Do Patents On Medical Diagnostics Violate The First Amendment?

from the certainly-seems-possible dept

We've been following the extremely worrisome Prometheus Laboratories v. Mayo Collaborative Services case for a while now. This is the case in which Prometheus patented some basic medical diagnostics tests, and then sued the Mayo Clinic for daring to do similar diagnostics without paying up. Tragically, CAFC, the court of appeals for the Federal Circuit, has ruled that it's just fine and dandy to patent a diagnostic test. The Supreme Court agreed to hear the appeal on this in the upcoming term, and folks at the Cato Institute have filed a very interesting amicus brief, arguing that such a diagnostic test should not be patentable on two key points. I don't know that it'll convince the court, but they try out the argument that doing so would actually be a First Amendment violation, and even cite the famous Eldred case to make their argument (emphasis mine in the quote here):

Prometheus’s patents will also impermissibly restrict public domain activity. These patents’ final step is entirely mental. Patents whose final step is mental have the effect of transforming non-infringing, public domain activity into infringing activity for those who are aware of the thought that triggers infringement. This effect discourages the dissemination of knowledge, because access to patented knowledge places individuals in situations where they must elect to cease doing what was previously a public domain activity—such as reading the results of medical tests—or inadvertently infringe a patent.

For similar reasons, the patents at issue unconstitutionally restrict freedom of thought, by putting parties at risk of incurring damages for patent infringement when they recognize the correlations described in the patents at issue. The First Amendment protects freedom of thought and places limits on patent protections, just as it does on copyright protections. As the Court stated in Eldred v. Ashcroft, 537 U.S. 186 (2003), copyrights could require First Amendment scrutiny if “the traditional contours of copyright protection” were altered. The patents at issue here represent an unprecedented departure from the traditional contours of patent protection; only recently have parties sought patent protection for claims which final element encompasses pure thought. Even if the patents at issue are otherwise patentable subject matter, these patents unconstitutionally restrict freedom of thought in violation of the First Amendment and should be invalidated.

This is a creative argument and compelling to me... but I would guess that the court won't buy it. While it's true that the court has said that First Amendment scrutiny for copyright only comes into play when the traditional contours of copyright law are altered, to date, the Supreme Court doesn't seem to recognize any alteration as violating the traditional contours. Within copyright law, for example, it's hard to reasonably argue that the shift from an opt-in copyright system with formalities, to an "everything is automatically copyrighted pretty much forever," was not a change to the traditional contours of copyright law... but the Supreme Court didn't think it met that standard. So I'm not sure they'll be convinced by this argument, unfortunately. Still, if it somehow is effective -- and, for whatever reason, the court seems more sympathetic to arguments of harm done by bad patent law than it does with copyright law -- it actually could turn around and be useful precedent for copyright as well. Here's hoping the court actually surprises and finds this argument compelling.

The briefs other main argument may have less overall impact on things like copyright, but could be more compelling, and if accepted, could have a nice impact on patent law. In this case, the argument is that such things do not actually qualify as a "process" as was traditionally understood under patent law, and this case represents an opportunity to re-establish the "traditional contours" of what constitutes a process for patentability purposes:

The patents at issue are not “processes” as the term was understood when section 101 of the Patent Act of 1952 was adopted. The Patent Act’s legislative history explains that the term “process” meant “art,” as it had been used in earlier patent statutes. Patentable arts were limited to processes which aimed to produce an effect on matter, and these patents do not.

Moreover, the patents at issue here do not describe a process by either a historic or general definition of the term. A process is a series of actions, and the “indication” element of the claims does not describe an action.

Enforcing the patents here will have a deleterious economic effect on the healthcare and medical research industries and will retard innovation. Empirical evidence shows that other abstract process patents, such as software and business-method patents, have resulted in aggregate financial losses for American firms and have discouraged rather than encouraged innovation. The effect of abstract process patents on software and financial firms will spread to the healthcare and medical research industries if patents such as Prometheus’s are permitted.

Again, I'm hopeful, but not expecting this to convince the court. So far, with cases like Bilski, the court has been hesitant (and I'd argue even that's a generous word choice) to recognize the evidence of the patent system holding back innovation or harming US business. So while the brief is really well written and argued, and I find it compelling, my guess is that the Court will continue to have a big blind spot on this.

Filed Under: first amendment, patents, processes, traditional contours
Companies: mayo clinic, prometheus

Supreme Court Not Ready To Take On The First Amendment Aspects Of Copyright Just Yet

from the be-patient,-Lessig dept

This post may be a little "inside baseball-ish" when it comes to copyright issues, but it's worth noting what's happening in some important lawsuits. While the Supreme Court has been gleefully taking on more and more cases concerning patent law, it seems that it's not yet ready to revisit some important discussions around copyright law, since the Eldred case back in 2003. Late last year, we updated you on a few cases that have used the specific wording of the Eldred decision to argue that recent copyright law changes were violations of the First Amendment. In Eldred, the Supreme Court had ruled that it was only a First Amendment issue if changes in the law changed the "traditional contours of copyright protection." It's that clause that some other cases have been challenging lately. As we noted in that last post, there appeared to be a split among the different circuit courts concerning whether recent copyright changes did, in fact, change the traditional contours of copyright protection. That, it seemed, was actually a good thing, because different circuits with different readings is the sort of thing that attracts the Supreme Court's interest.

Unfortunately, it appears that the Supreme Court just isn't all that interested yet. Larry Lessig has the update, where he notes that the Supreme Court has refused to take the case so far, though part of its reasoning was that the government's filing insisted that the one ruling that said the traditional contours had been changed was an obvious mistake that would be overturned when the 10th Circuit agreed to rehear the case. Except... the same day that the Supreme Court turned down the case, the lower court turned down the request to rehear the case. As Lessig notes, this is far from over, but it appears that the Supreme Court won't be settling this matter any time soon, which is a bit unfortunate.

Filed Under: copyright, eldred, golan, kahle, lessig, supreme court, traditional contours