Federal Circuit: Prometheus

In December the Federal Circuit issued a ruling in Prometheus Laboratories v. Mayo Collaborative Services, an important test of where the patent-law winds might blow next, in the wake of last summer's Bilski decision from the Supreme Court.

You'll recall that in June 2010 the Supreme Court rejected the notion that Bernard Bilski was entitled to a patent on certain abstract ideas for hedging against energy commodity price increases. Although four of the Justices wanted a bright-line rule against "business method" patents in general, that fell short of a majority, and did not represent the judgment of the court, which as expressed in Justice Kennedy's decision was a rather ad hoc this-case-only sort of thing.

In the Prometheus case, the lab named after the god chained to a rock claims a right to a method of determining the proper dosage of a particular drug for a particular patient. The drugs in question are known as 6-MP and AZA, both of which turn into certain metabolites within the human body. The method, then, is to monitor the patient, determine the level of these metabolites, and keep increasing the dosage until those metabolites get into the desired range. If they are present in an amount above the desired range, decrease the dosage!

Mayo Collaborative argued that the way the body metabolizes 6-MO anbd AZA is a natural phenomenon, that natural phenomena are just as unpatentable as are abstract ideas, and that thus under Bilski this patent should be disallowed.

Even before the resolution of Bilski, this argument was successful before the district court. But the appeals court, the first time it heard this case, before the Supreme Court had decided Bilski, held for Prometheus. After Bilski, SCOTUS sent Prometheus back to the Federal Circuit for reconsideration.

The news then is that the circuit court judges have now taken the position: we have reconsidered it, only to conclude that we were right the first time around.

More thoughts on this case tomorrow.