Commentary on Mayo v. Prometheus


On March 20, 2012, the U.S. Supreme Court issued a unanimous decision in Mayo Collaborative Services v. Prometheus Labs., Inc., reversing the Court of Appeals for the Federal Circuit, holding that the patented Prometheus claim methods were invalid as they pertained to ineligible subject matter. The issue before the Court was whether the claims did more than simply describe laws of nature. Justice Breyer wrote the Court’s decision and emphasized the specific question, “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?”  The underlying policy concern was whether such patents would inhibit  future innovation. As stated in the Court’s decision,

…there is a danger that granting patents that tie up their use will inhibit future innovation, a danger that becomes acute when a patented process is no more than a general instruction to “apply the natural law,”or otherwise forecloses more future invention than the underlying discovery could reasonably justify. The patent claims at issue implicate this concern.

In order to better understand the complexities of the Mayo Collaborative Services v. Prometheus Labs., Inc. decision, we have collected articles written by patent practitioners and Practice Center contributors about the case. Check out these fantastic case summaries and opinion pieces:

PharmaPatents: Justice Breyer Gets The Last Word And Invalidates Prometheus Personalized Medicine Claims – Courtenay Brinckerhoff provides a thorough summary of the decision in this article. She also shares a look back and a look ahead regarding patent eligibility and claims going beyond laws of nature.

IP Watchdog: Killing Industry: The Supreme Court Blows Mayo v. Prometheus – If the headline didn’t spell it out, Gene Quinn wrote a spirited opinion piece on the Supreme Court’s decision. Quinn dissects the decision and explains how, in his opinion, the Supreme Court got it wrong.

Patently-O: Mayo v. Prometheus: Natural Process + Known Elements = Normally No Patent – Dennis Crouch’s article elaborates on the Supreme Court’s decision issue by issue. He also provides the  text of the now invalidated Claim 1 of the Prometheus U.S. Patent No. 6,355,623.

CAFC Blog: Supreme Court Strikes Down Diagnostic Method Claims as Non-Patent-Eligible Subject Matter – Ryan Chirnomas wrote an a summary of the Supreme Court decision, detailed each issue addressed by the Court. He also discusses how the decision may be, “disturbing to many patent practitioners as well as those in the diagnostics industry,” and what the potential spill over the decision may be on other industries.

Stephen G. Kunin, Oblon Spivak: The Supreme Court Concludes That Prometheus’ Medical Diagnostic Procedure Preempts a Law of Nature – Steve Kunin, Partner at Oblon Spivak, Practice Center contributor, and frequent PLI faculty member, sent in an article he wrote that discusses the history of the case, provides a summary of the decision, and speculates on the potential negative impact of the decision.

Patent Docs: Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012) and Early Reaction to Supreme Court Decision in Mayo v. Prometheus – Our friends at the Patent Docs blog wrote 2 articles on the Supreme Court’s decision. The first article provides a summary of the decision, and the second article provides analysis from two organizations impacted by the decision –  each representing a different side of the issue.

One Response to “Commentary on Mayo v. Prometheus”

  1. Tom Brody says:

    Justice Breyer’s opinion is substantially garbled. First, please see the brief submitted by the US government, which characterized the issue as being more like PRINTED MATTER DOCTRINE, and less like 35 USC 101. The following documents the garbled statements in Justice Bryer’s opinion. First, the claims did NOT involve any “law of nature.” Any college biology major can tell you why metabolism or metabolic pathways is not a “law of nature.” For example, we know that laws of nature such as F=ma can be measured an ideal environment, e.g., a ball falling through a vacuum. But the concept of an “ideal metabolism” does not exist. Second, the opinion is garbled because it held that the claims required making a “correlation.” This is false. Laboratory researchers established the correlation. But medical doctors or lab technicians who use the Prometheus test do NOT make any correlation. They only tap into an existing correlation. Please also note that one of the briefs stated that the claims required that the person using the patent does this: “thinking.” But this is false. The claims do NOT require that any decision or thoughts be made, when the test results are provided. Third, the opinion is also garbled because it held that the claims claimed a “natural phenomenon.” This is false. Metabolism of a synthetic drug is no more a natural phenomenon than the following: An aluminum canoe floating down a river, crashing into a boulder, and sinking into the river. To conclude, the Prometheus case fits much more easily into an issue of printed matter (and it fits poorly into the issue of section 101). I have several years of college level teaching experience in biochemistry, e.g., from UC Berkeley. If Justice Breyer had been my student, and had handed in his Prometheus opinion as a term paper, I would have given Justice Bryer an “F.” Justice Breyer’s opinion gets an “F” because it is substantially mixed up and wrong. THIS IS NOT LEGAL ADVICE.

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