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.
