Mayo v. Prometheus

The memorable line from the KSR oral arguments was Justice Scalia’s criticism of Federal Circuit precedent as “gobbledygook.” 

The Court heard oral arguments today in Mayo v. Prometheus.  The best one-liner from oral arguments comes from Justice Breyer.  As you might expect, Justice Breyer’s statement is not as colorful as Justice Scalia’s, but it is likely more accurate.

JUSTICE BREYER: If you look at the Court’s cases, they seem to say Flook, one thing, and Diehr another thing.

Justice Breyer’s statement highlights a central problem of modern patentable subject matter doctrine — that the quartet of leading decisions contradict one another. The court failed to move the ball in its 2010 Bilski decision and instead simply stated that the proper path is to follow these cases.

  • We’ll be posting a more complete discussion of the oral arguments tomorrow.
  • Read the transcript (draft).

34 thoughts on “Mayo v. Prometheus

  1. Non Sequitur : “His point was that the law regarding patentable subject matter isn’t clear and Bilski didn’t fix it. ”

    Okay let’s assume for the sake of argument that is the point Dennis was making.

    I would still say he is wrong because the law is very clear for all that agree with it and want to accept it. Therefore Bilski did not need to “fix it”.

    But the key words are “agree” and “accept”. Perhaps Dennis, like MM, Ned and 6, does not accept the Diehr doctrine.

    Certainly the Court itself was bitterly split on the issue. Even in the oral arguments today you see Mayo ignoring Diehr and using Flook and Benson to make their points. Some justices, like Scalia are openly troubled by that while others seem quite at home acting like Diehr does not control.

    When all we have to do here is apply the Diehr Concept and Application Test
    ( DCAT) and this case, indeed all 101 cases will be solved in the snap of a finger.

    This Court needs to speak with a clear and firm voice and say once and for all Flook was overruled by Diehr and Benson is largely irrelevant.

    This Court needs to reiterate its strong statement in Bilski and say ” What we said at Bilski 14, means exactly what we said!

    “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    That means:

    NO ignoring, dissecting, or removing any step from a process. Claims as a whole means claims as whole PERIOD.

    NO subjective , murk,y messy preemption that is really dissection.

    NO bringing 102 OR 103 into 101.

    Stevens was wrong!

    Douglas was wrong!

    The Diehr majority RIGHT!

    After all that’s what the Supreme Court is supposed to do. Make the tough decisions even if it pissses off half the folks in the country.

    No one is going to vote them out of office for it.

    The other justices can’t fire them for it.

    So come on guys and gals. Grow some hair on your chests and make a strong decision.

    If you really want to roll back the clock on Diehr then just do it!

    If not then flip the flinger to the rest of the anti patent crowd and keep moving forward.

    All of this wishy washy , political game playing with patent law just wastes everyones time and keeps the anti patent forces riled up and full of their dishonest gamesmanship.

    Meanwhile us Actual Inventors have to work for a living and plan for the future.

    We need to know what the law is and what it’s gonna be for the foreseeable future.

  2. Except it is Diehr that controls.

    Everyone knows that (even Dennis).”

    Yes but not everyone can admit it.

  3. EG:” In my opinion, the assertion by Mayo that Prometheus’ claimed method was “preemptive” didn’t hold water, and the questioning by the Justices showed that.”

    AI: Agreed.

    EG: Also, I predicted that the effort of Mayo and the other “naysayers” to rely on Justice Breyer’s dissent in LabCorp v. Metabolite might come back to haunt them. See the following from the oral argument which suggests this could happen:MR. SHAPIRO: No, it wouldn’t. That would be LabCorp, where there was just one malady in the patent; it was a vitamin deficiency with a natural correlation. And Justice Breyer’s opinion explained that — that is too preemptive of the natural phenomenon. JUSTICE BREYER: Yeah, but what my opinion lacked, frankly, and sometimes that’s the virtue of a dissent in such a case, it lacked — and Novartis points this out very well in their brief — it lacked an explanation as to why what I thought was a patent just
    said, observe the correlation -MR.SHAPIRO: Yes. JUSTICE BREYER: — why isn’t that an application of the law of nature? And if you look to LabCorp’s dissent to find an answer to that question, you are better than I, because I couldn’t find it.”

    Yes, I read that and laughed heartily as I was reminded of how MM, 6, Ned and all the anti patent crowd was wet with excitement and frothing at the mouth from citing LabCorp’s dissent and bragging how Breyer and Steven’s were going to smack down business methods, software and all sorts of non sense.

    Now look what a difference a year makes. Steven’s long gone, and Breyer is even backing away from his own words.

    It’s been a great year !!!!

  4. Ned, you can call me all the names you want. And sling all the insults you desire.

    But one thing you will never be able to do is beat me on the case law and the facts.

    Face it, you, or should we say, your position has suffered badly this year.

