Mar 212012

Yesterday, a unanimous (9–0) Supreme Court reversed the Federal Circuit and held that a company’s personalized medicine dosing process was not eligible for patent protection because the process was an unpatentable law of nature. Rather than get in to the specifics, I’m just going to include a couple of thoughts.

It’s interesting that the Federal Circuit would twice (and unanimously) uphold Prometheus’s patent under the established subject matter framework only to have the Supreme Court reverse the Federal Circuit decision unanimously. Is it just me or doesn’t that seem like a very stark contrast? Wouldn’t you expect at least a couple of Supremes to side with the lower court’s reasoning? No, instead it’s as if there was not a doubt on the Supreme Court bench that the Federal Circuit did not know what it was doing. But to me it looks like the Federal Circuit panels did know what they were doing when they applied the machine-or-transformation test.

Next, subject matter eligibility appears to be a doctrine that will continue to grow rather than go away. In MySpace, Inc. v. GraphOn Corp., the Federal Circuit sought to avoid the murky morass of 101. There was hope that this pattern of looking to 101 as a very last resort would continue. However, with this most recent case by the Supreme Court this hope has dimmed. Instead the morass will likely be clarified and refined. Hopefully too, because as it is right now, it’s kind of confusing: abstract idea, law of nature, mental step, mental process, insignificant post-solution activity, no machine or transformation, nominally tied to apparatus, not embodied in a tangible medium, not limited to tangible practical application, can be performed by a human using pen and paper, does not constitute functional descriptive material, field of use limitation insufficient, mathematical algorithm, logic per se, only data elements, no structural components, physicality lacking, etc., etc., etc. What does it all mean? It kind of looks like if the court doesn’t subjectively like the patent, it fails 101.

 Posted by at 6:08 am