It has been a little more than eighteen months after the Supreme Court issued its opinion on the patent-eligibility of (business) method claims in Bilski v. Kappos. In that time, the Federal Circuit has issued opinions in Prometheus Laboratories, Inc. v. Mayo Collaborative Services, Classen Immunotherapies, Inc. v. Biogen Idec, and Association for Molecular Pathology v. U.S. Patent and Trademark Office (“Myriad”) relating to diagnostic method claims. These decisions came in the wake of the Supreme Court’s Bilski decision, and two of them (Prometheus and Classen) were decided on remand from the Court for reconsideration in view of Bilski. The Federal Circuit decided the Prometheus case on remand, finding (again) that the claims recited patent-eligible subject matter. The Supreme Court has again granted certiorari for Prometheus; oral arguments were heard late last year and a decision is due by the end of the Court’s current term in June. Of the other two diagnostic method claims cases, the Federal Circuit decided that some but not others of the Classen claims were patent-eligible, and that none of the method claims at issue in Myriad satisfied the Supreme Court test for patent eligibility. Petitions for certiorari have been filed in both the Classen and Myriad cases.
These decisions reflect the struggle in the Supreme Court and the Federal Circuit with the scope of patent eligibility for method claims that produce information rather than a tangible product (something reflected a generation ago in the Benson v. Gottschalk, Parker v. Flook, Diamond v. Diehr cases). Given that the question of patent eligibility is completely dependent on the scope and meaning of properly construed claims, it is curious that in none of the pending cases were the claims construed by the lower courts. Here we provide a comparison of the claims in Prometheus, Myriad, and Classen that might shed some light on the reasoning used by the Federal Circuit in arriving at the answers to the patent-eligibility question posed in each of these cases and a guide (subject to Supreme Court review) for drafting patent-eligible diagnostic method claims.
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