    And yes, just to gloat and throw it in your face here are all the victories again!

    Business Methods upheld as statutory subject matter!!

    Diehr remains controlling case law!!!

    Flook and Benson cabined by Diehr!!!!

    MOT Struck down as the sole test!!!!!

    CAFC applies the DCAT!!!!!

    Actual Inventors win!!!!!!!!!!!!

    We always win :-D

  5. “If no one invented anything, how could you be an actual inventor?”

    I never said such a thing. So either you honestly misunderstood, in which case the decent thing to do is apologize, or your are intentionally being a Mooney.

    The most important thing is this. Bilski made it clear that

    Diehr controls.

    Flook was wrong.

    And Benson irrelevant.

    This case should be decided on what Diehr had to say,

    and that will be the peace.

  6. Are you intentionally being dense?

    If no one invented anything, how could you be an actual inventor?

    Or we could say if no one started a business, there would be no engineers.

    Or we could say that if there were no engineers, there would be no businesses.

    Or we could say that if there were no workers, there would be no economy.

    PS: without you, I’m still working. Because I have already chosen not to work with people like you.

  7. …or the assumption that because he wrote it, that it must make sense, must be right or consistent with well understood rules…

    You may know the risks of assumptions, but you need to APPLY what you know.

    These threads (and even some of Dennis’s published works) are replete with the good professor’s lack of ability to not conflate. It is not a matter of focusing on every word that matters (that is not what I said) – but at the same time, you do need to read what was said – even if you want to filter it in order to avoid that message simply being wrong for some mistake like ignoring “well understood rules.”

    It is this desire to filter combined with the lack of focus that propogates much nonsense on these boards.

    And don’t think I am being harsh on you to pick on you – you are merely an example of the sloppiness that infects from the greater “What-Ev” syndrome that recieves so much blog space here. So put this message into your wagon – no need to fight or argue with it.

  8. I appreciate your thoughts on focus, but my comment didn’t stop at the word “much.” I think the rest of the sentence provided important context, but I digress.

    Taking the whole post together, it didn’t seem like the word “contradict” was that important to the overall message. Also, if taken literally, it would be inconsistent with well understood rules regarding Supreme Court precedents. That didn’t seem right to me. Accordingly, I disregarded the word and assumed it wasn’t his point. (Yes, I know about the risk of assumptions)

    Perhaps, I missed the point or misinterpreted the point, but I find that focusing on every word is generally not that useful. That is especially true given the amount of time he probably spent writing it.

  9. I have do have Attorneys. The absolute best. And they serve me well. And as any successful entrepreneur will tell you, customers are the “most important thing” and the very reason for the existence of any business/profession. Further more your insults do nothing to demonstrate that you are an Actual Patent Attorney or know anything about the law.

  10. post I didn’t focus that much

    When you don’t focus that much, you tend not to see the points that people are making.

    Happens a lot with the empty wagon crowd – too busy pulling those emtpy wagons to hear what anyone else has got to say.

  11. When I read Dennis’ post I didn’t focus that much on the word “contradict.” His point was that the law regarding patentable subject matter isn’t clear and Bilski didn’t fix it. Diehr was the last case, so it obviously has the most weight. I agree that “contradict” was not the right word.

  12. EG From what I read of the transcript of the oral argument, Sotomayor, Kennedy, Scalia, and yes, even Breyer, seem to understand the distinction. But the Chief Justice apparently doesn’t.

    If the Chief Justice doesn’t “understand the distinction”, then why would he ask this question:

    CHIEF JUSTICE ROBERTS: I was just going to say, what is the great advantage you see of putting this critical question off until the 102, 103 analysis, rather than cutting it off at the beginning, 101

    Seems to me that he understands the distinction perfectly.

    Tell me, EG: can one obtain a valid patent merely by adding a step of “thinking a new thought” to an old, unpatentable method? The US government says no, in crystal clear terms. None of the Justices disagreed with the US government, at least not at the oral argument.

    It’s a yes or no question. Of course, if you’d explain your answer clearly that would be appreciated.

  13. Let me qualify my prior statement about the Justices “getting the distinction between patent-eligibility under 35 USC 101 and patentability under 35 USC 102/103.” From what I read of the transcript of the oral argument, Sotomayor, Kennedy, Scalia, and yes, even Breyer, seem to understand the distinction. But the Chief Justice apparently doesn’t.

    The even bigger problem with the Chief Justice is that he appears to see patent-eligibility under 35 USC 101 as summary judgment tool. Right, patent-eligibility under 35 USC 101, which so far has no apparent objective standard set forth by SCOTUS in Bilski, a summary judgment tool. Frankly, I was perplexed by Roberts after his concurring opinion in eBay, and I’m even more perplexed by his inability to get this fundamental distinction between patent-eligibility under 35 USC 101, and patentability under 35 USC 102/103 correct.

