Scott Nyman

A new patent litigation case is about to be heard by the Supreme Court that may have a greater impact on the patent landscape than the recently passed America Invents Act. On December 7, 2011, the Supreme Court will hear the case of Mayo Collaborative Services v. Prometheus Labs., Inc, Supreme Court No. 10-1150.

According to filings with the Supreme Court:

This case concerns whether a patentee can monopolize basic, natural biological relationships. The Court has twice granted certiorari on the question presented, without yet resolving the issue.  Last year, it granted certiorari, vacated, and remanded in this case to allow the Federal Circuit to reconsider this question in light of Bilski v. Kappos, 130 S. Ct. 3218 (2010).  And seven years ago it granted certiorari but dismissed the writ as improvidently granted in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124, 135 (2006), because petitioner there had not adequately preserved the question.

The question presented is:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.”

The Mayo Clinic is arguing that the patent-at-issue basically involves the administration of a chemical substance to a patient and observing the patients metabolite level as his or her body is affected by the chemical. But, there is a catch. Prometheus does not claim the chemical administered to the patient, or the test used to measure the metabolite levels. Apparently, the patent is just for making a correlation between the chemical and the metabolite level to determine that it may indicate something. As a disclaimer, I have not thoroughly reviewed the patent to confirm its actual scope.

Patent trolls, or “non-practicing entities” in the terms of the Supreme Court, typically rely on these broad and potentially unenforceable patents to harass judgments out of their opponents. These trolls are aware that defending a claim of patent infringement often requires a large investment of time and capital, which often rewards the trolls with a quick nuisance settlement from the defendant.

The Mayo Clinic, along with a laundry list of others that have been on the defendant side of an infringement allegationf for a broad method claim, is hoping that SCOTUS will put an end to using these broad method patents as the basis of trolling litigation. If the bar for enforcing such sweeping subject matter for patents is restricted, so may be the use (or abuse, depending of your views) of these patents by non-practicing entities.

With this, I’ll leave you with a few excerpts from the recent (and hardly clarifying) discussion in Bilski v. Kappos, 130 s. Ct 3218 (2010), our best current view on the state of patent law.

The Court’s precedents provide three specific exceptions to § 101′s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” Chakrabarty, supra, at 309, 100 S.Ct. 2204. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years. See Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853). The concepts covered by these exceptions are “part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

…

The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. (Citations omitted.)

…

It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

Perhaps with this new opinion, the high court will give us a little more insight for determining that balance.

Read more:

Democrat and Chronicle

Patent Baristas

TacticalIP – Pharmaceutically Speaking Series