Chapter 6: Consideration by the Supreme Court
As was seen in Chapter 5, in the 1980s the Federal Circuit had initially considered the issue of patent protection for diagnostic and medical treatment methods without much success. In the main, they ruled that such methods were not patentable under section 101. The Court’s decisions in Benson, Flook and Diehr provided some guidance on the issue of patent-eligibility which were used by the CCPA and the Federal Circuit, especially in recent years, to determine the question of whether patent protection should be provided for medical methods, in particular, diagnostic methods. None of these decisions reached the Court. However, one unremarkable decision which raised the question of patent protection for diagnostic methods only tangentially reached the Court. That decision was Laboratory Corporation, where the Court, although granting certiorari to determine the issue of whether a diagnostic method essentially fell afoul of section 101, rejected the claim without deciding the issue. However, a dissent by Breyer J provided an initial view of three members of the Court on the issue of patent protection for medical and diagnostic methods. Although the dissenting opinion in Laboratory Corporation has no precedential value, it was, nonetheless, used by some District Courts to justify rejecting similar claims as unpatentable subject matter, but the Federal Circuit made clear that that opinion has little value. The reliance on Laboratory Corporation was, however, short-lived since the Court has handed down its decision in Prometheus.
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