The second half of March, 2006 is a special period for patent law. The Supreme Court will hear oral arguments in two important patent law cases, and may decide petitions for writ of certiorari in a couple others.
On Tuesday, March 21, the Supreme Court will hear arguments in LabCorp v. Metabolite (04–607). The point at issue hear involves the scope of patentable subject matter. Specifically, the question briefed is whether a patent can validly include a step of ‘correlating a test result’ that arguably monopolizes a basic scientific relationship used in medical treatment ‘such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.’ The Court could also use this case to cut-off patenting of many business-method type inventions. [Review of the LabCorp briefs]. With that in mind, the PTO has pushed-off implementation of any final rules regarding changes to examination of patentability under Section 101. Respondent and several amici have argued that this case is not properly before the court and should simply be dismissed. Full disclosure — I was part of the team that drafted the IPO’s brief arguing that the court should not use this case to further limit the scope of patentable subject matter.
The Metabolite case is certainly important. However, it will only alter our thinking in fringe cases — such as business methods and methods of applying a scientific principle. On the other hand, eBay v. MercExchange (05–130) may have an effect on the value of every patent.
On March 29, the Court will hear the eBay case. It is expected that regulars, Carter Phillips (eBay), Seth Waxman (MercExchange), and Jeffrey Minear (Gov’t) will divide up the sixty-minute argument period. This case involves the question of whether an injunction should issue once a patent is found valid and infringed. EBay, the petitioner, has argued that the current standard, overly favors patent holders, and that the court should take a more equitable approach to determining whether to issue an injunction. Further, when adjudging the equities, a non-practicing entity should have less of a likelihood of obtaining an injunction than would a market competitor. On the other side, MercExchange and the Government both argue for strong patent rights, although neither argue that the right to injunction should be absolute.
Other pending cases include:
- MedImmune v. Genentech (Whether a licensee in good standing can challenge a patent’s validity)(cert granted; petitioner briefs due soon);
- FTC v. Schering Plough (Whether reverse settlement payment from patentee to generic can constitute an antitrust violation)(cert pending; government's position requested)(DDC predicts cert);
- KSR v. Teleflex (Whether references can be combined without explicit suggestion)(cert pending; government’s position requested);
- SmithKline v. Apotex (When appreciation of the invention is required for anticipation)(cert pending; government’s position requested);
- Microsoft v. AT&T (271(f) issue involving export of software, and whether that constitutes a “component”)(cert in briefing stage);
- Nystrom v. Trex & Izumi v. Philips (claim construction issues)(cert in briefing stage)(Izumi brief; Philips response; amicus; Izumi reply).
Hal Wegner has been closely following these cases in his popular ‘top ten’ list.