Supreme Court Hears Arguments on Patent-Eligibility of Medical Protocol Based on Correlations Between Blood Tests and Patient Health
By Laura Fishwick – Edited by Michael Hoven
Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150 (U.S. Dec. 7, 2011)
Transcript of Oral Arguments
Mayo v. Prometheus returned to the Supreme Court after the Court of Appeals for the Federal Circuit again held that Prometheus’s method patents covered a particular application of a natural phenomenon, not the natural phenomenon itself, and were therefore valid. JOLT Digest covered the Federal Circuit’s initial ruling and its reaffirmation.
The Supreme Court heard arguments concerning whether a treatment that indicates a drug dosage based on correlations between metabolite levels in the patient’s blood and drug efficiency or toxicity is eligible for patent protection. Mayo argued that Prometheus’s patent was invalid because it covered a natural phenomenon: the correlation between metabolite levels, as revealed by a blood test, and patient health. Additionally, Mayo claimed that the patent preempted all competing tests that would use metabolite levels (above a certain concentration that Prometheus’s patent covers) to adjust drug dosages. Transcript of Oral Argument at 8. Prometheus argued that their patent would not preempt competing tests because another party could file an improvement patent specifying a different range. Id. at 42. Prometheus said that its claims were patentable because it applied the conventional step of measuring metabolites in patients to the discovery of the natural correlation, and analogized its patents to patented processes that detect earthquakes, also a natural phenomenon.
Patently-O provides an overview of the case. Ars Technica criticized the lack of attention that the Court gave to the issue of whether medical patents are legal in general, analogizing the issue to overly-broad software patents. IPWatchdog has predicted that the Court will interpret § 101 as a “coarse filter” and leave Mayo to challenge Prometheus under § 102 and § 103. Published before the Court heard oral arguments, the Wall Street Journal argued that the Court should continue its longstanding policy of providing strong patent protection to encourage investment by finding Prometheus’s diagnostic test to be patentable subject matter. The Washington Post features a discussion of the main arguments. (more…)