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U.S. Supreme Court decides Mayo v. Prometheus

Posted on March 21, 2012 in Health Information Technology

Written by: Spencer P. Goodson

The U.S. Supreme Court handed down its opinion yesterday in the case of Mayo Collaborative Servs., dba Mayo Med. Labs., et al. v. Prometheus Labs., Inc. (No. 10-1150) (March 20, 2012) (see PDF here).  The Court reversed the U.S. Court of Appeals for the Federal Circuit and held that the patent claims at issue merely set forth laws of nature and were not, therefore, patentable subject matter under 35 U.S.C. § 101.

At issue in this case were Prometheus’ patent claims setting forth methods of using thiopurine drugs (as opposed to the drugs themselves) in the treatment of autoimmune diseases by causing a patient to ingest thiopurine drugs and then adjusting treatment based upon correlations between certain metabolite levels appearing in the patient’s blood and the efficacy and toxicity of the drugs.  The Court decided that the Prometheus’ claims did not add enough over and above its mere statements of the correlations.  In other words, the Court believed that the patent inappropriately attempted to claim laws of nature, as opposed to processes applying such laws of nature.

Should you have any questions, please contact Spencer Goodson at 317.977.1416 or sgoodson@hallrender.com.