Tuesday, March 21, 2006

Initial news reports on oral arguments in Metabolite

Coverage of oral arguments in Metabolite by AP was far more accurate than by RedHerring. Validity issues of the patent at issue were addressed by the trial court and the CAFC; basic patentability issues were not.

from the Denver Post via AP:

Several Supreme Court justices appeared hesitant to decide a fundamental question today - what can and cannot be patented? - as the court wrangled over a disputed patent for determining vitamin deficiency.

Justices stressed that the broader question had not been asked in the case, which involves the infringement of a 1990 patent on a method of diagnosing B vitamin deficiencies, until the dispute reached the Supreme Court.

"It seems imprudent of us to discuss it here if it hasn't been discussed in the Court of Appeals," Justice Anthony M. Kennedy said.


Metabolite attorney Miguel Estrada conceded, under questioning by Justice John Paul Stevens, that a doctor could infringe the patent by ordering a homocysteine test with the intent of determining B vitamin levels and then using the test results to infer whether there was indeed a deficiency.

Justice Stephen Breyer said allowing doctors, scientists and computer experts to begin patenting every "useful idea" could establish "monopolies beyond belief." Breyer asked if it would make sense to send the case back to the lower courts.

"What was made by man here?" Justice Antonin Scalia later asked, calling the invention the discovery of a natural principle.

"When there's the presence of one substance in a human being, there is a deficiency of two others." LabCorp originally argued that the patent was overly vague, and that allowed it to use tests, called assays, developed by other companies to measure homocysteine levels. Metabolite Laboratories disagreed and sued.

Whether the court would tackle the broader question of the patent's covering a law of nature remained unclear. Estrada cautioned that answering it could "wreak havoc on the patent world." Chief Justice John Roberts recused himself from the case because his former law firm represents LabCorp.

The case is Laboratory Corporation of America Holdings v. Metabolite Laboratories Inc., et al., No. 04-607.

from USAToday through AP:

But the Supreme Court asked the federal government to weigh in on whether Metabolite succeeded in patenting a law of nature, natural phenomenon or abstract idea — all no-no's under patent law. The Solicitor General's office replied that the question wasn't asked in the lower courts and argued that Lab Corp.'s isn't the case to decide it.

Regardless of the outcome, that the Supreme Court even asked that question guarantees the case's lasting effect on patents and patent law, attorneys said.

from Red Herring, High Court Torn on Patent Case:

At the hearing, Deputy Solicitor General Thomas Hungar repeatedly urged the court to decline to rule on the case, because the validity argument was not addressed by the lower courts. Metabolite’s testimony covered the same ground. [IPBiz: wrong.]

In earlier trials over patent infringement and breach of contract by LabCorp, which used to sublicense the Metabolite patent, the patent had basically been assumed to be valid.[IPBiz: wrong] LabCorp had lost at the hands of a jury and an appeals court, and was ordered to pay $6 million in damages.

“I’m not sure what you want me to say… other than this patent should never have been issued, and that was never raised,” said Justice Anthony Kennedy.

Patent lawyers contacted by RedHerring.com also said that the Metabolite patent was probably invalid, but that the Supreme Court should not use the opportunity to set a precedent on what is patentable.


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