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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 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.”
Tony Mauro is the U.S. Supreme Court correspondent for Legal Times, a Recorder affiliate based in Washington, D.C.
