Selective Precedent Amnesia: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 3*

As many of you now understand, I’ve got many bones to pick with the reasoning in Breyer’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  See Eviscerating Patent-Eligibility of Drug Testing Methods: The Nonsensical Reasoning in the SCOTUS Prometheus Decision*.  See also A Matter of Patent Law Despotism: The Nonsensical Reasoning in the Supreme Court’s Mayo Collaborative Services Decision Part 2*.  But I may have found the ultimate “doozy” for why Breyer’s reasoning in the Mayo Collaborative Services opinion should be “hung, drawn, and quartered.”  (And I wished I had discovered this faux pas earlier.)

For lack of a better word, I call this faux pas “selective precedent amnesia.”  What I’m referring to is a paragraph from the Supreme Court’s 1981 case of Diamond v. Diehr (which held that a claimed rubber molding method using an Arrhenius equation was patent-eligible under 35 U.S.C. § 101).  Or more appropriately, Breyer’s opinion in Mayo Collaborative Services repeatedly doing what this paragraph from Diehr says not to do in an analysis of method or process claims under 35 U.S.C. § 101.

This paragraph from Diehr says the following:

In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a wholeIt is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.  This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was madeThe “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possibly patentable subject matter.

I’ve also underlined the “key” statements from the above quoted paragraph.  Let me also say that, before Mayo Collaborative Services, this quoted paragraph from Diehr was binding precedent on the Supreme Court, and is also directly on point as to the patent-eligibility issue involved in Mayo Collaborative Services.

Do those underlined portions from the Diehr paragraph have a somewhat familiar ring relative to what was said in the Mayo Collaborative Services opinion?  For example, we see the following statements in Mayo Collaborative Services:

“[T]he steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.”

“The question before us is whether the claims do significantly more than simply describe these natural relations.  To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws?”

“[T]o consider the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.”

“To put the matter more succinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.”

“These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”

Trying to square the above noted statements from Mayo Collaborative Services (as well as the Mayo Collaborative Services opinion generally) with this quoted paragraph from Diehr defies all logic.  Does the opinion in Mayo Collaborative Services simply overlook such binding precedent that is directly on point?  It does not, but instead dissipates what this quoted paragraph from Diehr stands for by scattering portions of it throughout the opinion in Mayo Collaborative Services, rather than considering what this paragraph collectively says “as a whole.  Most significantly, Mayo Collaborative Services neglects to even fully quote the first crucial sentence from this paragraph in Diehr.

As I said above, you could attribute what happened here to “selective precedent amnesia.”  But frankly such mishandling of binding Supreme Court precedent in Mayo Collaborative Services is a huge problem.  (As one commentator has astutely noted, we now have Supreme Court precedent going off in two diametrically opposed directions on essentially the same patent-eligibility issue.)  Any persuasiveness (or balance) in the opinion in Mayo Collaborative Services is greatly undermined by failing to directly (and fairly) address this paragraph from Diehr.  Indeed, if a patent attorney like me had glossed over this quoted paragraph from Diehr collectively said in my brief, even the judges from the Federal Circuit would have let me know it in spades.

*© 2012 Eric W. Guttag.  Posted March 28, 2012 on


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15 comments so far.

  • [Avatar for Anon]
    March 29, 2012 11:42 am


    Prometheus is, I guess, the new way.

    That whitewash won’t work.

    You have to look at the reasoning given in Prometheus, and as I noted, it is explicitly based on “precedent.”

    Except it is not. The Prometheus way is a “not even wrong.” Both manners, even while diametrically opposed, are set as “the way.”

    As I posted on the sister thread:

    To flesh out my previous post, perhaps a civil disruption is in order, grinding all matters to a halt until the Supreme Court re-issues the Prometheus opinion in a manner that squares with applicable law.

    To put it crudely (my apologies): Tell the Supremes to either shtt or get off the pot.

    Follow the precedent or cleanly set a new one. What we have now is utter nonsense and cannot be followed in good conscience by agents of the court.

