Metabolite Case: Supreme Court leaves it alone
The Supreme Court has decided not to decide LabCorp v. Metabolite, S. Ct. No. 04-607, a case in which the Court had granted review despite the Solicitor General’s contrary recommendation. Earlier today, it dismissed the writ of certiorari as having been improvidently granted. (As appellate lawyers say, the Court “DIGged it.”)
Dennis Crouch’s Patently-O summarized the matter thusly in October 2005:
This case revolves around claim 13 of Metabolite’s U.S. Patent No. 4,940,658
13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:
assaying a body fluid for an elevated level of total homocysteine; and
correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.
Thus, the method comprises two steps, (i) assaying a body fluid and (ii) correlating the measure with a mineral deficiency.
Reviewing LabCorp’s brief on the merits, as well as a number of amicus briefs, Crouch reported in December 2005 that “[a]ccording to LabCorp, the claim involves ‘no actual invention beyond the scientific discovery it recites.’ The claimed correlation is a scientific principle or law of nature, and its discovery alone cannot be patentable,” according to LabCorp.
I spent the day at Mount St. Helens (in Washington state), so I’m getting the news rather late. After I’ve had a chance to read Justice Breyer’s dissent from the dismissal of the case, I’ll share some thoughts about how future litigants might use the Metabolite litigation as a resource for arguments about the scope of patentable subject matter.
It seems to me that this is a transitional period for the Court. Of course, it’s a little disappointing that the Court ducked the issue, but I’d rather see them duck an issue they’re not prepared to address than set bad precedent. And if, as Breyer says, “this case is not at the boundary” and doesn’t require the Court to consider the precise scope of the doctrine, then maybe this isn’t the best case to announce new policy.
Comment by Rick Wilhelm — June 22, 2006 @ 6:26 pm
Upon further reflection and reading Philip Mann’s comments, Breyer’s dissent really troubles me. It seems to me that Mann is correct, when he says “virtually every invention uses — and indeed relies on — the laws of nature and other ‘natural phenomena.’” and that it makes no sense to say that a specific method based on “natural phenomenon” phenomenon is unpatentable subject matter. Breyer is troubled that the patented process “no more than an instruction to read some numbers in light of medical knowledge,” medical knowledge that was unknown at the time of the patent application in the 1980s, but which is common knowledge in the medical community in 2006. Breyer implies that the process is obvious, but what process isn’t obvious viewed with 20 years of hindsight? Maybe one based on quantum mechanics, but not the typical invention. Further, Breyer repeatedly implies the process is obvious. “The process instructs the user to (1) obtain test results and (2) think about them.” If medical tests should be treated differently from other subject matter for public policy reasons, e.g., a shorter patent term or an exemption akin to that provided for medical procedures, then Congress should step up to the plate.
Comment by Rick Wilhelm — June 23, 2006 @ 6:14 am