1/31/2017 Mayo Collaborative Services v.

 Prometheus Laboratories, Inc | Casebriefs

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Mayo Collaborative Services v. Prometheus Laboratories,
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Citation. 132 S. Ct. 1289 (2012) (https://www.bloomberglaw.com/document/X1HB8JM003?

Brief Fact Summary.

Mayo Collaborative Services and Mayo Clinic Rochester (Defendant) argued that processes
claimed by patents exclusively licensed by Prometheus Laboratories, Inc. (Plaintiff) basically
claimed natural laws or natural phenomena, that is, the correlations between thiopurine
metabolite levels and the toxicity and efៜ�ciency of thiopurine drugs, and, therefore, were

Synopsis of Rule of Law.

http://www.casebriefs.com/blog/law/intellectual­property­law/intellectual­property­keyed­to­merges/patent­law­intellectual­property­keyed­to­merges/mayo­co… 1/2

Issue. risking harmful side effects. on remand from the Supreme Court for reconsideration in light of Bilski v. 130 S. the Federal Circuit reafៜ�rmed its earlier conclusion. in addition to natural laws themselves.  For awhile.  Plaintiff brought suit against Defendant for patent infringement. Facts.  The United States Supreme Court granted certiorari.casebriefs.com/blog/law/intellectual­property­law/intellectual­property­keyed­to­merges/patent­law­intellectual­property­keyed­to­merges/mayo­co… 2/2 . a patent is invalid as a natural law where steps in the claimed processes involve. but then decided to market and sell its own similar tests using metabolite levels somewhat higher to determine toxicity. Ct. Leave a Message  Prometheus Laboratories. inhibiting their use in the making of further discoveries. (2) a “determining” step—telling the doctor to measure the resulting metabolite levels in the patient’s blood. as a natural law where steps in the claimed processes involve.  The patent claims for the patents set forth processes embodying researchers’ ៜ�ndings that identiៜ�ed correlations between metabolite levels and likely harm or ineffectiveness with precision. still held that the patents were invalid as laws of nature under § 101 of the Patent Act. producing metabolites in the bloodstream. and informing the doctor that metabolite concentrations above or below these thresholds “indicate a need” to decrease or increase (respectively) the drug dosage. well-understood. although concluding that Defendant infringed the patents at issue. Kappos. and (3) a “wherein” step—describing the metabolite concentrations above which there is a likelihood of harmful side effects and below which it is likely that the drug dosage is ineffective. doctors have found it hard to determine whether a particular patient’s dose is too high.  Plaintiff sold diagnostic tests incorporating these processes.  The body metabolizes the ingested drugs.  The district court. in addition to natural laws themselves. or two low. 3218 (2010). routine. holding that the processes were patent eligible under the “machine or transformation test” as they included steps that involve the transformation of the human body or blood taken from it. and. Is a patent invalid under § 101 of the Patent Act. routine.1/31/2017 Mayo Collaborative Services v. Mayo Collaborative Services and Mayo Clinic Rochester (collectively “Mayo”) (Defendant) bought and used Plaintiff tests.  Because patients metabolize these drugs differently. making it ineffective. well-understood. Inc | Casebriefs Under § 101 of the Patent Act.  The Federal Circuit reversed.  Each claim recited (1) an “administering” step—instructing a doctor to administer the drug to his or her patient. Prometheus Laboratories. which clariៜ�ed that the “machine or transformation test” is not a deៜ�nitive test of patent eligibility. Inc.  That holding was appealed to the United States Supreme Court. conventional activity previously participated in by researchers in the ៜ�eld and where upholding the patent would risk disproportionately tying up the use of the underlying natural laws. conventional activity previously participated in by researchers in the ៜ�eld and where upholding the patent http://www. (Plaintiff) was the one and only licensee of two patents that concerned the use of thiopurine drugs to treat autoimmune diseases.