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Dec 29, 2005

Supreme Court: LabCorp Briefing Round I [UPDATED]

InfringingProducts008LabCorp v. Metabolite (on writ of certiorari).

This case involves a patented method of correlating a body protein level with a vitamin B deficiency.  (U.S. Patent No. 4,940658).  The claim in question (Claim 13) includes two steps: (1) assaying a body fluid for an elevated level of total homocysteine and (2) correlating an elevated level of total homocysteine with a folate deficiency. (paraphrased).

The patent holder won at trial and at the CAFC.  The defendant, Metabolite, then brought its case to the Supreme Court arguing that the patent is invalid because it “claim[s] a monopoly over 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.”

Interestingly, the question presented is not firmly grounded in any particular rule of patent law.  Rather, it implicitly raises issues of indefiniteness, enablement, written description, and patentable subject matter. (to name a few).  However, the Supreme Court has given some indication that it is most interested in this case because of the issue it raises regarding the patenting of natural phenomena under Diehr.

LabCorp has filed its brief on the merits as have a number of third parties:

Petitioner’s Brief  PDF (211 KB)

In Part I, Petitioner LabCorp’s stance is essentially that the law is correct, but that it has been misapplied in this case.

Claim 13 violates this Court’s longstanding rule barring patents on “laws of nature, natural phenomena, and abstract ideas.”

According 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.  The “trivial pre-solution” activity of assaying “cannot transform claim 13 into a patentable invention.”  Here, Petitioner never strays far from the precedential pillars of Diehr, Chakrabarty, Funk Bros., and Flook.

In Part II, LabCorp goes on to argue that the claim is neither definite, enabled, nor adequately described.  The Brief appears to ask the court to invalidate any claim that includes a “correlating” step unless the process of how to calculate a correlation is spelled out in the specification. 

The Federal Circuit relied on the accepted dictionary definition of “correlate” as meaning “to establish a mutual or reciprocal relationship between.” But nothing recited in the claim or disclosed in the specification tells a practitioner how to actively “establish” a “relationship” between a particular test result and a vitamin deficiency. At most, the Patent discloses that such a scientific relationship exists.

More is required for a valid claim. . . .

In the remaining sections of the Brief, Petitioner argues that, on policy grounds, a very broad claim hinders scientific and technological progress and that the lower court judgment should be reversed.

Solicitor General’s Amicus Brief for the U.S. Government  PDF (165 KB)

The Solicitor General with assistance from the PTO’s counsel has filed its brief that falls closely in line with its prior unsuccessful brief in opposition to the petition for certiorari. 

In line with Petitioner, the Government agreed that the patent “appears to [impermissibly] claim all substantial practical applications of the natural relationship.” However, the Brief specifically states that this case should not be decided on an issue of whether a law of nature has been improperly claimed because the lower court record has not been developed on this issue. Directly addressing Petitioner’s part II, the Government argues that the specification does satisfy the requirements of 35 USC 112 “by describing, enabling, and claiming the method.”

Intellectual Property Owner’s Association (IPO) Brief  PDF (97 KB)

IPO realized that the question presented for review in this case does not directly challenge the current standards for patentable subject matter. However, the Supreme Court has indicated an interest in considering whether the patent-in-suit claimed patentable subject matter. 

IPO believes that the current standards for patentable subject matter, as set forth by the Court in Diehr, correctly delineate between those innovations that should be eligible for patent protection and those that should not. Accordingly, IPO believes that this case should not serve as a vehicle for overturning or altering those standards. Rather, this case should reinforce the standards of Diehr and thus, support the expectation that innovations in yet unknown areas of technology will be eligible for patent protection.

Specifically, IPO argues that a broad scope of subject matter eligibility properly places research and development decision-making into the hands of individuals and private entities rather than in the judiciary. This “free market” approach “beset allocates research and development resources without judicial entanglement.”  The requirements of novelty, nonobviousness, and description protect against over-reaching patents and warrant against further restricting patentability based on subject matter.

* NOTE: I was a coauthor of the IPO brief along with Paul Berghoff and Joshua Rich from MBHB as counsel for IPO.  The IPO Board of Directors approved the Brief.

Affymetrix Brief PDF (104 KB)

Affymetrix is a supplier of commercial DNA microarrays and “has an interest in ensuring that patents not issue on basic laws of nature so as to impede scientific progress in analyzing DNA and gene expression.”  Affymetrix argues that the fact that “elevated levels of an amino acid in the blood correlated to a vitamin deficiency” is a natural phenomenon that leaves claim 13 unpatentable under current precedent.

Interestingly, Affymetrix argues that ambiguity of whether a claim impermissibly covers a natural phenomena should be resolved in favor of invalidity to avoid serious constitutional questions. (citing Feist).

Public Patent Foundation PDF (375 KB)

PubPat argues that the CAFC has gone astray by over-reaching the permissible bounds of patentable subject matter. (Citing Alappat and State Street). Rather, PubPat would have the Court return directly to Flook.

Reviews Coming:

Bear Stearns & Lehman Brothers Amicus Brief PDF (3617 KB)

File Attachment: American Heart Association.PDF (3800 KB)

File Attachment: AARP.PDF (4033 KB)

File Attachment: AMA Brief.pdf (2553 KB)


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