Eligibility Of Claims Previously Held Valid Under Machine-Or-Transformation Test Reaffirmed

Last Month at the Federal Circuit - January 2011

Judges: Rader, Lourie (author), Bryson
[On remand from S. Ct.]

In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 08-1403 (Fed. Cir. Dec. 17, 2010), on remand from the Supreme Court in light of Bilski v. Kappos, 561 U.S. -- (2010), the Federal Circuit reaffirmed its holding that Prometheus Laboratories, Inc.'s ("Prometheus") asserted method claims are drawn to statutory subject matter, and again reversed the district court's grant of SJ of invalidity under 35 U.S.C. § 101.

Prometheus is the sole and exclusive licensee of U.S. Patent Nos. 6,355,623 ("the '623 patent") and 6,680,302 ("the '302 patent"), which claim methods to optimize therapeutic efficacy and minimize toxic side effects of drugs used to treat autoimmune diseases. These drugs include 6-mercaptopurine