As a patent attorney, born and raised in Rochester, MN, and having received life saving surgery and medical care from the Mayo Clinic, I am particularly interested in a current petition for Supreme Court to hear a medical method patent case in which the Mayo Clinic is challenging the patent eligibility of Prometheus Labs‘ U.S. Patents 6,355,623 and 6,680,302.
Much like the question presented in Bilski v. Doll, the Supreme Court is being asked to determine whether the method patent claims at issue satisfies the patent eligibility requirements of 35 USC § 101. In Mayo v. Prometheus Labs., the method is generally directed to administering medication to a patient in an iterative process such that successive doses are adjusted based on the level of the drug determined to be in the patient. The Mayo Clinic’s concern is that the patents claim observed correlations between patient test results and patient health, effectively preempting all uses of these naturally occurring correlations. Conversely, the Federal Circuit Court of Appeals held the patents to be patent eligible based on the transformation that occurs in the patents’ administering and determining steps.
With Bilski set for hearing in a few weeks, and Mayo having filed for certiorari against Prometheus Labs, the Supreme Court has the opportunity to address the patent eligibility standards using more than just one practical example. Having a greater number of examples on which to directly rule, gives the Court an opportunity to present a more refined a patent eligibility test. For that reason, I hope the Supreme Court takes Mayo’s case.
