Monday, January 08, 2007

"Year of the tech patent lawsuit"

Erika Morphy described Metabolite v. Labcorp in the following way:

The particular claim in the patent that was challenged was quite general, covering a standard testing process and then correlating the results to a possible deficiency.

Although Morphy noted --Metabolite had licensed this patent from the patent management firm that owned it,-- she did not mention that the inventors of the patent were university professors.

She quoted Michael Shuster: "The Supreme Court took the case to address whether this claim improperly claimed a 'law of nature' because any doctor would infringe the claim merely by looking at a test result once they knew the correlation between the analyte measured and the vitamin deficiency it reflected."

IPBiz notes that Claim 13 of Metabolite’s U.S. Patent No. 4,940,658 reads as follows:

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.

It does not cover "a standard testing process." It is a method "for detecting a deficiency of cobalamin or folate" that can employ ANY method of measuring "an elevated level of total homocysteine." Whether a correlation rises to the level of a "law of nature" may be questioned. Morphy didn't mention that the scientific colleagues of the inventors did NOT believe the correlation when initially presented. [IPBiz is not taking a position on the patentability of this claim.]

Morphy also wrote: These particular issues, though, are by no means dead -- they are largely the same put forth in the KSR case, which is re-examining how close an innovation can resemble an earlier one and how to decide when it is too close.

IPBiz notes that the "patentability of a law of nature" issue in Metabolite is COMPLETELY DIFFERENT from the motivation/obviousness issue in KSR v. Teleflex, and the "largely the same" remark of Morphy is wrong.

Morphy also mentioned the MedImmune case (which looks at whether a patent licensee can challenge the validity of patents under the license while honoring the license.)

Morphy described the RIM v. NTP case as one in which an e-commerce patent has been challenged by a small company [IPBiz: RIM small?] and which has led to a steady call for reform by the software industry.


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