Tuesday, July 05, 2011

Prometheus v. Mayo Coming Soon Again at the Supreme Court : Patentability of Stepped Natural Phenomena: Does the Federal Circuit Understand the Precedent in Bilski?

The U.S. Supreme Court on June 20, 2011 granted a writ of certiorari for the second time in the case of Prometheus v. Mayo, involving interpretation of the patentability of a diagnostic test that seeks to monopolize natural phenomena in a process of steps, as if that made a difference -- certainly not to us.

Whether you seek to patent natural phenomena singly or in a series of steps, to our way of thinking, you are still trying to patent natural phenomena, and, according to Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 (2010), this you can not do, at least, that is our interpretation of Bilski.

We wrote in length about Prometheus v. Mayo I in Did the Federal Circuit Misapply the Transformative Standard in Bilski in Prometheus Labs v. Mayo?, for which certiorari was subsequently granted by the Supremes, who vacated and remanded the decision for reconsideration by the Federal Circuit in light of the U.S. Supreme Court decision in Bilski v. Kappos, 130 S. Ct. 3218, 561 US __, 177 L. Ed. 2d 792 (2010) -- see our commentary.

Upon remand, the Federal Circuit in Prometheus v. Mayo II made essentially the same decision and arguments as it had in Prometheus v. Mayo I, showing that if anything had been learned from the Supreme Court decision in Bilski, it was most certainly not apparent in the second equally confused opinion, as the Federal Circuit held that:
" "The inventive nature of the claimed methods stems not from preemption of all use of these natural processes, but from the application of a natural phenomenon in a series of steps comprising particular methods of treatment." Slip. Op. at 15-16."
In layman's terms, this means for the case at hand that a drug is applied to a human being (the administration step) and then metabolites in the blood are measured (the determining step). These steps allegedly form the patentable "invention", which Prometheus claims to be a legitimate object of patentability, barring others from taking this same metabolite measure without committing patent infringement -- unless they pay Prometheus, of course.

Gee, we see it a bit differently. Is an altered human state a patentable transformation? In our view, the Federal Circuit does not understand the transformation test, thinking it applies to human beings. NOT. By that standard, a joke told could otherwise be patented, since it can lead to the transformation of humans into laughter and altered states of happy hormones (physically measurable). Would variants of that joke be patent infringement?

Frankly, the only thing that really appears to be "transformed" is the addition of cash to the Prometheus pocketbook.

The subject human beings remain who they were.

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