September 2010

Looking Ahead

In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 581 F.3d 1336 (Fed. Cir. 2009), the Federal Circuit reversed the district court’s grant of SJ that the claims of the patents-in-suit were invalid under 35 U.S.C. § 101.  The asserted claims recite “optimizing therapeutic efficacy” by administering a drug to a patient, determining the amount of drug in the patient’s system, and recalibrating the drug dosage based on the amount in the patient’s system.  Applying the prior machine-or-transformation test of Bilski, the Federal Circuit held that the claims recite patentable subject matter.  On June 29, 2010, however, the U.S. Supreme Court vacated and remanded the Federal Circuit’s holding in light of the Supreme Court’s decision in Bilski v. Kappos.  On remand, the Federal Circuit ordered the parties to submit simultaneous supplemental briefs by October 1, 2010, to address the effect of the Bilski decision on the disposition of the case.  The Court did not authorize any additional briefing or oral arguments.  A decision on remand is therefore expected by early next year.  See future editions of Last Month at the Federal Circuit for further developments.