Patent Law

In Prometheus Labs. v. Mayo, the patentee's claim focuses on a method of "optimizing therapeutic efficacy" by first administering a particular drug to a subject and then using the subject's metabolite level to adjust future drug doses. The district court found the claims invalid as lacking patentable subject matter under 35 U.S.C. 101. On appeal Prometheus has asked the Federal Circuit to restore its patent rights. (U.S. Patent No. 6,680,302).

In an amicus brief, the AIPLA has also asked the appellate court to uphold the patent rights. The bar association argues that (1) the requite Bilski transformation can be found in the subject's transformation of the drug into metabolites in the body and (2) that no weight should be given to the dissent from denial of certiorari in LabCorp. Other briefs are expected, including several arguing that the method should not be considered patentable.

Notes:

• AIPLA Brief: prometheusmayo.aipla.pdf
• Discussion by Matt Osenga [LINK]
• Prometheus is parallel to the Classen case.
• PATracer has further background
• Chris Holman discussed the case earlier on Patently-O.