  • [Avatar for Bob Hodges]
    Bob Hodges
    March 29, 2012 11:06 am

    On other blogs, I have heard the following logic used to (supposedly) reconcile this passage in Diehr with the Prometheus decision:

    “All this Diehr passage says is that you cannot ignore the presence of old elments in the 101 analysis. The passage does not say that you cannot analyze the old elements and find that they do not add enough to to make the claim patent eligible. By analyzing the old elements you are not ignoring them, and so you are following Diehr.”

    I see this logic as a poor attempt at reconciling Diehr with Prometheus. The Diehr passage means what it says, and the logic of Flook and Prometheus are inconsistent with it. To the extent that the Supreme Court gets to decide how 101 should be analyzed (and apparently they do), Prometheus is, I guess, the new way. Apparently, whether claims should be read as a whole or analyzed by parts is just another doctrinal issue on which the pendulum swings back and forth. Perhaps we can get Congress to clearly and incontrovertibly enshire Judge Rich’s clear and reasonable analytical approach (to this and many other areas of patent law).

  • [Avatar for EG]
    March 29, 2012 09:14 am

    “As I noted though, the problem is that Breyer not only reconsidered the precedents, but says that those precedents are the guiding force (thus NOT overruling them), and yet promptly ignores the very strongest case on point’s guidance himself.”

    Absolutely spot on, Anon. That’s why the failure of Breyer’s opinion to squarely address this quoted paragraph from Diehr is so mind-boggling.

    “It’s downright embarrassing that this decision was signed by all nine judges.”

    How very true, Anon, and you don’t need to be gracious either. As my patent attorney younger brother Mark has aptly pointed out on this blog, Breyer’s opinion characterizes the “wherein clauses” as a “step.” That, by itself is embarrassing in the extreme. Any beginning prosecuting patent attorney or agent would understand that characterizing “wherein clauses” as a “step” is nonsense. And when you can’t even correctly characterize basic claim terminology correctly, why are you surprised that patent law practitioners go ballistic, and have no respect for your reasoning, Justice Breyer?

    As I, you, and many others have said, what those who are “cheering” this decision (and keep hurling “verbal vitriol” at us) need to understand is that the specific result isn’t the problem for us, but instead the abominable reasoning that is employed in that decision, including mischaracterizing and misusing basic patent claim terminology. If you can’t get the basic patent claim facts right, is it any wonder that the reasoning you provide won’t be accepted by patent law practitioners, notwithstanding the further disingenuous and nonsensical characterizaton of what that patent law is?

    What is also very unfortunate is that Breyer could have had his “cake,” and even gotten us patent practitioner’s (at least most of us) to “eat it” too if he had used the basic patent claim terminology correctly and had framed the applicable patent law issue appropriately. Characterizing Prometheus’ claimed method as not much more than patenting a “law of nature” was the absolutely worst way to go. Instead, he could have gone down the path of Bilski and said that Prometheus’ claimed method is nothing more than an “abstraction” because it does’t achieve a “use result” (i.e., simply providing numerical ranges of what dosages are too high or too low isn’t enough to reach the patent-eligibility zone). Even better, Breyer could have pointed to related U.S. Pat No. 6,987,097, and particularly Claims 1 and 13, and said “that’s what I mean by a ‘useful result’ that is more than an abstraction.” Prometheus would have been unhappy, and there might have been some grumbling by some patent practitioners, but such reasoning would have been accepted by the patent law bar at large (me included), and would have also given us meaningful guidance on how to craft method and process claims to reach the patent-eligibility zone. (Sigh).

    As I said before, I’ve got an article in the works that Gene will be posting later that provides the path forward for getting us out of this Mayo Collaborative Services debacle. Stay tuned.

  • [Avatar for Anon]
    March 29, 2012 08:32 am


    Comments crossed in posting. I do not think that Dan is saying the decisions are flat out not binding, but rather, not binding on the Court itself when the Court so decides. In a sense you two are saying the same thing with your comment of “until we see fit to reconsider them.”

    As I noted though, the problem is that Breyer not only reconsidered the precedents, but says that those precedents are the guiding force (thus NOT overruling them), and yet promptly ignores the very strongest case on point’s guidance himself.

    It’s downright embarrassing that this decision was signed by all nine judges. And that’s being as gracious as I possibly can be.

  • [Avatar for Anon]
    March 29, 2012 08:26 am

    Hit the Submit too quick – a final thought:

    One of the two is simply wrong.

