As Dennis Crouch of Patently O earlier predicted, the world-changing
Mayo v. Prometheus decision by the US Supreme Court is already impacting the other case regarding gene patents, Myriad Genetics. Today, the Supreme Court vacated and remanded [PDF] the case back to the Federal Circuit, telling it to take another look and come up with a ruling in harmony with their Mayo decision:
ASSN. FOR MOLECULAR PATHOLOGY V. MYRIAD GENETICS, ET AL. Things are looking up in PatentLand. As for the Mayo decision and its implications for software, Rob Tiller, VP and Assistant General Counsel at Red Hat has a nice article on OpenSource.com, Prometheus bound: An important precedent for the next software patent case.
The petition for a writ of certiorari is granted. The judgment is vacated, and the case is remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)
Myriad Genetics is the case about whether human genes should be patentable, specifically genes for identifying the risk of breast and ovarian cancer. Arguing against such patents on the grounds that DNA is part of nature were the Obama Administration, PubPat, and ACLU. PubPat and the ACLU brought this case to begin with. You can listen to the oral argument before the Federal Circuit here on Groklaw. And the New York Times has a wonderful feature, showing a long list of its articles about the case. And the ACLU has the documents all in one handy place. And PubPat's Dan Ravicher has this quotable quote in their press release, “Nobody ‘invents’ genes, so no one should be able to claim ownership of them,” said Daniel B. Ravicher, executive director of PUBPAT. “We are not talking about a new drug or a new tool to fight cancer. We are talking about a genetic marker that occurs naturally in the human body. That cannot, and should not, be patented.”
Crouch explains the remand:
The Supreme Court today vacated the Federal Circuit's decision in AMP v. Myriad Genetics and has ordered the appellate court to reconsider the case in light of the recent Supreme Court decision in Mayo v. Prometheus. To be clear, the Supreme Court's move here is not a ruling on the merits but rather merely a recognition that the validity of Myriad's human gene patents may be impacted by the Mayo decision. And that's not what the Federal Circuit had
ruled. Last September, the Federal Circuit denied both ACLU's and Myriad's requests for a rehearing, leaving the US Supreme Court as the last hope. And so now there will be a rehearing, after all. Some lawyers are already predicting that somehow the Federal Circuit will find a way to save the patents, however. But then, it's back to the Supremes.
I previously wrote that one reasoned result of the Mayo decision is that Myriad's claims directed toward isolated human DNA are now invalid.
And now Tiller on the Mayo decision:
The Mayo Court cited as important precedents three earlier Supreme Court cases that involved software. According to the new opinion, these cases--Diehr, Flook, and Benson--concerned patents involving “processes that embodied the equivalent of natural laws.”
Diehr concerned a process for transforming uncured rubbed into cured, molded products using the Arrhenius equation. Although the Diehr process as a whole was patentable, the Court found that by itself, “the basic mathematical equation, like a law of nature, was not patentable.” In Flook, the Court found a formula for computing an alarm limit as part of a process for catalytic conversion of hydrocarbons was a basic mathematical equation that, “like a law of nature,” was not patentable. One of his links takes you to an earlier Tiller article that referenced a couple of articles by P0IR on Groklaw, by the way, so keep talking, y'all. It's a matter of education:
The Benson case involved a process for converting binary-coded decimal numerals into pure binary numbers on a general purpose computer. The Mayer opinion describes Benson as holding “that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle.”
These references and the analogy to laws of nature will be important in future software patent cases. It is also interesting to note the Court’s application of the machine-or-transfer test of Bilski. In response to the argument that the blood of the individual was transformed in the course of the test, the Court said that the machine-or-transformation test was only “an ‘important and useful clue’ to patentability” which did not “trump the ‘law of nature’ exclusion.” In other words, the Bilski test, even if satisfied, does not allow patenting of laws of nature. The Mayo opinion indicates the same ought to be true for mathematical algorithms. And software is made up of mathematical algorithms, n’est-ce pas?
It also seems noteworthy that the Mayo Court outlined a balanced view of the patent system that took account of the risks it can pose for innovation. It wrote, “Patent protection is, after all, a two-edged sword. On the one hand, the promise of exclusive rights provides monetary incentives that lead to creation, invention, and discovery. On the other hand, that very exclusivity can impede the flow of information that might permit, indeed spur, invention, by, for example, raising the price of using the patented ideas once created, requiring potential users to conduct costly and time-consuming searches of existing patents and pending patent applications, and requiring the negotiation of complex licensing arrangements.” The Court also noted that monopolization of abstract intellectual concepts and other basic tools “through the grant of a patent might tend to impede innovation more than it would tend to promote it.”
This may not sound surprising to FOSS community members who are knowledgeable about the problems of software patents. But Americans are taught from an early age to venerate the patent system. Many end up with an unshakeable belief that it always fosters progress, and cannot conceive that it sometimes hinders innovation. In Mayo, all nine Justices recognized that the reality is more complicated. The Court may not be ready yet to take on the software patent problem, but its practical, empirical approach could be a harbinger of progress to come.
There are various possible paths on this. The Supreme Court has said that mathematical algorithms are not patentable, and Ben Klemens [PDF] and others have argued that software is at bottom indistinguishable from mathematical algorithms. Others have fashioned related arguments leading toward the conclusion that at least some software is too abstract to be patented. Some of the analysis of PoIR on GrokLaw is particularly interesting: Why software is abstract and
An Open Response to the USPTO — Physical Aspects of Mathematics. He's right that we need to figure out a way to explain it to folks who are not technical. It can be done, I'm sure, if we seriously try.
This is a discussion that needs to continue. I hope FOSS developers and others with deep knowledge of software technology will get involved. We need to get to a convincing explanation in terms that non-technical people (such as judges and juries) can understand of the nature of software and why it is at bottom an abstract idea. Anyone care to take a swing?
Other patent attorneys are still frothing at the mouth over Mayo
on IP Watchdog, and
on Patent Docs [also
here]. Their disrespect for the rule of law is noted. They are writing suggestions for how to avoid applying Mayo. The Federal Circuit is not *over* the Supreme Court. It's subject to it, and all these patents lawyers are talking about is how to avoid applying the Mayo decision. It seems to be very hard to imagine something could be harmful if there's a lot of money to be made. And there's the human side too -- change is hard.
Wait until they realize software is just mathematics. We'd best have some humanitarian smelling salts ready.