Thursday, December 08, 2011

Mayo Collaborative Services v. Prometheus Laboratories Inc. : Comments on Oral Argument

At the ABA Journal, Debra Cassens Weiss reports that Justice Breyer Participates in Medical Patent Case After His Wife Quickly Sells Stock to ward off any potential challenge of conflict of interest. A subsidiary of the company Nestle had purchased Prometheus in July, but had not told the Supreme Court about that until this Tuesday.

Adam Liptak has the whole story at the New York Times in Supreme Court Hears Case on Patents for Individualized Medicine, writing:
"The Supreme Court on Wednesday considered a major patent case, one that asked whether observed correlations between drug dosages and medical treatment were subject to patent protection."
We have written several times about this case previously, most recently at Prometheus v. Mayo Coming Soon Again at the Supreme Court : Patentability of Stepped Natural Phenomena: Does the Federal Circuit Understand the Precedent in Bilski?

See that posting and the linked postings and sources for more information.

Read the transcript of the Supreme Court oral argument yesterday here.

From our point of view, the oral argument was extremely disappointing at all levels, because the Justices in our view do not really seem to understand the meaning of a "discovery" or an "invention" in the Constitutional sense, rather relying on what they call "hornbook law" conceptions of patentable subject matter rather than trying to apply the concept of patentability sensibly to modern developments.

Almost all scientific and medical progress is building on the shoulders of giants -- i.e. knowledge that previous humans acquired is learned by others and then is used by them to expand on that same knowledge, usually in a very predictable way and pursuant to what is called "the scientific method".

Under the mainstream concept of "science", there is always a mainstream-accepted empirical base of state-of-the-art facts which is always used to guide the direction of research, and the direction of that research is almost always quite predictable and obvious, often resulting in many competing labs working on similar research projects in given fields.

For a discovery or an invention NOT to be obvious, one should ask the question what makes ANY alleged invention or discovery "NOT obvious" given prior art as well as the current state-of-the-art in any field.

If that question would be asked, 90% of all patents would not be patentable subject matter, because almost NOTHING of modern life is a significant departure from the state-of-the-art in any field. EVERYTHING is obvious.

The "Transistor" is the best modern example of this phenomenon, as it is the fundamental building block of modern electronic devices.

Without transistors there could be no "digital revolution" -- and, indeed, there was none, for all of previous human history. Our modern digital world was enabled -- and obviously so -- once transistors were invented. Indeed, even transistors were the end-point of a logical process of miniaturization which was made possible by modern  improvements in the use of materials.

One obvious step followed -- and today still follows -- the next. That is the process of science AND medical advance.

It is NOT the case that one "non-obvious step" follows the next "non-obvious step", as the patent-granting world would have us believe. The non-obvious steps are the great exceptions in the history of technology.

Progress is predictable -- though the details have to be worked out, but they should not be patentable subject matter resulting in the grant of thousands of monopolies that HINDER the further obvious process of the development of the state-of-the-art.

That is where the great flaw in the current application of patent law is found.

Based on the questions leveled during oral argument yesterday, this case will also not offer much improvement for the status quo, because law precedents and legal decisionmaking by the courts work just the same as the scientific method -- i.e. there is seldom actually anything new under the sun, and all court decisions follow in the path of what has been done before.

As Carl Sandburg wrote in the year 1922 in the Rootabaga Stories:
" "The chimney sits on top of the house and lets the smoke out, the doorknobs open the doors, the windows are always either open or shut, we are always either upstairs or downstairs—everything is the same as it always was." "
And so, we think, it will be, when the decision in this case is handed down, for that was the tenor of oral argument, in which no great differences or "novel" approaches were found, and nothing was invented, and who is to say that is wrong?

Law is like true invention and discovery: NOVELTIES are seldom and everything is more or less "patently obvious", based on the existing state-of-the-art or the precedents in question. PATENTS should be as rare as LANDMARK decisions. Alas, that is not the case.

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