My Mayer Brown LLP colleagues and I just filed a certiorari petition in this patent case, and I thought some of our readers would find the issue very interesting (I know I did). As we argue in the petition,
Prometheus’s claims … attempt to exclude the public from using the results of basic human metabolic testing in the research, diagnosis, and treatment of disease. They do so by claiming protection for the process of recognizing a correlation between the level of certain chemicals in the patient’s blood and the patient’s health…. [T]he claims are silent as to what should be done with such correlations and as a result purport to cover and thus preempt all possible uses of the biological correlations….
Prometheus’s broad patent claims attempt to turn a physician’s thought processes into infringement…. Importantly, Prometheus’s claims do not recite what is to be done once the physician recognizes the correlation [based on blood test results]. As a result, the claims cover and preempt all such uses. They begin and end with observation of the test results. What the physician might do with that observation is irrelevant because simply thinking about the subject suffices to infringe the patent. As Prometheus’s expert testified, if the physician reads an email with the test results, it would not matter if she “crumples it up, throws it away, reads it, acts on it, doesn’t act on it, any assumptions you want to come up with.” The physician infringes the moment she recognizes the correlation.
Plus this is the issue that the Court agreed to hear in Laboratory Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006). The Court didn’t decide the question in Labcorp because the question hadn’t been properly preserved below — but in our case it has been preserved, so it seems pretty likely that the Justices will be interested in our case just as they were interested in that one. (Knock wood.)