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Arlington, VA—The U.S. Supreme Court, at a December 7, 2011 oral argument, appeared to move closer to the Federal Circuit's understanding of patent eligible subject matter.

Mayo Medical Laboratories is appealing a judgment that it infringed a patent owned by Prometheus Laboratories on a diagnostic method for treating Crohn's disease.  Mayo's argument to the Supreme Court is that the claimed method is ineligible for patent protection because it preempts the technology by claiming a law of nature.  However, Mayo’s attorney seemed to have difficulty convincing the Court.

“Despite the Mayo's predictions of dire consequences to medical innovation, the Court showed some skepticism about the way the patent was characterized,” according to Jim Crowne, Director of Legal Affairs for the American Intellectual Property Law Association (AIPLA). 

"Mayo's contentions about the excessive and preemptive breadth of the patent rested to a great extent on Justice Breyer's dissenting opinion in the LabCorp case, but Justice Breyer seemed to pull back from those views.  He explicity recognized the difference between a patent that claims a law of nature and a patent that applies a law of nature,” commented Crowne.

"The Court finally showed some appreciation for the difference between patent eligibility, which is defined by broad statutory categories of subject matter, and patentability, which considers the merits of the invention and the innovation contributed by inventor.  In particular, Justice Scalia commented that Mayo's complaint about the patent's conventional steps are directed to novelty, not to patent eligibility," said Crowne.

AIPLA filed an amicus brief in this case supporting Prometheus.