Justice Breyer’s dissenting opinion in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. is interesting for more than his views on inventor rights and the Bayh-Dole Act. As I was reviewing it, I was struck by his negative comments about patents and his citation of his own 2006 opinion dissenting from the dismissal of the grant of certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

The Dangers of Patents

According to Justice Breyer,

[P]atents themselves have both benefits and costs. Patents, for example, help to elicit useful inventions and research and to assure public disclosure of technological advances. . . . But patents sometimes mean unnecessarily high prices or restricted dissemination; and they sometimes discourage further innovation and competition by requiring costly searches for earlier, related patents or by tying up ideas, which, were they free, would more effectively spur research and development.

Ouch!

Citing the Founding Fathers, Justice Breyer continued:

Thus, Thomas Jefferson wrote of “the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.” . . . And James Madison favored the patent monopoly because it amounted to “compensation for” a community “benefit.”

The Citation to Metabolite

Justice Breyer embedded in this discussion a citation to his 2006 opinion dissenting from the dismissal of the grant of certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. This citation caught my eye because the Federal Circuit has twice refused to follow Justice Breyer’s views when deciding Prometheus Laboratories, Inc. v. Mayo Collaborative Services, and that case is once again up for review by the Supreme Court. (Mayo’s petition for certiorari, filed in March, is still pending.)

As I discussed previously, Justice Breyer’s Metabolite dissent explains his conclusion that Metabolite’s personalized medicine method claims were not patent-eligible because they were directed to a “natural phenomenon.” Although the Federal Circuit’s most recent Prometheus decision addresses some of Justice Breyer’s points head on, Justice Breyer’s citation of his Metabolite opinion here makes me wonder if he is foreshadowing at least his opinion of how Prometheus should be decided.