January 2011

Spotlight Info

In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 08-1403 (Fed. Cir. Dec. 17, 2010), on remand from the Supreme Court in light of Bilski v. Kappos, 561 U.S. -- (2010), the Federal Circuit reaffirmed its holding that the asserted method claims are drawn to statutory subject matter under 35 U.S.C. § 101.  In Bilski, the Supreme Court held that the machine-or-transformation test was not the sole test for determining the patent eligibility of process claims.  On remand, the Federal Circuit noted that patent eligibility turned on whether the asserted claims are drawn to a natural phenomenon or whether the claims are drawn only to a particular application of that phenomenon.  The Court explained that the inventive nature of the claimed methods stems not from preemption of all use of these natural processes but from the application of a natural phenomenon in a series of steps comprising particular methods of treatment.  In reversing the district court’s finding of invalidity under § 101, the Court noted that certain steps of the asserted method claims involved a form of manipulation, as required by the machine-or-transformation test.  See the full summary in this issue.