In Lab. Corp. of Am. Holdings v. Metabolite Lab., Inc., the U.S. Supreme Court dismissed Laboratory Corporation of America Holding’s (LabCorp) petition over a strong dissent by Justice Breyer (joined by Justices Stevens and Souter) arguing that the patent claim in issue was directed to a “natural phenomena” and was therefore invalid. The dissent also found fault with the U.S. Court of Appeals for the Federal Circuit’s holding in State Street Bank, suggesting that its core holding is too broad and inconsistent with Supreme Court jurisprudence.
Though the issues had been fully briefed and argued by the parties, the government and 20 amici (and sub judice for many months), the Supreme Court dismissed LabCorp’s petition for certiorari as improvidently granted in a one-line per curium decision. Its decision leaves open many questions about possible changes to U.S. law regarding the protectable scope of and the exclusion from patent protection of “laws of nature, natural phenomena, and abstract ideas.” As explained in the 15-page dissent, the “technical procedural reason” for the dismissal related to an alleged failure by petitioner LabCorp to make express reference to §101 of the Patent Act in the proceedings below. As background, the question before the Court, though not specifically couched in terms of §101, had implicated the “natural phenomena” or “law of nature” issue. According to the dissent, the Court had already decided in Parker v. Flook (1978) that this issue “most comfortably fit[ ]” within the context of §101.
The dissent made clear its position that the issue of whether a “natural law” or “natural phenomenon” was patentable was of constitutional dimension, noting that “too much patent protection can impede rather than ‘promote the Progress of Science and useful Arts,’ the constitutional objective of patent and copyright protection” (emphasis in original). The dissent also cited Diamond v. Dier (1981) as a statement of Supreme Court jurisprudence excluding from patent protection laws of nature, natural phenomena and abstract ideas.
The claim at issue is directed to a method of “correlating” test results with potential vitamin deficiencies. The claim recited the steps of correlating an “elevated level of total homocysteine” with a “deficiency of cobalamin or folate.” At trial the inventors had admitted that the “correlating step” simply consisted of a physician’s recognizing that a test shows an elevated homocysteine level. The inventors even went so far as admitting that since the relationship between homocysteine and vitamin deficiency was now well known, the “correlating” would automatically take place in the mind of any competent physician.
The dissent concluded that such a claim did not even fall near “the boundary” of the natural phenomena doctrine, and the claim would be “invalid no matter how narrowly one reasonably interprets that doctrine.”
The dissent also took direct aim at Metabolite’s reliance on the Federal Circuit’s 1998 State Street Bank decision, using language that could be viewed as heralding the unraveling—or at least retrenchment—of that landmark decision. The dissent stated that although State Street Bank “does say that a process is patentable if it produces a ‘useful, concrete, and tangible result’…this Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held to the contrary.”
When the dissent is viewed in the context of Justice Kennedy’s concurrence in Ebay, Inc. v. MercExchange, LLC (joined by Justices Breyer, Stevens and Souter), which discussed the “potential vagueness and suspect validity” of business method patents, it would appear that as many as four justices may be ready to more fully consider the appropriate scope of §101 and the State Street Bank doctrine. This is likely to have a restraining effect on how the Federal Circuit cites and applies its own State Street precedent in the future.
Chief Justice Roberts did not participate in consideration of the case.