Authored by Erika H. Arner, Charles Collins-Chase, and Justin R. Lowrey
Today the U.S. Supreme Court decided the fate of three patent cases whose resolution depended largely on the Court's holding in Bilski v. Kappos. The Supreme Court's decision on whether it would hear argument in Classen Immunotherapies, Inc. v. Biogen IDEC, Mayo Collaborative Svcs. v. Prometheus Labs., and Ferguson v. U.S. Patent & Trademark Office, had been pending since before the Court heard argument in Bilski on November 9, 2009.
The Supreme Court denied certiorari in Ferguson, a case in which the Court of Appeals for the Federal Circuit held that a method for marketing a product and a "marketing paradigm" were abstract ideas not eligible for patenting under § 101. However, the Supreme Court granted certiorari and then vacated and remanded Classen and Prometheus for further consideration by the Federal Circuit in light of the decision in Bilski v. Kappos. The Federal Circuit, applying the "machine-or-transformation" test it created in its 2008 en banc opinion in Bilski, upheld claims for diagnostic and treatment methods in Prometheus while holding those in Classen to be patent-ineligible, but yesterday the Supreme Court overturned this test as too restrictive and not supported by the Patent Act or Supreme Court precedent. Both Classen and Prometheus have been closely watched in the biological and pharmaceutical fields, and the Federal Circuit's opinions on remand may shed new light on the scope of § 101 and how the Supreme Court's Bilski v. Kappos holding will apply to other important cases in the future.
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