PROMETHEUS LABORATORIES v. MAYO COLLABORATIVE

No. 2008-1403.

628 F.3d 1347 (2010)

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.

December 17, 2010.


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 were Deanna J. Reichel and John A. Dragseth. Of counsel were Timothy S. Bishop and Stephen M. Shapiro , Mayer Brown, LLP, of Chicago, IL.

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

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

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.

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.

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

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.

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

Before RADER, Chief Judge, LOURIE and BRYSON, Circuit Judges.


LOURIE, Circuit Judge.

This case returns to this court on remand from the Supreme Court for further consideration in light of the Court's decision in Bilski v. Kappos, 561 U.S. ___, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). In Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 581 F.3d 1336 (Fed.Cir.2009), we decided an appeal by Prometheus Laboratories, Inc. ("Prometheus...

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