CyberTech Rambler

April 11, 2012

My thoughts on Prometheus vs Mayo

Filed under: Uncategorized — ctrambler @ 6:46 pm

That was a good decision for mankind. I have no doubt of it. While I was hoping for the patent to be strike down, I did not expect the decision to be unanimous.

I am not good at the legal subtlety between different cases the Supreme Court choose to hear. After reading the decision, I can see why the Supreme Court acknowledge and argue that this case is not the same as Bilski. My more primitive mind did not quite care about the difference and only care for the fact that the patents fly against common sense. I was not sure Mayo will win (for mankind), but I was certain that if Mayo loses, the Supreme Court will come up with a really good reason why the patent will be allowed to stand.

I heard the recording of the oral argument. First thing that strikes me is the argument for permitting the patent is not persuasive enough. However, the lawyers for Mayo is faced with the difficulty of trying to argue that they should prevail because it is  ‘common sense’. I mean this in the sense that it is difficult to find statistics or other  tangible numbers to support ‘common sense’. Believe me, thinking that I can do better than Mayo’s lawyer, I tried and failed miserably.

Unlike PJ, after hearing the transcript I was actually quite optimistic about Mayo’s prospect. I paid particular attention to the exchange of words between Mr Shapiro  and Justice Scalia as highlighted by PJ, but came to the conclusion that Justice Scalia was just trying to  give Mr Shapiro a hard time and to drive home the point that there is no way to put a numerical threshold for the patent to work. I also believe Justice Scalia intentionally pressed Mr Shapiro that hard to see whether he will crumble under the pressure, and bring up an alternative argument which he had prepared in case his original argument that no numerical threshold  can be set for the patent to be valid to work. Thank god Mr Shapiro did not crumble. If he did, he would make the outcome of the hearing even more uncertain for Mayo.

Another passage highlighted by PJ is one of the places I thought the judges might unhold the patent: Justice Breyer suggests that Discovery is expensive and thus the temporary monopoly rights to Prometheus might be justified. Without the reward of patent, Prometheus (or other people) might not be able to put a lot of effort in to do the work, and ultimately we mankind will be worse off. This, however reluctant for me to accept, if the court chooses to rely on this argument, is good enough for me to give Prometheus the patent. In the end I was rather glad that the court did not pursue this line.

Post judgement, PatentlyO demonstrated how the judgement has begin to filter down and bite everyone. (Note: I don’t buy case 1 as a demonstration of how this judgement affect us because it is the same Supreme Court that made the decision to remand the case and tells the lower court to review it in light of its own decision).

What surprised me is the Economist reports that this decision sends biotech industry into a mini panic. I am certain that they do not welcome this judgement and significant impact them, but panic? Biotech industry certainly deserve patent protections. In a lot of cases, they will get them and that is good. But the ground rule has been set that they must make sure whatever they come out with, they do not just claim the law of nature as their property. One thing that jump out of my mind when I read the decision is may be the reason here is quite simply Prometheus lawyer did not put enough meat on the patent to justify granting it. In other words, in their attempt to claim as much territory for their client by making the patent as generalized as possible they overstepped the mark. That means the next lawyer simply have to be more careful and put more meat on to the applications. There are a lot of application in biotech and personalized medicine that can meet this requirement.

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