[JURIST] The US Supreme Court [official website] on Tuesday ruled unanimously [opinion, PDF] in Mayo Collaborative Services v. Prometheus Laboratories, Inc. [SCOTUSblog backgrounder] that patents obtained under 35 § 101 [text] that correlate the body’s biological reaction to different dosages of a certain type of drug are invalid because they incorporate laws of nature. Respondent Prometheus Labs [corporate website] patented the tests doctors use for determining the appropriate dosage of drugs for treating Crohn’s disease and other autoimmune diseases. Petitioner Mayo Collaborative originally purchased the tests produced by the respondent, but then announced that they would attempt to market their own, somewhat different, diagnostic test. Prometheus Labs sued for infringement of their patents. Mayo argued that the tests look at “natural phenomenon” and that doctors violate the patents simply by mentally recognizing the correlation, regardless of what the doctors do with this knowledge. In an opinion authored by Justice Stephen Breyer, the court acknowledged that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” The court, however, concluded that because the processes patented by Prometheus Labs did not transform the “unpatentable natural laws into patent-eligible applications of those laws,” the processes could not be granted patent protection.
The court’s ruling reversed the decision [text, PDF] of the US Court of Appeals for the Federal Circuit. During oral arguments [JURIST report] in December, petitioner Mayo Collaborative argued that the respondent’s patent attempts to protect a “law of nature” instead of the “application of a law of nature,” which restricts doctors’ ability to make treatment judgments based on patients’ reactions to drugs. Respondent Prometheus Labs argued that the courts have permitted similar patents in the past, that the current patent involves only a narrow range of drugs and that it will not prevent future improvements in the field. The Supreme Court accepted a case on this issue before in Laboratory Corp. of America v. Metabolite Laboratories [Duke Law case backgrounder; JURIST report] but dismissed it as “improvidently granted” because the petitioner had not adequately preserved the question.