Patent lawyers are clever draftsman and even the novice patent prosecutor quickly learns how to write a claim to make a simple invention seem like the work of an engineering genius and well-deserving of patent protection.
The Supreme Court’s most recent patent law decision, Mayo Collaborative Services v. Prometheus Labs Inc., limits the scope of the intellectual subject matter that is eligible for patent protection under 35 U.S.C. § 101. As a result, Prometheus has not been warmly received by the patent bar. For example, the case has been the subject of a five-part-tirade guest post on the prominent patent law blog Patently O.
Many in the field have argued that the Supreme Court’s opinion gives as much guidance as the court’s “I know it when I see it” obscenity jurisprudence. While we would admit that Prometheus is not as coldly analytical as most patent lawyers are used to, we think it provides fresh insights into the jurisprudence of patent law and ample guidance for lower courts and practitioners.
If patent lawyers are passionate about anything, it is a passion for clear, predictable analysis. Courts have meted out the elements of every theory of patent infringement and every statutory defense. They have enumerated “factors” for every equitable consideration and set forth rigid rules for compensable damages.
However, Section 101 has flouted rigorous interpretation. One would never think the term “Bill of Rights” would be thrown around in a pejorative sense. Before Prometheus was decided, the Federal Circuit, in a 2012 case MySpace Inc. v. GraphOn Corp., analogized 35 U.S.C. § 101 to the Bill of Rights of patent law. However, in the same breath, the court called the statute a “swamp of verbiage” and a “murky morass” and instructed lower courts to only consider Section 101 as a last resort after considering all of the other avenues for invalidating a patent.
The court compared judging a Section 101 case to a wine tasting. Wine tasters “have an abundance of adjectives — earthy, fruity, grassy, nutty, tart, woody, to name just a few — but picking and choosing in a given circumstance which ones apply and in what combination depends less on the assumed content of the words than on the taste of the tongue pronouncing them.” Section 101 is spurned (and almost feared) by the field as the stuff of civil rights lawyers, as policy, politics and rhetoric take precedence over more traditional legal analysis.
The reason for this fear is the primacy patent law has historically placed on the patent claim. Patents begin with a detailed description of the invention, but they end with patent claims. Claims are the absolute measure of patent rights; they define, enumerate and circumscribe the patentee’s right to exclude. Every word in a claim is deemed to be material, and patent lawyers, with their penchant for analytics, are willing to seize on any and all of them to make their case. Patent cases can turn on the meaning of words like “a” and “the.” The bar’s difficulty with Prometheus is that the decision requires looking beyond the language of the claims and determining the true essence of the invention.
Prometheus is not the “swamp of verbiage” that some in the patent bar believe it to be. For example, the court’s opinion is clear in one fundamental respect. The Section 101 “analysis” is not a slave to the patent claim. It transcends the claim in order to fulfill the role of gatekeeper for patentable subject matter.
Prometheus begins with black letter principles. Laws of nature, natural phenomena, and abstract ideas are not patentable. These items are “part of the storehouse of knowledge of all men … free to all men and reserved exclusively to none.” Therefore, for example, Einstein’s theory of relativity, the Pythagorean Theorem and the other universal truths should not never be owned by anyone. The problem with this notion is that it has always been difficult to apply. Patent lawyers are clever draftsman and even the novice patent prosecutor quickly learns how to write a claim to make a simple invention seem like the work of an engineering genius and well-deserving of patent protection.
Recognizing this, the court in Prometheus set forth an analysis that looks behind the claim to determine if the invention is really just directed to laws of nature, natural phenomena or abstract ideas. The court’s analysis can be analogized to distillation. The court first distilled away any laws of nature, natural phenomena, or abstract ideas found in the claims and then looked at what was left behind and determined if the invention was truly patentable.
The invention in Prometheus was directed to a method of determining the effective dosage of a certain drug. The claim required administering the drug to a patient, measuring the level of the drug remaining in the patient’s body, and then determining whether to increase or decrease the dosage based on certain benchmark levels of what is needed for efficacy and what is an overdose. The court concluded that the patentee had merely discovered certain immutable laws of nature. The patentee discovered (a) the effective concentration level of a drug in humans and (b) the dangerous overdose level of that same drug in humans. This correlation is a law of nature. In this way, the court distilled natural laws out of the claim.
Once accomplished, the court looked at what was left behind in the claim to determine if that was patentable subject matter. To do this, the court drew upon the language of Section 101. The statute requires a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Thus, the court instructed that the law must require an “inventive concept” in the claims once the laws of nature, natural phenomena, and abstract ideas have been mentally distilled away.
Knowing that clever draftsman could disguise a natural law, the court enumerated several “residues” of the distillation that are not sufficient to be an inventive concept. First, patents cannot simply address the claims to a narrower “audience” of those that are likely in need of use of the natural law. Therefore, limiting the claims to a doctor administering drugs to a patient is insufficient.
