State of Innovation

Patents and Innovation Economics

Mayo v. Prometheus – Supreme Court Grants Cert (Again)

On June 20th, the Supreme Court granted cert. for the second time in Mayo Collaborative Services v. Prometheus Labs., Inc, Supreme Court No. 10-1150.  This case is about patents 6,355,623 and 6,680,302 to Prometheus, which claim methods for determining the optimal dosage of thiopurine drugs used to treat gastrointestinal and non-gastrointestinal autoimmune diseases.  Prometheus sued the Mayo Clinic for infringement and Mayo’s defense was that the patents are invalid as not being patent eligible material under 35 USC 101.  Mayo argues that the patent claims cover a natural phenomenon and is therefore not patentable eligible subject matter under 35 USC 101.  More specifically that the claims “wholly preempt use of” a natural phenomenon.  Mayo’s arguments do not even pass the laugh test.  The patents cover a method of administering drugs.  Administering a drug is not a natural phenomenon.  Every invention takes advantage of natural phenomenon you cannot invent something that does not use natural phenomenon – that would relegate patentable subject matter to black magic.

The District Court (S.D. California) granted Mayo’s motion for summary judgment.  This was overturned by the Court of Appeal for the Federal Circuit.  The case was remanded back to the CAFC to reconsider their opinion in light of the Bilski v. Kappos ruling, which was directed to the issue of what is patentable subject matter under 35 USC 101.  Mayo and the District Court parsed the claims and decided the first two steps were data gathering and the third step was a natural phenomenon.  This attempt parse the claim into its elements or steps and ignore the invention as a whole is the standard intellectually dishonest argument used by invention thieves.  The CAFC considered the administrative step and the determining steps were transformative.  The CAFC was not fooled by Mayo’s specious arguments that stated:

In making this determination, the Court has made clear that a claim must be considered as a whole; it is “inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old  elements in the analysis.”  Id. (quoting  Diehr, 450 U.S. at 188).

The CAFC further pointed out that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”  Bilski, 130 S. Ct. at 3230 (quoting Diehr, 450 U.S. at 188).

The claims recite specific treatment steps, not just the correlations themselves.  And the steps involve a particular application of the natural correlations:  the treatment of a specific disease by administering specific drugs and measuring specific metabolites.  As such, and contrary to Mayo’s assertions, the claims do not preempt all uses of the natural correlations; they  utilize them in a series of specific steps.

The CAFC further noted that:

As Prometheus points out, quite literally every transformation of physical matter can be described as occurring according to natural processes and natural law.  Transformations operate by natural principles.  (Emphasis Added)

As stated by Prometheus’s expert, “at the end of the process, the human blood sample is no longer human blood; human tissue is no longer human tissue.”  Decl. of Dr. Yves Théorêt ¶ 6,  Prometheus Labs., Inc. v. Mayo Collaborative Servs., No. 04-CV-1200 (S.D. Cal.Mar. 29, 2007) (Dkt. No. 528-3) That is clearly a transformation.

Luckily, the CAFC was not fooled by Mayo’s intellectually dishonest attempt to besmirch the intellectual achievements of the Prometheus inventors.  Mayo should be ashamed to have its name associated with the parasitic attempt to rob the invention of others.  Hopefully the Supreme Court, which has mixed record of understanding even the most basic principles of patent law, will not be fooled by Mayo’s scheme to steal other people’s intellectual efforts.

 

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June 25, 2011 - Posted by | -Law, Patents | ,

2 Comments »

  1. […] immoral course of action is exemplified by Mayo’s involvement in two frivolous patent lawsuits Mayo v. Prometheus and ACLU, Mayo et al. v. Myriad and in their support, though their lobbying organizations, for […]

    Pingback by Mayo Clinic’s Invention Theft Strategy « State of Innovation | June 25, 2011 | Reply

  2. […] immoral course of action is exemplified by Mayo’s involvement in two frivolous patent lawsuits Mayo v. Prometheus and ACLU, Mayo et al. v. Myriad and in their support, through their lobbying organizations, for the […]

    Pingback by Mayo Clinic’s Invention Theft Strategy | Law Office of Dale B. Halling, LLC - Intellectual Property Law Firm - Patent Attorney - Patents, Trademarks, Copyrights - Blog | June 29, 2011 | Reply


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