Before Alice, there was Mayo v Prometheus: In an ancient Greek myth, the Titan god Prometheus is chained to a mountain by the god of blacksmiths (Hephaestus/Vulcan). Why talk about ancient Greek myths? Because the story is not unlike the present patent eligibility mess created by the Supreme Court’s unfortunate, 2012, “Mayo Collaborative Services vs. Prometheus Laboratories, Inc.” holding. Unfortunately, the high-tech industry is Prometheus.
This case involved two medical diagnostics patents (6,355,623 and 6,680,302), in which SCOTUS held that patents that incorporate “laws of nature” may not be patent-eligible “unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations“.
Are there any inventions that don’t operate according to natural law? What else is a patent claim but a drafting effort designed to monopolize a particular invention? What exactly are “additional features” and “practical assurance” Here the Mayo v. Prometheus decision provides little or no guidance.
The decision’s use of “natural law”, as well as gratuitous citation of various examples from physics as well as medicine, is unfortunate for us scientifically trained types. This is because the three-dimensional nature of the universe, the forward direction of time, and everything else about the world are all based on laws of nature!
Thus unless read narrowly, this decision would produce an unconstitutional result (it would eliminate all patents, hence violating Article 1 section 8 of the constitution). So the ruling must be read narrowly, because the SCOTUS upholds the constitution and is never wrong, right?
What is worse, the Supreme Court then cited Mayo as a precedent for its later Alice ruling. Why be partially off the rails, when one can be totally off the rails?
I had hoped that this would get sorted out. The Federal Circuit is composed of judges, some of whom actually know something about laws of nature and patents. Their job is to clean up problems like this. I had hoped that they would “chain” the overly expansive Mayo v. Prometheus holding by various subsequent lower court holdings. They can’t totally overturn Mayo v. Prometheus, but they could have certainly brought some sense to it by nibbling away at the interpretation.
The Federal Circuit indeed made some attempts to do this, such as in the Rapid Litigation v. Cellzdirect case. However, taken as a whole, the various Federal Circuit decisions have been very mixed, and indeed self-contradictory. In short, the Federal Circut has not really done its job here.
The USPTO has also attempted to do some damage control, again with mixed results. The underlying problem is that they do not have enough legal clout.
A similar case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, is presently pending at the Supreme Court. Let us hope that SCOTUS takes it, and gets it right this time.