After having certiorari vacated and being remanded back to the Federal Circuit in the wake of decision of the Supreme Court of the United States in Bilski v. Kappos, (see “Bilski v. Kappos—Back Where We Started?”and to IP Update Vol. 12, No. 7) the Supreme Court has again granted certiorari in Mayo Collaborative Services v. Prometheus Labs., Inc., Supreme Court Case No. 10-1150 (June 20, 2011) to consider the patent eligibility of a claim directed to a medical diagnostic test.

On remand, the Federal Circuit (consistent with its initial decision in this case (see IP Update, Vol. 12, No. 9) concluded the subject matter claimed was “transformative” and therefore passed muster under 35 U.S.C. § 101.  (See IP Update, Vol. 14, No. 1).

The question on which cert was granted is as follows:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.

A similar issue was considered by the Supreme Court several years ago when it granted cert in Laboratory Corp of America v. Metabolite Laboratories, but after full briefing and oral argument, cert was dismissed as having been improvidently granted and no decision was rendered.  (See “U.S. Supreme Court Dismisses LabCorp’s Petition at the Eleventh Hour".)