    Trying to have both at the same time is “not even wrong,” it is utter nonsense.

  • [Avatar for Anon]
    March 29, 2012 08:23 am


    Your comment of “it may – and occasionally has – done so, as SCOTUS is not *bound* by its earlier decisions” is incomplete.

    Your partial attempt at an answer (“I’m not sure“) backtracks from my post at 1). On those occasions where SCOTUS has decided to overrule itself, it says so (albeit sometimes in indirect terminology). It does not overrule itself by lauding the previous case and proclaiming that it is sticking to precedent. That is why I posted the particular comments from the Prometheus case above and on the other thread.

    The commentors are “correct” in a fashion when they say what is right is what is decided by the Court. But, once again, that is not the issue, so you rfinal comment is simply not germane. The problem is that the Court has said that two things, two contradictory things, are both right. In essence, this is worse than a non-decision. As Robert R. Sachs says, quoting Wolfgang Pauli: “Not even wrong.” Or as my friends from Boston like to say, “You can’t get there from here.” You cannot pretend that precedent is your guidance (another quote can be the refence to deadlettering) and at the same tiime ignore the precedence from the self-identified case most strongly on point. And with all due respect ot Paul Cole’s comment (43) on the other thread) there is no way to distill any workable rule from such a flat out contradiction.

    One of the two is simply wrong.

  • [Avatar for EG]
    March 29, 2012 08:22 am

    “SCOTUS is not *bound* by its earlier decisions”


    That’s not what the Supreme Court says. See Hohn v. U.S. (1998): “Our decisions remain binding precedent until we see fit to reconsider them, regardless of whether subsequent cases have raised doubts about their continuing vitality.”

  • [Avatar for NWPA]
    March 29, 2012 08:14 am

    The AIA is also a source of many problems. For example, in the AIA for the treatment of tax patents, the trier of fact is supposed to treat the part that has to do with taxes as old and well-known and not capable of contributing to novelty or patentability. The problem with this is it endorses a methodology that assumes one can take pieces out of the claim in a similar fashion to the law of nature approach used by the SCOTUS in Prometheus. The test for a technological art in the Section 18 for the Transitional Program is also problematic. It uses the similar language as the EPO.

  • [Avatar for Dan Feigelson]
    Dan Feigelson
    March 29, 2012 07:58 am

    Eric, as much as I agree with you about SCOTUS blowing the Promethues decision, I don’t follow your logic about Diehr being binding precedent (“this quoted paragraph from Diehr was binding precedent on the Supreme Court”). While the public interest in settled expectations, i.e. the notion of stare decisis, says that SCOTUS should generally not overrule itself, it may – and occasionally has – done so, as SCOTUS is not *bound* by its earlier decisions.

    Of course, when the court does overrule itself, it should do so explicitly, which is another failing of the Prometheus decision: does Prometheus constitute an overruling of the statement from Diehr that you shouldn’t evaluate a claim in piecemeal fashion? I’m not sure (but I’ll bet that for the next few years the decision that gets quoted in pleadings on this point will be whichever one supports the advocate’s position).

    Having said that, I agree that SCOTUS was dumb to take the approach to claim construction that it did in Prometheus, not just because that approach contradicts Diehr, thereby sowing confusion, but because the Diehr court was *right* that you have to look at the claim as a whole.

  • [Avatar for step back]
    step back
    March 28, 2012 07:41 pm


    Those who know not what they are talking about (and I forgiveth them not for that) probably think you pull out your handy dandy human genome, get a scissor, snip here, snip there and that’s it. Simple as chicken pot pie and a glass of Kool-Aid. Yeah right.

    One of the clear laws of Nature (and I think Einstein said this:) is that there are only two things in the Universe that can grow to infinity and beyond. One of them is a bank account with compounded interest and the other is human stupidity. And then Einstein added, but I’m sure about the former.

  • [Avatar for EG]
    March 28, 2012 06:49 pm


    What will truly cause the gray matter of those 9 Justices to melt is when someone who knows (e.g., has a background in a molecular biology or biochemistry) explains to them that “Mother Nature” does not and cannot create that isolated DNA sequence that Myriad claimed. (And I’ll leave it those who know molecular biology and biochemistry far better than I do to fill in the details as to why that’s so.)

