent law get agitated when anti-patent forces criticize the patent system is because despite what they want to think it is not easy to obtain a patent. This should be self evident really if you stop and think about it. When was the last time in your own life that something valuable was easy to obtain? Has anything valuable ever just been handed over to you or fallen into your lap? Assuming that you were not born with a silver spoon in your mouth the answer is no. So why then are so many people willing to accept the utter nonsense of those who detest patents? Curious when you stop and think about it.
Unfortunately, the patent illiterate are not simply confined to the anti-patent community. Justices on the Supreme Court know so little about patent law it is near depressing that they actually have the authority to decide patent cases, which frankly Congress should put a stop to if you ask me. For at least now the Supreme Court does get to have the final, often incoherent word on patent matters in cases that they take. For example, in the recent 9-0 Mayo v. Prometheus decision Justice Breyer, writing for a unanimous Court, explained that the invention in question did not exhibit patent eligible subject matter because the steps in the claims were well known. If any patent law student anywhere in the country, at any law school in the country, wrote such a thing they would receive 0 points for that question and almost certainly fail the entire exam. The Supreme Court unquestionably made a grave and fundamental error, leaving it to the Patent Office and lower courts to figure out how it is possible to reconcile the ever growing list of irreconcilable patent precedents from the Supreme Court.
In Mayo v. Prometheus, Justice Breyer explained the Court would not accept the invitation of the government to address the patentability of the Prometheus claim by discretely analyzing the issues presented under 101, 102, 103 and 112. Instead the Court decided to wrap up the entirety of the patentability analysis under 101, circumventing the Statutory scheme. Breyer wrote:
These considerations lead us to decline the Government’s invitation to substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.
Frankly, it is not an “invitation” to analyze patentability under 101, 102, 103 and 112 — it is a mandate. So when Breyer and the Supremes say they are not taking the invitation of the government they are affirmatively and consciously deciding not to follow the statutorily prescribed, mandatory analysis. Whether Justice Breyer thinks it is far better to have a single inquiry rather than the sprawling inquiries mandated by 102, 103 and 112 is not supposed to be of any consequence. The fact that all 9 Judges blindly were willing to ignore the statutory scheme is disheartening to say the least.
Truthfully, the Supreme Court did make a grave and fundamental error. Having said that, we are not going to get anywhere saying that the Supreme Court was wrong, although they were. Too many district court judges will blindly follow the Supreme Court without a second thought, even though the Supreme Court’s analytical paradigm is contrary to the explicit terms of the Patent Act. The best hope will be to argue that the Supreme Court could not have meant what they literally said because it would contravene the Patent Act. Therefore, there must be something peculiar about the Prometheus claims that allowed the Supreme Court to technically adhere to the mandates of the Patent Act while still seemingly short-circuiting the appropriate analysis.
To identify what the Supreme Court must have meant we will need at least three reference points. Triangulating what the law is post Mayo v. Prometheus focus must be on this latest Supreme Court decision, the Patent Act and Diamond v. Diehr.
Is Diehr Overruled?
The question of whether the Supreme Court overruled Diamond v. Diehr is critical. On its face there seems to be no way to reconcile the decisions, but if Diehr is not overruled then it would offer an important clue. What is different about Diehr than Mayo v. Prometheus that would make one patentable and the other unpatentable? Discerning the difference becomes critical, but only if Diehr remains good law.
In Diehr, decided by the Supreme Court in 1981, the Court explained:
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.
The Supreme Court did not explicitly overrule Diehr. More specifically, neither the holding that the Diehr invention was patentable nor the statement it is is inappropriate to dissect patent claims when determining eligibility under Section 101. On its face it, therefore, seems impossible to reconcile Mayo v. Prometheus with Diamond v. Diehr. In Mayo the Supreme Court clearly dissected the claims in making a determination on patent eligibility under Section 101. So was Diamond v. Diehr implicitly overruled?
According to Justice O’Connor in Casey v. Planned Parenthood:
[W]hen this Court reexamines a prior holding, its judgment is customarily informed by a series of prudential and pragmatic considerations designed to test the consistency of overruling a prior decision with the ideal of the rule of law, and to gauge the respective costs of reaffirming and overruling a prior case. Thus, for example, we may ask whether the rule has proved to be intolerable simply in defying practical workability; whether the rule is subject to a kind of reliance that would lend a special hardship to the consequences of overruling and add inequity to the cost of repudiation; whether related principles of law have so far developed as to have left the old rule no more than a remnant of abandoned doctrine; or whether facts have so changed or come to be seen so differently, as to have robbed the old rule of significant application or justification.
