The following is excerpted from the June 21, 2011 above-titled Amster Rothstein & Ebenstein LLP Patent Litigation Alert by Charles R. Macedo and Michael J. Kasdan:
The U.S. Supreme Court has granted certiorari for the second time in Prometheus Labs., Inc. v. Mayo Collaborative Servs., 628 F.3d 1347 (Fed. Cir. 2010) ("Prometheus II"), cert. granted, No. 10-1150, 2011 U.S. LEXIS 4764 (U.S. June 20, 2011) to address the issue of whether and in what circumstances a patent claim should be held invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. The patent claims at issue in Prometheus relate to the diagnosis and/or treatment of patients using the drugs AZT or 6-MP. The challenged claims include “administering” and/or "determining" steps, which the Federal Circuit has twice confirmed are "transformative" under the so-called "machine-or-transformation" test.