July 11, 2019
Authored and Edited by Brandon T. Andersen; Samhitha Muralidhar Medatia; Elizabeth D. Ferrill
In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 2017-2508 (Fed. Cir. July 3, 2019), the Federal Circuit denied a petition for rehearing en banc where the previous panel had held the asserted medical-diagnostic claims in this case unpatentable under the Supreme Court’s Mayo decision. The Court held that the claims in this case were directed to a law of nature, namely the correlation between the presence of particular MuSK autoantibodies in bodily fluid and certain neurological diseases.
The per curium order, however, was accompanied by 8 separate opinions: 4 concurrences (to which 7 judges subscribed) and 4 dissents (offered by the remaining 5 judges). The majority judges’ reading of the Supreme Court’s Mayo decision was that the medical-diagnostic claims in this case must be held unpatentable, although all of them questioned the wisdom of this outcome. The remaining 5 judges wanted to “rethink” their previous interpretation of Mayo, believing that its holding had been extended too far. What all the judges agreed on was that clarification or reevaluation is needed from Congress or the Supreme Court on the correct scope of § 101 as applied to the medical-diagnostic methods in this case.
patentability, patentable subject matter, 35 U.S.C. § 101, Mayo Collaborative Services v. Prometheus Laboratories Inc.
Copyright © 2019 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.