Second, draftsmen cannot simply add “well-understood, routine, conventional activity already engaged in by the scientific community.” Therefore, requiring the doctors to draw a blood sample of the patients and analyze the blood to determine the concentration of the drug is insufficient. The patent at issue recognized that these analytical methods were well known in the art and conventional. Accordingly, they cannot constitute part of a “new process” deserving of patent protection under Section 101.
Third, adding insignificant steps to the process cannot allow a claim to escape Section 101. Therefore, requiring the doctor to reconsider the dosage or telling the patient about the results of the test is insufficient. At the end of this analysis, the Court noted that nothing was left to the claim. The patent claims were simply directed to a natural law accompanied by limitations on the audience and conventional steps. The invention was not deserving of patent protection.
It seems apparent that the above analysis is more predictable and capable of principled application than the court’s “I know it when I see it” test for obscenity. The real problem the patent bar has with Prometheus is that it has freed the law from the rigid shackles of the patent claim. This is not necessarily a bad thing.
We often forget that before 1836 the United States had a “central claiming” system. Under this system, inventors simply submitted descriptions of their inventions, including descriptions of particular physical embodiments of the invention, to the patent office. Once a patent was granted, their right to exclude was not measured by a claim. Rather, courts would read the patent and attempt to discern the “heart” or “essence” of the invention and then determine whether a defendant had infringed on that concept. The invention according to this system was analogous to the “inventive concept” over and above natural laws and abstract ideas required by the Supreme Court in Prometheus.
After 1836, the United States entered a “peripheral claiming system.” This requires the inventors to set forth a “claim.” Like deeds for real property, the claim must describe the metes and bounds (the periphery) of the invention with particularity, rather than the heart or essence of the invention. Everything within the boundary belongs to the inventor and everything outside the boundary is free for public use. Given that the U.S.was entering the Industrial Revolution, the peripheral claiming system lent some much-needed predictability to a rapidly advancing technological society. The essence of the invention of the wheel is readily understood, while that of the cotton gin or the telegraph might not be.
The comfort and predictability of the primacy of the claim, however, has arguably led patent law too far astray from the jurisprudential underpinnings for awarding exclusive rights to inventors. Too many cases turn on the meaning of words like “the” rather than an underlying determination of whether a competitor is using another’s “inventive concept” or whether the “inventive concept” sought by the inventor for patent protection is not really new. This sacrifice in the name of clarity and predictability is probably justified in most areas of patent law, especially in a modern society with progressively complex technology.
However, Section 101 is a gatekeeper for determining the intellectual subject matter and, therefore, tests whether patenting the subject matter is “worth to the public the embarrassment of an exclusive patent. ” Where there is a danger of allowing people to own laws of nature, natural phenomena, or abstract ideas, it is is certainly worth the effort to insist that inventors show some “ inventive concept” over and above clever draftsmanship. Draftsmen often exploit the primacy of the claim in many areas of patent law, but now under Prometheus that will no longer be the case for Section 101. The Supreme Court directed lower courts to fulfill the key gatekeeper role of Section 101 by looking behind the claim language. Thus, from the perspective of ensuring freedom to use laws of nature, natural phenomena, and abstract ideas, Prometheus represents a large step in the right direction.
Could the Greek Gods have patented fire? No. Fire is a natural phenomenon, and Zeus would have been wrong to punish Prometheus under U.S. patent laws. The more interesting question is: After stealing fire from Zeus, could the wily Prometheus have patented the process of lighting a fire at night and then reading a book next to that fire? Under the Supreme Court’s Prometheus decision, the answer is no. The recognition that fire produces light is a natural law and the recognition that a man who wants to read a book can use fire is merely a limitation on the relevant audience just like the doctor in need of determining the optimal dosage for a patient. However, what Prometheus could have patented (if it were new and non-obvious at the time) was the torch (or the lightbulb) or the optimal arrangement of logs for a campfire. These embody inventive concepts that harness the laws of nature and its natural phenomena for human use.
From this perspective, the Supreme Court’s decision in Prometheus works to ensure that the Patent Act meets the constitutional directive of the Patent Clause, namely: “To promote the Progress of Science and Useful Arts, by securing for … Inventors the exclusive Rights to their … Discoveries.” (U.S. Constitution, Art. I, Sec. 8, Clause 8) After all, the progress of “Science and Useful Arts” is hindered rather than promoted by the monopolization of the laws of nature, natural phenomena and abstract ideas, which the Court in Prometheus recognized as the basic building blocks of all scientific research. Consider all the world has accomplished because of Prometheus’s one defiant act in ensuring that fire is “part of the storehouse of knowledge of all men,” “free to all men and reserved exclusively to none.”