  • [Avatar for step back]
    step back
    March 28, 2012 05:41 pm


    It will not surprise me if, when the Mryiad case comes back up, the SCt resorts to this pundit’s logic:

    “The logic we suggest is: if you cleave an orange in two, you can not claim the two orange halves as inventions, and so it is also with human genes.”

    (And that is why “isolated human genes are not patentable, which is and can be the only acceptable decision”)

    Yes, Bravo for that logic and don’t forget to drink your Brawndo, it’s got electrolytes you know.

    source of quotes:

  • [Avatar for step back]
    step back
    March 28, 2012 05:28 pm


    I have little doubt that all 9 members of the US Supreme Court are men and women of extremely high IQ because they have to grapple with so many complex cases in so many diverse areas of law. (I know that I could never do what they do, bopping my head into one esoteric area (e.g. maritime law) and then another (e.g. bankruptcy law).)

    However, it seems to me that with great IQ comes great arrogance, to the point that they cannot see in the mirror the areas of law in which they are incompetent and therefore should leave it to lower expert courts to resolve.

    BREYER, J., writes in one place: “Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.

    And then he writes in another place, “Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented [[his]] law [[regarding action]] of gravity. Such discoveries [[or invented theories about how Mother Nature works]] are ‘manifestations of [[ men, but we the Court instead understand them to be manifestations of Mother]] . . . nature [[herself]], …”

    With respect to Einstein, the Court says it correctly. E=mc ^2 is “his” theory about how Mother Nature works in all times and all places.

    Einstein may be exactly right or it may turn out that he is at least partly wrong. Mother Nature did not come down from the mountain top with her 10 “Laws” etched in stone tablets.

    E=mc ^2 is an abstract idea held by men and expressing how they think Mother Nature operates. In reality, there is little difference between the theories of men that SCt calls “Laws of Nature” and other abstract ideas except that the latter do not have to be falsifiable scientific hypotheses.

    BREYER, J., writes in another place: “When a patient ingests a thiopurine compound, his body metabolizes the drug, causing metabolites to form in his bloodstream. Because the way in which people metabolize thiopurine compounds varies, the same dose of a thiopurine drug affects different people differently, and [[therefore there is no one predictive rule (or “Law of Nature” as this Court calls it) for determining proper dosage for each individual and differently responding patient.]]”

    In other words, this case (Mayo v. Promo) does not involve a “Law of Nature” in the first place.

  • [Avatar for EG]
    March 28, 2012 04:05 pm

    “While we are not the decision makers, apparently the decision makers are not very good decision makers.”

    I didn’t think of it that way, but good thought. I’ve also provided Gene with another article that points the way out of this Mayo Collaborative Services debacle. We need to move forward on countermeasures to contain this decision, and hopefully reach rationality and patent law sanity. Stay tuned.

  • [Avatar for Anon]
    March 28, 2012 02:43 pm

    Posted on another thread, but on point here as well:

    Further food for thought in relation to my post at 37) (of the other thread):

    Our conclusion rests upon an examination of the particular
    claims before us in light of the Court’s precedents.
    566 U. S. ____ (2012) at 3

    A more detailed consideration of the controlling precedents
    reinforces our conclusion. The cases most directly
    on point are Diehr and Flook, two cases in which the Court
    reached opposite conclusions about the patent eligibility of
    processes that embodied the equivalent of natural laws.
    566 U. S. ____ (2012) at 11

    The presence here
    of the basic underlying concern that these patents tie up
    too much future use of laws of nature simply reinforces
    our conclusion that the processes described in the patents
    are not patent eligible, while eliminating any temptation
    o depart from case law precedent.
    566 U. S. ____ (2012) at 18-19

    I share these to illustrate that Diehr cannot be said to have been overturned by the Prometheus decision, as Diehr is repeatedly emphasized in a positive light, as a case most on point, and that the decision sought to utilize the Court’s past precedents (plural) and eliminate temptaion to depart from them (an utter failure).

    Diehr still IS the law. But so is Prometheus. While we are not the decision makers, apparently the decision makers are not very good decision makers.