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May 29, 2013



How ironic that Mayo was issued this patent. May they be hoisted on their Prometheus petard.

"The claimed methods of the '801 patent include obtaining a biological sample from a patient and determining the patient's genotype for a panel of genes. "

Mayo's claims here also include a step of admininistering a specific drug (or a member of a set of drugs) to patients with specific genotypes that were determined as a result of a testing step recited earlier in the claim. The claims at issue in Prometheus did not include a step of administering a drug based on the result of an earlier diagnostic step. The broadest claims, in fact, did not require an infringer to administer any drug, before or after the diagnostic step.

A more important distinction, perhaps, is that it appears (judging from the specification) that the panel of genes being tested is new. Assuming that the panel is non-obvious (and therefore not "old" or "conventional"), the Prometheus problem would seem to be avoided entirely.

As for being "hoisted on its own petard," I'm certain that Mayo was very much aware of the costs and benefits of raising its defense in the Prometheus case. In terms of the costs, I suspect Mayo, like most clinics, is happy that its doctors are free to think about the implications of the results of old, conventional tests without fear of infringing a patent.

"How ironic that Mayo was issued this patent. May they be hoisted on their Prometheus petard. "

That's what I was thinking. But at least they bothered to put the administering step in there. Although in this case, "administering" may as well be "selling" it seems to me.

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