  14. if not for us Actual Inventors, no one, and I mean no one in the patent community would have a job.

    To think, all these years people have been saying it’s the other way around.

  15. Yeah – we’d all be homeless without you. What an ego! You forget that most of us “Actual Attorneys” are also engineers. I’m pretty sure I’d have a job without you. It might not be the same job I have now, but I’d have a job. Stop trying to elevate yourself at the expense of another profession.

    Also, your post shows your ignorance, and proves that you need an “Actual Attorney” when it comes to sifting through case law.

  16. Corporations want to patent things that are plainly not patentable, and they have lots of money to achieve their goals. The result is patent law that is self contradictory. It gets even more so when lawyers play word games trying to reconcile inherently contradictory rulings. As a programmer, I can tell you that the kinds of things you grant patents on is appalling, and clearly nobody involved in the process has a clue about how computers work. I presume that the law in other areas is as messed up or worse. The word play needs to stop. At least go back to what the law actually *says* not the weird interpretations you have put on it. Actually talk to people “skilled in the art.” Better yet, just give up on patents altogether. All of the examples that people give about how patents help innovation are so seriously flawed that a reasonable person *must* conclude that patents are uniformly bad.

  17. It seems like now is the perfect time to file a patent application patenting the correlation between overbroad patents being issued and the increasing costs to the industry, and the end user. Also, file a patent on the correlation between pure math and many of the business, software, etc patents currently being filed.

  18. Conflation under the LabCorp Dissent Wannabes are crying with the post by EG.

    Perhaps somehow the post can be tied to a political leaning and thusly discredited…?

    Nah. That would be sheer poppycock.

  19. What was interesting to me was that the Justices jumped on Shapiro from the outset about the claimed method being “preemptive.” In my opinion, the assertion by Mayo that Prometheus’ claimed method was “preemptive” didn’t hold water, and the questioning by the Justices showed that.

    Also, I predicted that the effort of Mayo and the other “naysayers” to rely on Justice Breyer’s dissent in LabCorp v. Metabolite might come back to haunt them. See the following from the oral argument which suggests this could happen:

    MR. SHAPIRO: No, it wouldn’t. That would be LabCorp, where there was just one malady in the patent; it was a vitamin deficiency with a natural correlation. And Justice Breyer’s opinion explained that — that is too preemptive of the natural phenomenon.

    JUSTICE BREYER: Yeah, but what my opinion lacked, frankly, and sometimes that’s the virtue of a dissent in such a case, it lacked — and Novartis points this out very well in their brief — it lacked an explanation as to why what I thought was a patent just
    said, observe the correlation -MR.

    SHAPIRO: Yes.

    JUSTICE BREYER: — why isn’t that an application of the law of nature? And if you look to LabCorp’s dissent to find an answer to that question, you are better than I, because I couldn’t find it.

    The one “good thing” I saw is that the Justices appear to be getting the distinction between patent-eligibility under 35 USC 101 and patentability under 35 USC 102/103. That was a huge issue in the Bilski case as shown by the oral argument transcript from that case (especially a passage involving the Chief Justice, as I recall).

  20. “Bilski didn’t change that fact.”

    Right, Bilski did not change it. Bilski confirmed it. The point was that Dennis seemed to misstate the fact about Diehr cabining Flook and Benson. Bilski at page 14 fully determined that fact as I had pointed it out for years before on this blog. There use to be 600 comment threads with MM, 6, and others implying or outright claiming Diehr did no such thing.

    Then Bilski came down and set all them straight, just like I predicted it would.

    So yeah it is a bit disconcerting to see the blog owner be cavalier in the handling of this well settled doctrine.

    As an Actual Inventor I feel compelled to point it out.

  21. and Diehr another thing but Flook correctly interprets the law

    Except it is Diehr that controls.

    Everyone knows that (even Dennis).

  22. Justice Breyer rightly points out that Flook says one thing and Diehr another thing but Flook correctly interprets the law. In courts facts are more important they in fact mould the law.

  23. 6, Shapiro started off talking about preemption and breadth, and ended that way. I don’t think the Supreme Court followed his argument and I don’t think it was clearly made, ever.

    I thought the patent owner made a good counter in that all they were preempting was the specific ranges claimed –

    Shapiro did say that the claims preempted use for a lot of different diseases, but again, I don’t understand why. The argument was very unclear.

    Shapiro would have done his client a lot of good simply by letting the Government lawyer speak. Now, at least his argument could be understood.

  24. Malcolm, I will repeat what I said in another thread: The Director should immediately order reexamination of the patent based on this record. The government has declared the claims at bar to lack novelty over the admitted prior art. That should be enough to summarily revoke the claim in a reexamination that could be completed in record time, including appeals, so that the issue may be presented to the Federal Circuit in months, not years, assuming an appeal, so that the patent owner can clear the cloud on his title.

