Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 08-1403

Finding of invalidity of patents related to methods for determining optimal dosage of thiopurine reversed

Prometheus Laboratories, Inc. v. Mayo Collaborative Services,08-1403, concerned a challenge to the district court's grant of summary judgment of invalidity of plaintiff's patents, related to claim methods for determining the optimal dosage of thiopurine drugs to treat gastrointestinal and non-gastrointestinal autoimmune diseases.

On remand from the United States Supreme Court for further consideration in light of the Court's holding in Bilski v. Kappos, 561 U.S. --, 130 S. Ct. 3218 (2010), that the machine-or-transformation test was not the sole test for determining the patent eligibility of process claims, the court reversed and remanded in concluding that plaintiff's asserted method claims recite a patent-eligible application of naturally occurring correlations between metaboloite levels and efficacy or toxicity, and thus do not wholly preempt all uses of the recited correlations.  The court also held that the treatment methods claimed in plaintiff's patents satisfy the transformation prong of the machine-or-transformation test, as they "transform an article into a different state of thing," and this transformation is central to the purpose of the claimed process.

Related Link:

• Read the Federal Circuit's Full Decision in Prometheus Laboratories, Inc. v. Mayo Collaborative Services,08-1403