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« USPTO Posts Comments on Proposed Fees Changes | Main | Early Reaction to Supreme Court Decision in Mayo v. Prometheus »

March 20, 2012


The reasoning underlying this decision, if one can call it reasoning, is shockingly and abysmally flawed. It's the judicial equivalent of ruling that the earth is flat and the sun revolves around it.

The Court cites prior decisions which recognize that all inventions embody natural scientific principles and caution that applying the law of nature exclusionary principle too broadly could eviscerate the patent law. Then it proceeds to do just that.

The Court finds that the correlation between the level of 6-thioguanine in a patient's blood and the likelihood that such level will prove ineffective or cause harm to be a LAW OF NATURE, just like the law of gravity and Einstein's famous equation, which it also cites. Imagine that! Under the Court's rationale, every bit of scientific information rises to the level of a natural law! 230 pmol of 6-thioguanine per 8x108red blood cells is too little. Natural law! 400 pmol of 6-thioguanine per 8x108red blood cells is too much. Natural law! Between 230 pmol and 400 pmol is just right. Natural law! We better rewrite our science textbooks. There must be millions of these "natural laws" that we’re not teaching our children.

The Court also violates the first principle of claim analysis -- the claim must be analyzed as a whole. Instead, the Court breaks claim 1 of the patent into bite-size pieces, each of which it can easily dismiss as merely conventional or discover that it's yet another LAW OF NATURE.

Is there any patent that's safe from this analysis? Perhaps product patents are safe. But is there any process claim out there that can't be reformulated as a "law of nature?" And if you can't do this for the whole claim, then just pick it apart, take out the "conventional steps" and reformulate the rest as “laws of nature."

However, going forward, patent practitioners would be wise to revisit this ruling when drafting claims to medical diagnostic methods.

Going forward? People have been predicting this outcome since LabCorp. What planet have you been living on?

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