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Supreme Court justices appeared reluctant on March 21 to decide a key patent law case in a way that would, as one justice put it, establish “monopolies in this country beyond belief” over naturally occurring phenomena. Justice Stephen Breyer expressed that concern during oral arguments in Laboratory Corporation of America v. Metabolite Laboratories Inc., a dispute that tests the scope of patentability. Other justices indicated sympathy with the solicitor general’s view that the case should be sent back to lower courts for further review. The case could help resolve a festering debate in patent law over whether a basic scientific phenomenon can be patented and, by extension, whether business strategies or other less tangible creations can also be patented. In the Metabolite case, names of inventors, including Samuel Morse and Alexander Graham Bell, were invoked during a vigorous debate that indicated justices have heard the concerns of commentators who fear that too many ill-defined patents are being granted for inventions better described as discoveries of nature. “What was made by man here?” Justice Antonin Scalia asked repeatedly, referring to the Metabolite patent at issue in the case. The patent is for a test that signals serious vitamin B deficiencies in patients by measuring levels of homocysteine, an amino acid, in bodily fluids. But the patent also covers the basic correlation in nature between elevated levels of homocysteine and the vitamin B deficiency that makes the test effective. Man provided “the inventive spark” that made the correlation and exploited it replied Metabolite’s lawyer, Gibson Dunn & Crutcher partner Miguel Estrada. But Jonathan Franklin, the lawyer for Laboratory Corporation of America, which challenged the patent, said that if Metabolite’s patent is upheld, then “Einstein could have patented E equals mc squared.” By patenting the correlation that makes the vitamin deficiency test work, Franklin said, Metabolite has “preemptive sweep” over all other tests, past and future, that draw conclusions from blood tests. Physicians who draw similar correlations in their work would also be infringers, Franklin suggested. Franklin is a partner at Hogan & Hartson, the former employer of Chief Justice John Roberts, Jr. Because of that connection, apparently, Roberts recused himself in the case and left the courtroom as the argument began. Scientists patented the test for detecting vitamin B deficiencies in 1986. Metabolite sublicensed the patent to LabCorp Holdings, which performed the widely used test from 1992 to 1998, paying Metabolite a royalty each time it supplied a doctor with a homocysteine test. But in 1998 LabCorp began using a different method for measuring homocysteine and stopped paying royalties to Metabolite. The company sued, claiming patent infringement, and a federal district court jury in Colorado agreed. LabCorp was fined and enjoined from using any homocysteine test. The U.S. Court of Appeals for the Federal Circuit affirmed, finding that the patent was infringed whenever a physician made the association between elevated homocysteine levels and vitamin deficiency. In its appeal to the high court, LabCorp said that as construed by the Federal Circuit, the patent gave Metabolite exclusive rights over “a basic scientific fact” akin to the laws of gravity. Metabolite counters that the patent is valid and properly drawn. The case has drawn wide interest, including an opinion piece March 19 in The New York Times by best-selling author Michael Crichton. “We grant patents at a level of abstraction that is unwise, and it’s gotten us into trouble in the past,” Crichton wrote. “Basic truths of nature can’t be owned.” A version of this story originally appeared in Legal Times.

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