What’s patentable? What’s not?

The final patent case for the October 2005 Term, the decision in which we still await from the Supreme Court, is LabCorp v. Metabolite. LabCorp, although it has some procedural warts, allows the Supreme Court to venture into this “patentable subject matter” question anew in the context of a medical diagnostic test. The Court’s last two forays into the patentability of biology-related inventions — Diamond v. Chakrabarty (1980) and JEM Ag Supply v. Pioneer Hi-Bred (2001) — focused on the patentability of genetically modified microorganisms, and plant seeds, respectively.

Dennis Crouch (Patently-O) has some fun speculating about what Justice Kennedy’s concurrence in yesterday’s eBay injunction case (for himself and Justices Stevens, Souter, and Breyer) may portend for the decision in LabCorp.

I agree with Dennis that Justice Kennedy’s concurrence strongly suggests these same four justices will be deeply skeptical that the medical assay claim at issue in LabCorp is patentable. (For Justice Stevens, this skepticism is longstanding. He authored the Court’s opinion in Parker v. Flook (1978) and a vigorous, lengthy dissent from the Court’s decision in Diamond v. Diehr (1981). Talk about biding one’s time!)

But what about the fifth vote (or more)? Dennis seems to suggest that Justice Kennedy’s concurrence tips the LabCorp majority’s hand a bit: “Justice Kennedy’s concurrence that derides business method patents appears to foreshadow the outcome [in LabCorp].” He could well be right. I wondered though, as I read eBay, whether it was a sign the Court is not striking down the claim in LabCorp … on the theory that the Kennedy Four in eBay, knowing they had failed to muster a majority in LabCorp, were all the more determined to speak plainly, and a bit sharply, about the problems with the contemporary patent system that make automatic injunctions especially imprudent (assuming, for a moment, the merits of that critique).

We’ll know the LabCorp lineup soon enough. What’s more, we’ll know quite a bit more about the likely future course of practice under eBay from the role the Kennedy eBay Four plays in explaining what is, and isn’t, patentable subject matter.