PROMETHEUS LABORATORIES v. MAYO COLLABORATIVE SER.

No. 2008-1403.

581 F.3d 1336 (2009)

PROMETHEUS LABORATORIES, INC., Plaintiff-Appellant, v. MAYO COLLABORATIVE SERVICES (doing business as Mayo Medical Laboratories) and Mayo Clinic Rochester, Defendants-Appellees.

United States Court of Appeals, Federal Circuit.

September 16, 2009.


Attorney(s) appearing for the Case

Richard P. Bress, Latham & Watkins LLP, of Washington, DC, argued for plaintiff-appellant. With him on the brief were J. Scott Ballenger, Alexander Maltas, and Gabriel K. Bell. Of counsel was F.T. Alexandra Mahaney, Wilson, Sonsini, Goodrich & Rosati, of San Diego, CA.

Jonathan E. Singer, Fish & Richardson P.C., of Minneapolis, MN, argued for defendants-appellees. With him on the brief was Deanna J. Reichel. Of counsel was John A. Dragseth.

Christopher M. Holman, University of Missouri-Kansas City School of Law, of Kansas City, MO, for amicus curiae Patent Law Professors Christopher M. Holman, et al.

Jennifer Gordon, Baker Botts L.L.P., of New York, NY, for amicus curiae Novartis Corporation.

Edward R. Reines, Weil Gotshal & Manges, LLP, of Redwood Shores, CA, for amicus curiae American Intellectual Property Law Association. With him on the brief were Jill J. Ho, and Teresa Stanek Rea, American Intellectual Property Law Association, of Arlington, VA.

Jeffrey P. Kushan, Sidley Austin LLP, of Washington, DC, for amicus curiae Biotechnology Industry Organization. With him on the brief were David L. Fitzgerald and Peter S. Choi. Of counsel on the brief was Hans Sauer, Biotechnology Industry Organization, of Washington, DC.

Jay Z. Zhang, Myriad Genetics, Inc., of Salt Lake City, UT, for amicus curiae Myriad Genetics, Inc. With him on the brief was Benjamin G. Jackson.

Roy T. Englert, Jr., Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP, of Washington, DC, for amici curiae Arup Laboratories, Inc., et al. With him on the brief was Daniel R. Walfish.

Katherine J. Strandburg, DePaul University College of Law, of Chicago, IL, for amici curiae The American College of Medical Genetics, et al.

Before MICHEL, Chief Judge, LOURIE, Circuit Judge, and CLARK, District Judge.


LOURIE, Circuit Judge.

Prometheus Laboratories, Inc. ("Prometheus") appeals from the final judgment of the United States District Court for the Southern District of California granting summary judgment of invalidity of U.S. Patents 6,355,623 ("the '623 patent") and 6,680,302 ("the '302 patent") under 35 U.S.C. § 101. Prometheus Labs., Inc. v. Mayo Collaborative Servs., No. 04-CV-1200, 2008 WL 878910 (S.D.Cal. Mar. 28, 2008) ("Invalidity Opinion"

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