  25. General: You’re going to threaten thousands of patents!

    Breyer: Nah, they’re composition of matter patents.

    General: But brosky they’re method patents.

    Breyer: They don’t have to be.

    Bazow. And lulz.

    Man I also had to lol at how badly the oral arguments appear to have gone, you’ve either got a lot of typos in the transcript or something because the attorneys were talking jibberish on like 5 occasions it seems.

  26. AI,

    Dennis is leader of the shills.

    Why do you think he gives them soooo many 101 threads?

    He knows full well the arguments posted about Bilksi 11, Bilski 14, the AIA, statutory construction, yada yada, yet he also writes articles on the conflation of 101 with other parts of the law, as if it is sooo difficult to understand that conflation in law is baaaad.

    He is also a conflationist.

    But I don’t blame him – look at the mileage he gets out of these threads (yes, yes, the 60%-30% rule applies that 60% come from the empty wagon corwd and 30% are directly to refute the empty wagon crowd), but, man, look at the thread comment counts!

  27. I don’t see your point. Diehr limited Benson and Flook. What does that have to do with Bilski? Bilski didn’t change that fact.

  28. ” Justice Breyer’s statement highlights a central problem of modern patentable subject matter doctrine — that the quartet of leading decisions contradict one another. The court failed to move the ball in its 2010 Bilski decision and instead simply stated that the proper path is to follow these cases.”

    Dennis you are wrong.

    The Court in Bilski did NOT state nor imply that “the proper path is to follow these cases.”

    This would mean that Benson and Flook were equal to Diehr and non contradictory as the Court said today. Instead the Court on page 14 in Bilski said:

    “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    Note the word ” LIMITED” emphasis added. That means limited! Cabined, if you will!!

    Those cases ( Benson, and Flook) are not independent and don’t mean everything they did when first ruled on before Diehr.

    I know you may not like being corrected by an Actual Inventor, non lawyer, but if not for us Actual Inventors, no one, and I mean no one in the patent community would have a job.

    Please, never forget that.

  29. you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects

    Maybe Dennis or someone can call Mr. Verilli and ask Mr. Verilli to explain why he believes that his statement to the Supreme Court is true. Is there some case law on point that Mr. Verilli is relying on? Or maybe some case law and old-fashioned logic? I’d just like to know where he was coming from.

    Or maybe someone can ask Mr. Shapiro. You would think he might have focused a bit more on this statement. After all, Prometheus did get a patent on exactly that kind of claim. And yet we are told that one cannot do that. Curious.

  30. Those oral arg transcripts are something else. I tell you it always amazes me how badly the oral arguments usually start off by going down some irrelevant tangent.

    Then, later though they tell something that is very interesting about this case, apparently Prom has 8 patents on this, and it is by having all of those that Mayo feels like they have preempted the field. A situation which I have been loath to address in my own writings and I am rather on the fence about.

  31. Just to be clear, Mr. Verilli represents the US government, not the USPTO. Nevertheless, his statement that Mayo is correct that you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects was the most interesting statement in the case.

    It’s the one moment in the case where the actual issue presented by Prometheus’ claims was stated in crystal clear terms that nobody, not even a Supreme Court judge, could fail to understand. And except for some frankly feeble attempts by Justice Breyer to flesh out the issue, all participants chose instead to dance around it.

  32. Thanks for the transcript, Dennis. The oral arguments seemed to me to be a complete waste of everyone’s time. For the most part the judges seemed clueless about the facts of the case (Sotamayor especially).

    Most disappointing to me is that, in a case where the presented claims were admittedly patentable only because of a recited mental step, the issue of the ineligibility of claims that protect mental processes (directly or effectively) was merely danced around. The term “mental” was used only three times during the entirety of the oral arguments.

    I think Mr. Shapiro (counsel for Mayo) did an absolutely terrible job of explaining the issues to the court.

    And then of course there was Mr. Verilli from the USPTO who was also not helpful but who at least made a couple interesting statements. This one in particular:

    Mayo is correct that you can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.

    So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?

    CHIEF JUSTICE ROBERTS: I was just going to say, what is the great advantage you see of putting this critical question off until the 102, 103 analysis, rather than cutting it off at the beginning, 101, which I understand your friend to say is very important because you don’t want people to have to pause terribly long to see if this is something they can do?

    GENERAL VERRILLI: As a practical matter, at the PTO, Mr. Chief Justice, it doesn’t make any difference, because the PTO examiner gets a patent application and answers every question, 101, 102, 103, 112, and makes a decision about all of them. So it’s not going to lead to any benefit at the PTO.

    So how was it, Mr. Verilli, that Prometheus got its patent? A patent that it’s been using to deplete a hospital of millions of dollars in attorney fees?

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