Prometheus Laboratories Case

Factual Setting And Contractual Controversy

Prometheus Laboratories ('Prometheus') is the exclusive licensee of US Patent Nos. 6 355 623 ('the '623 patent') and 6 680 302 ('the '302 patent'). The claims of both patents relate to 'a method of optimizing therapeutic efficacy' by measuring the level of 6-thioguinine ('6-TG') and 6-methylmercaptopurine ('6-MMP') in the blood of patients taking thiopurine drugs for treatment of an immune-mediated gastrointestinal disease. Prometheus Laboratories, Inc. v. Mayo Collaborative Services et al , 2008 WL 878910 at 1 (S.D.Cal.). Mayo Collaborative Services et al ('Mayo') developed a test to measure the identified metabolites and, after announcing their intention to market the new test (subsequently rescinded), were sued by Prometheus in June 2004 for infringement of the '623 and '302 patents (Ginsburg, 54)

In November 2005, the District Court granted Prometheus's motion for summary judgment that Mayo's test literally infringed claim 7 of the '623 patent. Id. Mayo later filed a motion for summary judgment of invalidity under 35 U.S.C. § 101,3 which was granted in March 2008.

Analysis Of The Contractual Controversy

Both ARUP and American argued that upholding the validity of Prometheus's claims would 'frustrate amici 's mission of advancing medical science'. Brief of Amici Curiae ARUP Laboratories, Inc. and Tricore Reference Laboratories in Support of Defendants-Appellees at 2, Prometheus Laboratories, Inc. v. Mayo Collaborative Services et al , 581 F.3d 1336. The pro-affirmance amici argued that 'medicine in general and clinical chemistry in particular depend critically on the availability of just the kind of knowledge covered by the Prometheus patents'.

They further argued that the patents in question '[s]eek to raid the "Storehouse of Knowledge" ', 'stymie research', and 'make it impossible to validate a laboratory's test results'.

Echoing the arguments made by Mayo in its appeal brief, American argued that the claims do not require ...