Following the Fed. Cir. holding that the claims in Intema’s patent (U.S. Pat. No. 6,573,103) on an improved method for determining the risk of a Down’s syndrome pregnancy were patent-ineligible as directed to a law of nature and a mental step, Intema petitioned the Supreme Court to grant cert. on May 16, 2013 (2013 U.S. S. Ct. Briefs LEXIS 2395). Intema urged the Court to consider that the Intema panel holding that Mayo (“Prometheus”) compelled the ruling, was a “miscarriage of justice” and would “eviscerate” claims to diagnostic and screening tests and personalized medicine.
The heart of Intema’s thorough analysis of Mayo, and about every other major decision involving patentable subject matter in the life sciences area, is its argument that the Fed. Cir. has imposed a “rigid rule” (a popular term to get the S. Ct. interested in reviewing a Fed. Cir. decision) that (a) data gathering steps, even if they include novel and non-obvious combinations of known steps, may not be considered all or even part of the “inventive concept” required by Mayo, that ensures that the patent is significantly more that the natural law itself, and (b) that a claimed method that provides test results (Intema studiously avoids the term “diagnosis” for some reason) that determine a (potential) course of action must include a final step that involves physical activity (as opposed to mental activity, such as arriving at a diagnosis).
