The U.S. Supreme Court yesterday opted to dismiss a case
having potentially broad implications for the question of
what constitutes patentable subject matter. The Court heard
oral arguments in Laboratory Corp. of America Holdings v.
Metabolite Laboratories on March 21, but decided to dismiss
LabCorp's appeal as improvidently granted. Justice Breyer,
joined by Justices Stevens and Souter, dissented.
At issue in the case was whether Metabolite's patent was
invalid because one cannot patent "laws of nature, natural
phenomena, and abstract ideas." See Diamond v. Diehr, 450
U. S. 175, 185 (1981); 35 U.S.C. § 101. The claim in dispute
involves a method for diagnosing a vitamin deficiency,
and includes only the steps of (1) measuring the level of
certain amino acids, and then, (2) correlating an elevated
level of the tested amino acids with a vitamin B deficiency.
LabCorp argued that this claim amounted to a monopoly
on a basic scientific principle (i.e., the correlation step).
Metabolite countered that its claim was directed to a practical
application, and further that the claim met the criteria of
having a "useful, concrete, and tangible result." See State
Street Bank & Trust Co. v. Signature Financial Group, Inc., 149
F. 3d 1368, 1373 (Fed. Cir. 1998).
's petition was troubled from the beginning. In the
district court below, LabCorp never asserted section 101 as a
defense. Moreover, even in the Federal Circuit, LabCorp only
referred fleetingly to this argument, and the Federal Circuit
opinion did not address the issue. It was the Supreme Court
which thrust the "law of nature" issue to the forefront, asking
for the Solicitor General's view on whether Metabolite's claim
was patentable subject matter under Diamond v. Diehr. The
Solicitor General recommended against granting certiorari
because the issue of natural phenomenon as patentable
subject matter was not sufficiently raised in the lower court.
Despite these concerns, the Court agreed to hear the appeal.
The case has garnered attention because of its important
implications. In particular, critics of State Street hoped that
the Court would take this opportunity to limit patentable
subject matter and accordingly stem the tide of business
method patents. Others, particularly in the drug and
biotechnology industries, were concerned that the Court
would reach too far and potentially eliminate important
diagnosis patents with similar "correlating" limitations.
While Justices Breyer, Stevens and Souter dissented from the
dismissal, the dissent nonetheless addresses the merits and
indicates support in the Supreme Court for limiting patentable
subject matter—at least on the facts of that case. Justice
Breyer opines that "this is not a case on the boundary" and
that the claim would be invalid regardless of how one reads
the "law of nature" case law. But the dissent goes further,
specifically citing State Street and noting that the "useful,
concrete, and tangible result" test from that case has never
been adopted by the Supreme Court and, in fact, is contrary to
precedent. It is not clear whether a majority of the Supreme
Court would take this view, but it may be significant that 3 of
the 8 justices believed that the case should be decided on
the merits in spite of the significant procedural problems. It
would not be surprising to see the Court address the "law
of nature" issue in the near future, particularly as parties on
both sides of the issue are now aware of the Court's high
interest in this area.
For further information, please contact:
Michael J. Sacksteder, Litigation Partner
Darryl M. Woo, Litigation Partner
Heather N. Mewes, Litigation Associate
This update is intended by Fenwick & West LLP to summarize recent developments in the law. It is not intended, and should not be
regarded, as legal advice. Readers who have particular questions about these issues should seek advice of counsel.
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