None of the Casey announced departures from stare decisis fit for Mayo v. Prometheus. Furthermore, even if the Supreme Court wanted to overrule Diehr’s prohibition against dissecting claims it couldn’t. The above quoted language from Diehr relative to dissecting claims merely recognizes the reality of the Patent Statute that is enacted by Congress. The Supreme Court must follow the laws enacted by Congress unless they are unconstitutional. There was no claim in Mayo v. Prometheus that the statute (or any part of it) is unconstitutional, but yet the Supreme Court ignored the statute, ignored its own precedent and did exactly what prior Supreme Court precedent (and the laws of Congress) forbid. If the Supreme Court actually literally meant what they said in Mayo v. Prometheus it is 100% clear and completely inarguable — the Supreme Court erred.
Now the Patent Office and the courts have the unenviable task of trying to figure out what the Supreme Court really meant in Mayo v. Prometheus. If Diehr remains good law, which it clearly does, and Mayo v. Prometheus is good law, which it has to be as the last pronouncement, then it becomes clear that the proper statutory analysis is to go step by step through the statute analyzing patentability under the separate and distinct patentability requirements of 101, 102, 103 and 112. That is unless there is something that allows for the short-circuiting of the appropriate analysis as in Mayo v. Prometheus. What is that something?
There’s Something About Prometheus
First, did the Supreme Court really mean what they seem to have said in Mayo v. Prometheus? The answer has to be a resounding NO. The Supreme Court decision on its face seems to suggest that inquiry under 102, 103 and 112 is unnecessary because after you dissect the claims and eliminate conventional steps you are only left with a law of nature. Such an interpretation, however, flies directly in the face of both the Patent Act and Diamond v. Diehr, which still remains good law.
The language used by Justice Breyer is also peculiar: “decline the Government’s invitation to substitute §§102, 103, and 112 inquiries for the better established inquiry under §101.” That is a far cry really from saying that it is inappropriate to consider 102, 103 and 112. In fact, what Justice Breyer seems to be saying is that the Supreme Court declined the governments invitation to follow the mandated analysis in this case for some undefined reason. That makes a lot more sense both in terms of patent law and in terms of Supreme Court jurisprudence. Anyone familiar with the Supreme Court knows that the Court seems to relish making decisions without reason or rationale, merely kicking it back to the lower courts to figure out. So it seems relatively clear that the Supreme Court was saying that there is something peculiar about the Prometheus claims that allowed the Court to circumvent the required analysis and settle the issue using 101.
What is that something peculiar about the Prometheus claims?
If you read the Supreme Court decision in Mayo v. Prometheus I think you will be struck by how trivial the Supreme Court believed the conventional steps to be. It almost seems that the Supreme Court took judicial notice that the steps added to the natural law were well known and within the prior art, without actually engaging in a 102 or 103 analysis. That being the case, it seems that the Supreme Court asked whether the claims were directed to an invention in the first place, and came to the conclusion that there was no invention present. In this regard it seems like there is now a threshold inquiry embodied in 101 akin to the more detailed analysis under 112. Is this an invention in the first place? If the answer can be given without requirement to engage in the typical 102 and 103 analysis then it seems that a rejection under 101 for lack of patentable subject matter is appropriate.
What is missing from the Prometheus claims is an innovation. What is covered is a law of nature with extra-solution activity that does not impart any novelty, thus rendering the claims patent ineligible for lack of innovation. Therefore, to escape the snare of Mayo v. Prometheus there needs to be an innovation. Merely identifying a law of nature and adding conventional steps does not transform a law of nature into a patent eligible process. On the other hand, if you employ a law of nature and have non-conventional steps (i.e., calculations and measurements a la Diehr) then you have something that is patentable.
In time the Federal Circuit will moderate Mayo v. Prometheus, limiting it to the particular claims, which are characterized by steps so broad that they do not impart even the appearance of anything innovative. With that in mind it is probably a very good idea to incorporate enough specifics into these types of claims so that they at least on their face appear to be more than mere extra-solution activity thrown into the mix in an attempt to practically patent all uses of a particular law of nature.
Of course, this special category of cases where Section 101 can supplant the mandatory Statutory analysis under 102, 103 and 112 must be limited otherwise Section 101 would swallow the entirety of 102, 103 and 112. Therefore, only in the most egregious of circumstances where the Patent Office granted a patent on a law of nature plus insignificant extra-solution activity should Mayo v. Prometheus be relied upon by a district court to invalidate patent claims.
The argument needs to morph from what we know to be true, and is largely therapeutic I know. The Supreme Court just doesn’t understand patent issues and that is why Congress created the Federal Circuit in the early 1980s. You can catch more flies with honey than with vinegar, and we will have a better chance of moderating the horrendous decision in Mayo v. Prometheus if the argument is set out that the decision of the Supreme Court was correct, but the analysis was unfortunately short-circuited and rather non-illuminating with respect to facts not identical to the Prometheus claim set.