Intellectual Property, Pages 658–659

Mayo Collaborative v. Prometheus Labs

Supreme Court of the United States, 2012

Facts:

Prometheus licensed two patents from a Canadian hospital which say how to deliver the right dosage of thiopurine drugs based on the concentration of thiopurine metabolites in the blood. It then sued Mayo for infringing on its patent.

Procedural History:

  • The district court held that the claims were unpatentable as natural phenomena.

  • The Federal Circuit reversed, finding that the claims were patentable because they both transformed the patient and involved transformations in measuring the metabolites.

  • The Supreme Court vacated the Circuit decision, saying that transformations were just an "important clue" to patentability.

  • The Federal Circuit again found the claims patentable.

Rule:

Laws of nature are not inherently protectable, but applying a law of nature or math to a known structure or process may be patentable. This involves more than just stating the law and saying "apply it."

Issue:

Did Prometheus's processes transform the underlying natural laws into patentable applications thereof?

Reasoning:

Patentability should not depend on how well-drafted the patent application is. Claims should not just preempt the use of a natural law. They should contain other elements in a combination called an "inventive concept" to ensure that it is more than the natural law itself. Just reciting a law and saying "apply it" does not make it patentable. Einstein and Archimedes could not have gotten patents for their physics discoveries by just telling people to use their formulas.

In Diehr, a similar case finding patentability, the claim was not just applying their formula. It consisted of monitoring the temperature inside a mold, feeding the numbers into a computer which used the formula to constantly calculate when the mold should open, and then having the computer signal a device to open the mold. The formula itself was not patentable, but the overall process of which it was just a step was.

Here, there are no additional steps. The claims effectively just claim the underlying laws of nature themselves.

Holding:

No, the claims just claim the underlying laws of nature without additional steps. Reversed.

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