Fish & Richardson won a groundbreaking US Supreme Court case on March 20, 2012 for its client Mayo Clinic in its eight-year patent litigation with Prometheus Laboratories (Mayo Collaborative Services and Mayo Clinic, Rochester v. Prometheus Laboratories, Inc.). The Supreme Court ruled, in a unanimous 9-0 decision by Justice Stephen Breyer, that Prometheus’ two broad drug monitoring patents for using thiopurine drugs to treat autoimmune diseases were invalid and not patent eligible.
Prometheus’ patents had claimed a monopoly over naturally occurring correlations between metabolites of commonly used drugs and the toxicity or efficacy of those drugs, without specifying any concrete use of this correlation. Mayo argued that the Prometheus patents incorrectly claimed a patent monopoly over the right to simply observe a natural phenomenon, i.e. a physician who even thinks about how a patient’s body reacts when certain drugs and dosages are ingested could have infringed the patents.
In the 24-page opinion, Justice Breyer wrote, "We conclude that the patent claims at issue here effectively claim the underlying laws of nature themselves. The claims are consequently invalid."
Fish has represented Mayo Clinic in its litigation with Prometheus since 2004 when Mayo announced it would begin marketing a competing test. Prometheus sued for patent infringement, preventing Mayo's test from being sold. The district court first ruled for Mayo when it invalidated the patents, but the US Court of Appeals for the Federal Circuit ruled in Prometheus’ favor twice that their method was a “transformation” that could be patented. The US Supreme Court issued Mayo Clinic’s petition for certiorari in June 2011 and heard oral argument in December 2011.