June 28, 2006
In a closely watched matter, the Supreme Court tossed out a patent case that it had earlier agreed to hear. The result is that the "law of nature" doctrine in patent law remains unchanged.
The case was LabCorp v. Metabolite. Metabolite, an affiliate of the University of Colorado, was set up to bring an invention by two of its medical school professors to clinical application. Also on the side of Metabolite was Competitive Technologies, a Connecticut company that assists in commercializing inventions of universities. Both were represented throughout the proceedings by Gibson Dunn & Crutcher.
The professors discovered that elevated levels of an amino acid called homocysteine are indicative of deficiencies in two vitamins, namely B12 and folate. Such deficiencies are associated with neuropsychiatric disorders, vascular disease and other medical problems. The professors’ patent covers the diagnostic method of assaying for elevated levels of homocysteine and correlating the results with deficiencies of the vitamins.
LabCorp is a large medical testing company which offered homocysteine assays. Metabolite and Competitive Technologies sued LabCorp in federal court in Denver. LabCorp defended on the basis that the patent was non-infringed and invalid on several specific grounds. The jury rejected both defenses, and the judge sustained the jury’s determinations. The court awarded several million dollars in damages, doubled the infringement damages to account for the willfulness of the infringement, and awarded over a million dollars in attorney fees. LabCorp appealed to the Federal Circuit, which affirmed.
LabCorp then petitioned for Supreme Court review. On its own initiative, the Supreme Court invited the Solicitor General to express his views on an issue that was not raised before in the case, namely whether the patent impermissibly claimed a "law of nature." After reviewing the case with counsel for each party, the Solicitor General recommended that the Supreme Court not take the case.
The Supreme Court decided to take the case anyway. The matter was briefed last winter, and argument was presented to the Court in March. The case attracted much attention in the press and numerous amici briefs from organizations as diverse as the American Medical Association, venture capital and investment banking firms, biotech companies, the American Heart Association, and the Federal Circuit Bar Association.
Last week, the Supreme Court reversed course and dismissed the case on the grounds that its original decision to take the case was "improvident." The effect is that the lower court decisions in favor of Metabolite and Competitive Technologies stand. Three Justices filed a 15-page dissent from the decision to dismiss the case. In the view of those three Justices, the Court should not have dismissed and should have instead invalidated the patent on the grounds that it claimed a "law of nature."
It is clear that a significant minority of the Supreme Court believes that the scope of patentable subject matter as formulated by the Federal Circuit (and by Congress) is too broad. Whether the Court addresses this issue in another case remains to be seen. In the meantime, defendants in patent cases can be expected to offer this additional defense in the hope that a district court may buy it.
The trial and Federal Circuit appeal of this case were handled by Glenn Beaton (Co-Chair of the Intellectual Property Group) and Greg Whitehair in the Denver office, and the Supreme Court argument was by Miguel Estrada (Co-Chair of the Appellate Group), who was assisted on the brief by Mark Perry in the Washington, D.C. office, all of Gibson Dunn & Crutcher.
Gibson, Dunn & Crutcher has one of the country’s preeminent intellectual property practices, with approximately seventy-five lawyers nationwide assisting corporations with their most sensitive and challenging matters. For more information on this decision or to discuss its impact, feel free to contact the Gibson Dunn attorney with whom you work or Glenn Beaton in Denver (303 298-5773; firstname.lastname@example.org) or Miguel Estrada in Washington, D.C. (202 955-8257; email@example.com).
© 2006 Gibson, Dunn & Crutcher LLP
The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.