Part II – Mayo’s Brief Goes Back to A (Non-Precedential) Past

In my last post on Mayo v. Prometheus, I noted that Mayo is cutting a trail of (legal) tears to ultimately rely on the reasoning underlying the “LabCorp dissent” (548 U.S. 132, 136). In this dissent from a dismissal of cert. as improvidently granted, Justices Breyer, Souter and Stevens urged the Court to consider that all simple diagnostic tests that correlate a level of a chemical marker (like homocysteine) to a pathology (like a vitamin deficiency) were no more than an impermissible attempt to patent a natural phenomenon: “[T]he process is no more than an instruction to read some numbers in light of medical knowledge.”

Mayo relies heavily on the LabCorp dissent to support Part C of its argument that Prometheus’ metabolite level monitoring claims preempt all uses of a natural phenomenon – the correlation between the amount of drug administered and the metabolite levels that occur in the patient as a result of the treatment. “A second defect in Prometheus’ patents is that their administration and testing steps are ‘well known’ and ‘long prevalent in medical practice.” Mayo cites Flook and Bilski, but these decisions did not involve medical technology. Mayo continues: “Prometheus did not invent or make any contribution to either step. Nor was it the first to observe correlations between metabolite levels and dosage adjustments, a concept familiar to physicians for decades.” Pet. brief at 35-36. Apart from the fact that this is a 101/102 argument, Mayo still has not cited any case law. “Well known non-inventive steps cannot turn a natural phenomenon into patentable subject matter. See Morton v New York Eye Infirmary, 17 F. Cas. 879, 882-883 (S.D.N.Y. 1882).”

This troublesome early decision, in which the court denied William Morton et al. a patent for using ether to render patients insensible and unconscious of pain during surgery is characterized by Mayo thusly: “(denying patent for the process of anesthetizing patients with ether because ‘[t]he effect discovered was produced by old agents, operating by old means upon old subjects. The effect alone was new” and as a law of nature ‘is not patentable’)”. Pet. Brief at 36.

To begin with, this is a chimeric quotation from the decision – “and as a law of nature” is not taken from the decision. The court was not concerned with the patentability of a law of nature, but rather, whether or not rendering a patient unconscious with ether was an “art” apart from its ability to greatly improve surgical outcomes. The word “process” did not appear in what became section 101 at that time, and “art” was widely interpreted as requiring chemical transformation. “Art” was not broadly equated to “process” until Expanded Metal Co. v Bradford was decided in 1909 (214 U.S. 366). In the hornbook Choate on Patents (1973), the authors are clearly dismayed by the opinion. In footnote b., they write, “Could this discovery have been patented as a process if [the] discovery had been made after Section 101 of the 1952 patent statute had been enacted?”

The answer is almost certainly, “Yes”, although it bears mentioning that patents on “new uses of old compounds” have never been well-received by the PTO or the courts. The CCPA did not flat-out endorse this type of claim until In re Zierden, 411 F.2d 1325 (1969)(“[T]here is express statutory authority for a patent on a process which is a new use of a known process, composition of matter, or material.”)

Furthermore, Morton’s brief specification contained a central claim: “What we claim as our invention is the herein before described means by which we are enabled to effect the above highly important improvement in surgical operations, viz. by combining therewith the application of ether, or the vapor thereof, substantially as above specified.” Finally, Morton’s counsel did not make it easy for the court, since it noted that “The plaintiff’s counsel insists that the true reading of the claim, in the light of the preceding part of the specification is not that which asserts a combination of the discovery [of the use of ether] with surgical operations, but rather an application of the discovery to surgical operations by the means described [inhalation of ether vapor].”Id. at 883.  In other words, a modern patent attorney might have argued that the step of carrying out a surgical procedure should not have to be inserted into the claim.

It may simply have been the case that the Morton court, recognizing that it was known that inhaling ether got users (or abusers) high, simply did not want to grant a patent based on the new “utility” alone. There is somewhat judgmental language in the decision that suggests that inhalation of ether to reach “more or less stupefaction” was not novel. Id. At 882. However, even in 1882, “a new and useful improvement on any art” was patentable, so the court was wrong when it held that “[The invention] is nothing more, in the eye of the law, than the application of a well-known agent, by well-known means, to a new or more perfect use, which is not sufficient to support a patent.” Id.

Of course, that simply is not the law today even if, by some stretch of central claiming and arcane terminology, it was the law in 1862. For Mayo to suggest that the court felt that inhaling ether to get high or knock your patient “out” was a law of nature protests way to much. In other words, Mayo needed to insert “and as a law of nature” into the quote from the case, or they would simply be citing the case for its holding of lack of n0velty, which would do nothing to advance its 101 arguments. See para. 1 above. So is Mayo correct when it argues: “Well known non-inventive steps cannot turn a natural phenomenon into patentable subject matter?” You be the judge.

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One Response to Part II – Mayo’s Brief Goes Back to A (Non-Precedential) Past

  1. Pingback: Oral Argument in Mayo v. Prometheus – Why Mayo Will Lose - Patents4Life | Warren Woessner

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