Supreme Court Sides with Mayo in Patent Battle

The court determined that Prometheus' blood test involved naturally occurring phenomena, and its patents are therefore invalid; the ruling is expected to have broad implications in the scientific community.

The Rochester-based Mayo Clinic on Tuesday announced that the U.S. Supreme Court ruled in its favor in a case against Prometheus Laboratories, Inc.

The case dates back to 2004. At issue was a blood test developed by San Diego-based Prometheus that helps physicians determine the appropriate dosage for thiopurine, a drug used to treat gastrointestinal illnesses. Mayo at one time purchased Prometheus' test but stopped buying it in 2004, when its own researchers created an improved test, the company said.

Prometheus subsequently sued Mayo for patent infringement. A district court ruled in Mayo's favor, saying that the patents at issue involve naturally occurring phenomena and therefore cannot be patented. Following an appeal, a federal court found that the patents were valid and reversed the earlier decision.

Mayo then filed a petition, and the Supreme Court's recent ruling reversed the federal court's decision. The Supreme Court's order states that Prometheus' test involves “well-understood, routine, conventional activity previously engaged in by researchers in the field.”

Mayo Clinic President and CEO John Noseworthy said in a statement that Mayo “chose to pursue this lengthy litigation process because we believed it was in the best interests of our patients.”

“This decision concerns the value of delivering high quality patient care in a timely manner and at an affordable cost,” he said.

According to a report by the Star Tribune, the court's decision has broader implications than how it relates to a blood test.

The ruling essentially means that companies can't patent a medical or scientific idea that depends too much on natural laws, and the case has drawn the attention of hospitals, researchers, pharmaceutical companies, software developers, inventors, and legal observers, the Minneapolis newspaper reported.

Two partners in the intellectual property and appellate groups of law firm Faegre Baker Daniels LLP even released a video, in which they analyze how the decision may impact future patent applications and litigation.

Noseworthy told the Star Tribune that the ruling will spur innovation, but patent lawyer Eric Guttag, who filed a legal brief in support of Prometheus' position, argued that the decision will impede medical innovation because large institutions like Mayo will be able to model their practices after those invented by smaller companies, without compensating the smaller businesses.