Supreme Court Addresses Patent Eligibility Again in Mayo v. Prometheus

Posted Saturday, March 24, 2012.

The U.S. Supreme Court issued a patent opinion earlier this week in the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc. Supreme Court decisions on patent law are relatively rare, with the Court accepting about one case a year.

In this opinion, the Court addressed subject matter eligibility for the first time since the 2010 Bilski v. Kappos decision. You can read my summary of the Mayo v. Prometheus opinion here.

What Justice Breyer, writing for a unanimous court, ruled was that the Prometheus patent recited a law of nature among its process steps. Laws of nature are a category of “invention” long held ineligible for a patent. However, the Prometheus patent claims disclosed more than just the relationship of a particular drug in the bloodstream which would be efficacious. The claims included the steps of “administering” the drug and “determining” the level of the drug in the blood stream.

“Administering” and “determining” are process steps which, standing alone, are unquestionably patent eligible. Previously, when dealing with subject matter that might be construed as not patent eligible, the technique has been to tie that element to an element that is patent eligible, thus rendering the entire claim patent eligible.

A Beauregard claim is a good example. You can read more about Beauregard claims here, but in brief the concept is that for software claims which recite an algorithm which might otherwise be held patent-ineligible, embodying that algorithm in a non-transitory computer readable medium in the claim language takes the subject matter into the patent eligible category. An example of a non-transitory computer readable medium is a USB key. A USB key containing instructions implementing the algorithm is a physical object, and physical objects are patent eligible, therefore the claim would be patent eligible.

Prometheus did something similar, in taking a law of nature and embodying it in a process. But what Justice Breyer had to say about this was that we should look to 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?”

(As a side note, purely as a patent practitioner who often works with patent examiners, it was interesting to read Justice Breyer’s opinion, looking at the opinion as a hypothetical Final Rejection Office Action from the examiner-in-chief. After all, the claim rejections of the Prometheus claims in this opinion are utterly final, so Justice Breyer in some sense is acting here as a patent examiner.)

In regards to the Prometheus steps surrounding the law of nature of “administering” and “determining,” Justice Breyer wrote, “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. For these reasons we believe that the steps are not sufficient to transform unpatentable natural correlations into patentable applications of those regularities.”

Ok, but “well understood, routine, conventional activity” sounds to me like the issue with the claims is novelty and non-obviousness, not patent eligibility. Indeed, upon looking at the prosecution history of the example claim at issue from the opinion (Claim 1 of 6,355,623), the examiner rejected the claim as obvious.

I wonder whether future decisions will hold that encoding an algorithm in a USB key will constitute “well understood, routine, conventional activity,” exposing a bevy of process claims reciting algorithms to subject matter eligibility questions that do not exist today.

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