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Supreme Court Decision Update - Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc.

supreme1.jpgThere’s not much to Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc. (PDF of the opinion), because the majority of the Court dismissed it. A dissenting opinion provides insight into what this case was about, the arguable invalidity of some patent claims, and why three of the Justices think the Supremes should have rendered a decision.

QuizLaw Analysis: Well, not much analysis to really provide here, since the only substantive discussion is a dissenting opinion, which holds no weight as precedent. Suffice it to say, Justice Breyer thinks the majority took the cheap and easy way out by not deciding this case, to the disservice of the parties and the public at large.

In a one sentence per curiam opinion (an opinion not signed by, or attributed to, any particular Justice), this case was dismissed because the Supremes ruled that the original writ of certiorari should not have been granted. This decision was made by five of the Justices, as three others filed a 15 page dissent, and Chief Justice Roberts wasn’t involved in the case.

The 15 page dissent was penned by Justice Breyer, and joined by Justices Stevens and Souter. Breyer explains that, back in the 80’s, some doctors found that there was a relationship to high levels of homocysteine, an amino acid, in someone’s blood and deficiencies of two vitamins. They eventually obtained a patent with several claims protecting methods of testing for homocysteine and, thereby, diagnosing these vitamin deficiencies. This patent eventually became owned by Metabolite Laboratories. In 1991, Laboratory Corporation of America Holdings (“LabCorp”) licensed this patent from Metabolite so that it could use the test, and it did use the test and paid royalties until 1998. By then, other ways of testing for homocysteine had popped up, and LabCorp started using one of these other tests. It didn’t pay royalties to Metabolite for using this new test - while the license agreement required them to pay royalties for using another test if that test fell within the scope of Metabolite’s patent, LabCorp decided that the patent didn’t meet this qualification. Metabolite saw it otherwise, and sued LabCorp for patent infringement and breach of the license agreement. It’s claim for patent infringement was a little different, arguing that one of the patent claims protected the use of any test (theirs or another) to find a correlation between homocysteine and the vitamin deficiencies. In court, LabCorp argued that this patent claim was invalid as it described a basic scientific relationship, which is not entitled to patent protection. The court didn’t buy this argument, and declared the patent valid. This decision was essentially affirmed by the Federal Circuit, although it didn’t address LabCorp’s argument about the claim essentially protecting a law of nature.

The Supremes originally granted cert to decide whether this claim, as construed and applied by the lower courts, would be invalid for wrongfully affording patent protection to a law of nature. According to Breyer, however, the majority basically decided that cert was wrongfully granted, based on a procedural reason (in the lower courts, LabCorp did not make reference to section 101 of the Patent Act, which is the section generally thought to forbid protection of laws of nature) and a practical reason (that the Supremes would benefit from getting the Federal Circuit’s take on the issue, since it was ignored during the original appeal). However, Breyer thinks the Court should have decided this case anyway. He argues that the procedural reason is weak, since LabCorp argued “the essence of its present claim” to the lower courts, even if it didn’t explicitly reference section 101. And he also thinks the practical reason for denying cert is weak, because the issue has already been briefed and argued by the parties to the Supremes, and there is a comprehensive record. Finally, Breyer thinks it’s in the public interest to decide this issue sooner, rather than later.

After scolding the majority, Breyer looks at the merits of the case and decides that the patent’s claim is invalid, even if one uses a narrow interpretation of the Patent Act’s prohibition against protecting laws of nature and abstract ideas. He believes that the simple fact that there’s a correlation between the presence of homocysteine and the relevant vitamin deficiencies is clearly a natural phenomenon, and he doesn’t buy Metabolite’s argument that its patent claim is actually an application of this unprotectable relationship. He says the claim amounts to instructing someone to get homocysteine test results and then to “think about” the results, which is not a real process in the patent sense. In light of this position, Breyer goes back to the public interest angle, and again says that this case really should have been decided by the Court because the failure “to do so threatens to leave the medical profession subject to the restrictions imposed by this individual patent and others of its kind.” He fears it will prevent doctors from properly doing their job. And even if his analysis of the case’s merits is wrong, he thinks it’s still important to decide the case since it would provide more legal certainty to the issue.