This is an important case for physicians. It will no doubt re-appear in the
Supreme Court in the next few years.
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High Court Dismisses Patent Case
Legal Times
The Supreme Court on Thursday dismissed a closely watched patent case on whether
a naturally occurring scientific relationship can be patented. The Court's
surprise action came in Laboratory Corp. v. Metabolite Laboratories, a dispute
over the patentability of a correlation between blood composition and a vitamin
deficiency. But an unusual dissent by Justice Stephen Breyer hinted that the
case was dismissed because the patentability issue was not squarely raised
before the Federal Circuit.
--
http://www.law.com/jsp/article.jsp?id=1150967117309
High Court Dismisses Patent Case
Tony Mauro
Legal Times
June 23, 2006
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The Supreme Court on Thursday dismissed from its docket a closely watched patent
case, saving for another day a decision on whether a naturally occurring
scientific relationship can be patented.
The Court's surprise action came in Laboratory Corp. v. Metabolite Laboratories,
a dispute over the patentability of a correlation between blood composition and
a vitamin deficiency. The dismissal came without explanation. But an unusual
dissent by Justice Stephen Breyer hinted that the high court had dismissed the
case because the patentability issue was not squarely raised before the U.S.
Court of Appeals for the Federal Circuit, which ruled on the case in 2004.
Breyer, joined by Justices John Paul Stevens and David Souter, said he would
have ruled on the case anyway, in part because physicians could become
unwitting patent infringers whenever they make the same connection between the
presence of a certain amino acid in a patient's blood and vitamin B deficiency
that was included in Metabolite's patent.
A decision in the case could have had an effect on not only medical or
scientific developments but also certain "business method" patents that have
been challenged as unpatentable.
But with the Court ending the case as it did, "it became a nonevent," says
Michael Barclay, a patent specialist at Wilson Sonsini Goodrich & Rosati. Even
though the net result of the high court's action is to let the federal circuit
ruling stand, he says, that circuit ruling has no broad importance because the
Supreme Court believes the patentability issue went undecided.
"Much of the patent community should express a sigh of relief," says Edward
Reines, a patent partner at Weil, Gotshal & Manges, who speculated that retired
Justice Sandra Day O'Connor had, while she was on the Court, provided the fourth
vote to grant review.
"The issue will be back again," says Foley & Lardner partner Andrew Rawlins, a
former patent examiner.
In the case before the Court, scientists in 1986 patented a test for detecting
vitamin B deficiencies. It measured the presence of an amino acid called
homocysteine in a patient's blood. If the level of homocysteine is high, a
vitamin deficiency is likely.
Metabolite sublicensed the patent to LabCorp., which performed the widely used
test. But in 1998, LabCorp. began using a different method for measuring
homocysteine and stopped paying Metabolite royalties. Metabolite sued, claiming
patent infringement, and a federal district court jury in Colorado agreed with
the company. LabCorp. was fined and enjoined from using any homocysteine test.
The federal circuit affirmed, finding that the patent was infringed whenever a
physician made the association between elevated homocysteine levels and vitamin
deficiency.
In its appeal to the high court, LabCorp. said that, as construed by the Federal
Circuit, the patent gave Metabolite exclusive rights over "a basic scientific
fact," akin to the laws of gravity. Metabolite countered that the patent is
valid and properly drawn.
"For at least the time being, the patent system will still operate to motivate
companies and investors like venture capitalists to research, develop and
invest in medical diagnostic and other 'method' inventions," says Gibson, Dunn
& Crutcher partner Glenn Beaton, who represented Metabolite.
Chief Justice John Roberts Jr. recused himself in the case. Roberts does not
explain the reasons for his recusals, but his former law firm, Hogan & Hartson,
represents LabCorp.
For patent lawyers, Thursday's action represents the culmination of an unusual
period of Supreme Court interest in patent law this term. The Court ruled in
two other patent-related cases this term -- eBay v. MercExchange and Illinois
Tool Works v. Independent Ink -- and has asked for the solicitor general's
views on several more. The Court could announce as soon as next Monday whether
it will agree to hear another closely watched patent case, KSR International v.
Teleflex, which focuses on the issue of obviousness, which Barclay of Wilson
Sonsini says "comes up all the time."
