The recent case involving Mayo v. Prometheus was a high-profile infringement case based around a patent claiming invention of a specific medical diagnostic test. The Federal Court of Appeals originally ruled that the patent was valid. However, the Supreme Court last week overruled the decision. In their final decision, they cited two references published by one of our Researchers, Associate Professor of Law at Villanova University, Michael Risch. The references were two analytical articles that Risch co-wrote discussing the case. He summarizes the decision on the Madisonian.net blog.
Mayo v. Prometheus Infringement Case
Mayo v. Prometheus is the latest patent law case to be taken to the Supreme Court. As is the case whenever patents are ruled on by SCOTUS, the decision implicates the whole patent industry. As a result, many of patent law’s most prominent commentators (i.e., IPWatchdog and Patently-O) have already expounded diverse opinions on the decision. At Article One we have been following the case closely, and were pleased to hear that a familiar name came up in the decision!
The patent at stake was originally awarded to Prometheus Laboratories for a method of determining the optimal amount of medication to provide a patient based on reading the metabolite levels in the patient once he or she has been given the medication. Mayo Collaborative Services, a subsidiary of the Mayo Foundation, was accused of infringing on the patent by making kits for use by doctors and nurses that included instructions based on the methods so described by the patent.
Mayo then turned the case around, challenging that the patent was invalid because, in their view, the patent described what was a “law of nature.” The case moved through the courts, and the Prometheus patent was eventually declared valid—twice—by a Federal Circuit court. After the Federal Circuit’s second decision, SCOTUS took up the case, and in a unanimous decision last week, declared the patent invalid.
Contributions from the Public
Article One Researcher Michael Risch contributed to the decision, as two articles that he authored were cited by the justices. As he announced in a blog post on Madisonian.net: “[The opinion] cites and adopts (in part at least) a Stanford Law Review article written by Mark Lemley, Ted Sichelman, Polk Wagner, and me called Life After Bilski. In that article, we argue that one should look to the application of abstract ideas to determine whether a claim’s scope is too broad.”
Professor Risch later told us, “Getting cited by the Supreme Court is like the Holy Grail for law professors. Though minor in the grand scheme of things, having my work read is both flattering and exhilarating. It has also opened new doors, as others have looked at my work that might not have before.” Risch also notes that cases like this are very rare, though, and the continued work of Article One in helping support patent quality will remain invaluable after Prometheus.
We congratulate Professor Risch and his colleagues on their success and the honor of being cited in a Supreme Court decision. We’re always thrilled to hear about our Researchers making an impact outside of Article One. While we at Article One, and our clients, regularly see the extent of their impact within the AOP Community, this demonstrates the extent of their expertise and impact on the world of IP. By combining their professional background, personal interests, and experience at AOP, we hope that all of our Researchers will continue to grow and contribute in all of these directions.
To learn more about our Community, visit our Meet the Researchers page.