Brief of Amici Curiae Cato Institute, Reason Foundation, and Competitive Enterprise Institute in Support Of Petitioners in Mayo v. Prometheus Labs

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Summary of Argument

Prometheus’s patents are two among thousands of abstract process patents which have been improvidently granted since the 1990s. The patents at issue present an opportunity for the Court to restore the original meaning of patentable “process” and reverse an expansion of patentable subject matter that has discouraged innovation and harmed U.S. industries.

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.

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.