Multi-Faceted Argument for Patent Eligibility of Medical Treatment Methods in High Court

In a matter before the U.S. Supreme Court, Prometheus Laboratories Inc. responded October 31, 2011 to Mayo Clinic's claim that observed correlations between blood test results and patient health are not patent-eligible subject matter. Prometheus' views were supported by nine amicus briefs, including one by Finnegan partner Erika H. Arner and another by Finnegan partner Denise W. DeFranco. “When considering the patent eligibility of medical diagnostic processes, this court should take care not to disrupt patenting of software and other computer technologies,” writes Ms. Arner on behalf of SAP America Inc. and in favor of affirming the Federal Circuit's opinion. Finnegan partner Denise W. DeFranco filed the AIPLA brief, and added an argument in the context of the recently enacted America Invents Act (AIA). Ms. DeFranco wrote, “In the AIA, Congress amended many provisions of the patent statute, but notably Congress declined to amend section 101, even though the process included numerous occasions for it to consider policy issues concerning patentable subject matter.”