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The Supreme Court’s long awaited decision this year in Bilski v. Kappos may not have satisfied court watchers and IP lawyers hoping for a bold, groundbreaking decision, but the patent world is nonetheless feeling its effects. In a decision that could have broad ramifications for the burgeoning field of personalized medicine, the Court of Appeals for the Federal Circuit applied Bilski in a ruling Friday in favor of Prometheus Labs. The court reinstated a lawsuit accusing Mayo Collaborative Services and the Mayo Clinic of infringing two patents relating to methods for determining the optimal dosage of drugs with high levels of toxicity for patients suffering from stomach and autoimmune diseases. The decision marks the second time the Federal Circuit has ruled for Prometheus in this case. In 2008 the court reversed a ruling from a Southern California federal district court, which granted summary judgment for Mayo Collaborative Services after finding Prometheus’s patents invalid. On appeal to the Supreme Court, the case was remanded to the Federal Circuit for reconsideration in light of Bilski. In a 23-page decision, the court held that its analysis was unchanged in light of Bilski. In Bilski, the high court held that the long-established “machine-or-transformation test”–in which something is patentable only if it is tied to a particular machine or transforms an object into something completely different–is not the only test to determine if something can be patented. The Federal Circuit, in a unanimous decision by Judge Alan Lourie, found that Prometheus’s patents were not only patentable under the more lenient Bilski standard, but they also satisfied the machine-or-transformation test. The court held that the methods to be patented transformed a patient’s body and bodily sample by way of a machine to determine metabolic levels and drug toxicity. The Supreme Court “declined to adopt any categorical rules outside the well-established exceptions for laws of nature, physical phenomena, and abstract ideas,” Lourie wrote. We spoke to Prometheus’s attorney, Richard Bress of Latham & Watkins. “The court confirmed, once again, that our patent laws protect transformative medical processes to improve the treatment of seriously ill patients, and that protection maintains crucial incentives for continuing innovation in individualized medicine diagnosis and patient treatment,” he said. Edward Reines of Weil Gotshal & Manges, who represented the American Intellectual Property Law Association in an amicus filing, hailed the decision and emphasized the importance of allowing patents such as these in order to encourage innovation. “We’re at the dawn of an era as far as personalized medicine goes,” he said. “Rather than giving everyone the same medicine and the same instructions like ‘take two and call me in the morning,’ this measures how the body is actually processing the medicine and give them the amount they need without suffering side-effects.” Mayo’s attorney, Jonathan Singer of Fish & Richardson, did not return a phone call for comment.

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