Supreme Court Hears Patent Case Arguments
From Cyberlaw
High Court Torn on Patent Case
U.S. Supreme Court justices wonder if they should rule on validity of diagnostics method patent.
March 21, 2006
After the U.S. Solicitor General told them they should avoid ruling on a patent on a method of medical diagnosis, Supreme Justices seemed torn at a hearing on the topic Tuesday.
The justices heard arguments by plaintiff Laboratory Corp. who claimed that a patent held by defendant Metabolite covers a natural phenomenon (see Methods Patents Go to Court).
If the patent were found valid, it might call into question laws preventing the patenting of laws of nature, natural phenomena, and abstract ideas.
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.
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. LabCorp had lost at the hands of a jury and an appeals court, and was ordered to pay $6 million in damages.
The patent is on a method of detecting deficiency of two B vitamins by measuring levels of a certain amino acid called homocysteine.
Upon prodding by Justice John Paul Stevens, Mr. Hungar admitted “There seems to be prima facie evidence of invalidity,” according to the National Journal’s TechnologyDaily.
“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.
“Undoing this case would be a good idea,” said Bruce Sunstein, a co-founder of Boston firm Bromberg and Sunstein. “If I had my druthers, I’d follow the government’s advice.”
