C.J. Roberts recuses himself in Lab Corp. v. Metabolite case

The involvement of Roberts' former law firm, Hogan & Hartson, on behalf of Lab Corp. has caused Chief Justice Roberts to recuse himself from Lab Corporation of America v. Metabolite.

-->from WCNC-->

Chief Justice John Roberts took himself out of a patent infringement case November 2, 2005 because of a conflict, acknowledging he made a mistake in taking part in the early stages of the appeal.

Roberts did not explain why he was recusing himself from the case, which justices announced on Monday that they would review.

His former law firm, Hogan & Hartson, had filed the appeal on behalf of Burlington, N.C.-based Laboratory Corp. The company was accused of infringing on the patent for a test that helps predict strokes, heart attacks and dementia.

In February, the Supreme Court had asked the Bush administration to weigh in on whether the case should be argued at the court.

The administration recommended that the justices reject the appeal, so it was somewhat of a surprise when the court agreed to take the case.

The court receives more than 8,000 cases a year but hears arguments in less than 80.

Ethics experts had predicted that Roberts would have to recuse himself from some cases at the Supreme Court because of his extensive financial holdings and ties to his former law firm.

According to an order released late Wednesday, a second vote was taken on hearing the patent case — without Roberts — and the justices again agreed to hear it. Arguments will be held next year.

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The case is Laboratory Corp. of America v. Metabolite Laboratories, 04-607.

Claim 13 of Metabolite’s U.S. Patent No. 4,940,658 is at issue:

13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

According to Lab Corp., “such a vague claim cannot be valid; for if it could be, parties could claim patent monopolies over basic scientific facts rather than any novel inventions.” Although using the word --vague--, this sounds like a patentable subject matter argument, rather than a 112 P2 argument.

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This case had been discussed earlier on IPBiz:

The case is Metabolite v. Laboratory Corp of America dba LabCorp, 370 F3d 1354 (CAFC 2004). The Supreme Court is interested in whether the patent in question (to Metabolite, on a method to diagnose a vitamin B-12 deficiency) might be invalid as unpatentable subject matter under Diamond v. Diehr.

**UPDATE

Of the issue of patenting correlations, one might contemplate the recent correlation of "apple-shaped body" with heart attack risk.
From MedPageToday.

Dr. Sharma and colleagues showed last year with Interheart data that abdominal obesity accounts for about 90% of the risk for myocardial infarction around the world, with eight other risk factors -- including cigarette smoking, diabetes, poor diet, and lack of exercise -- accounting for the rest.


Now, Dr. Sharma and colleagues reported that of several measures of obesity, including BMI (body mass index), the best predictor of heart attack risk is the waist-to-hip ratio.


"It just reinforces what we've known for a long time -- the whole apple-shaped, pear-shaped thing," he said. "What's new here is that BMI falls right out of the equation."

So, if Dr. Sharma and friends had timely filed a patent application, should this type of work lead to a patent claim:

A method for detecting heart attack risk in humans comprising the steps of:

assaying the waste-to-hip ratio in a human; and

correlating an elevated level of waste-to-hip ratio in said human with an increased risk of heart attack.

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More on the issues of Metabolite is here.