We Dodged a Bullet!

Today the Supreme Court decided NOT to hear the LabCorp v. Metabolite case after all.

Good thing!

Patent law is confused enough already without the Good Justices weighing in on matters scientific.

A question that's always baffled me is why courts and legislatures are so quick and eager to protect copyright holders, while patents, and the unfortunates who own them, get slapped down right and left.

My admittedly untested and no-doubt biased theory is that most judges and lawyers identify far more with "writers" and "artists" than with lowly engineers, scientists and other techno-nerds who often couldn't get dates in high school (including me, alas). It's only natural, I suppose, that they still see the average book, play, Brittany Spears CD, or whatever, as a greater and more deserving creative achievement than, say, the log-periodic antenna.

The dissent in Metabolite demonstrates again that most judges have absolutely no idea of what technology actually is, how basic science actually figures in, or how technical advancements are actually made. Once again we hear the tired platitudes that Einstein's famous equation and Newton's Law of Gravity cannot be patented. But what do these statements even mean? What, precisely, would it mean to "patent" the Law of Gravity? Would it prohibit people from making selling or using it? (And, if so, how does one go about making, importing, selling or offering for sale a scientific law?) Somebody please explain.

Naturally, of course, it's only when someone makes practical use of an idea, such as Einstein's matter/energy equivalence, that patentable subject matter -- at least as defined by Section 101 -- first comes into existence. Once that occurs, why shouldn't those specific applications and uses be patentable, assuming they are new, useful and unobvious?

Turning to the facts of Metabolite and the muddled thinking of the dissenting justices, we're lucky the Court elected not to bless us with their wisdom in this case. The majority thankfully said simply that the original writ of certiorari was "improvidently granted." The dissent, however, elected to demonstrate why federal judges are rarely recruited as research scientists after leaving the bench.

In Metabolite, the inventors discovered a correlation between elevated levels of total homocysteine (whatever that is) and deficiencies of cobolamin or folate in warm-blooded animals (whatever those are -- the chemicals, not the animals). The subject claim recites a "method for detecting a deficiency of cobalamin or folate in warm-blooded animals" by looking for "an elevated level of total homocysteine." In layman's terms, this is similar to assessing someone's health by checking his temperature -- an ancient technique that is based on the natural phenomenon that there is a correlation between elevated temperature and infection. Unless I'm missing something, the basic concept in the Metabolite case is analogous and based on the newly discovered correlation between homocysteine and cobalamin or folate.

According to the dissent, this correlation is simply a "natural phenomenon." I'll accept that. What I don't accept is their nonsensical conclusion that the claimed, specific method based on this phenomenon is "unpatentable" subject matter because it uses this "natural phenomenon."

Huh?

Virtually every invention uses -- and indeed relies on -- the laws of nature and other "natural phenomena." If they didn't, their benefits wouldn't be reproducible by others and no need for a patent would exist in the first place. What's the point of patenting something if the results aren't predictable and repeatable?

And check out the other reason the dissent gives for denying a patent: "the reason for exclusion is that sometimes too much patent protection can impede rather than 'promote the Progress of Science and useful Arts.'" Got it? Your crime, Mr. Inventor, is that you invented "too much." Heretofore, most patents were denied because the inventor invented too little. But now patents should also be denied if the inventor invents "too much." Hmmmm. Guess we better add Goldilocks to the engineering staff so she can tell us what's "just right." (And while we're on the subject of fairy tales, the Court apparently thinks there is no such thing as "too much" protection when it comes to a by now geriatric cartoon rodent. But I'll leave it to someone else to figure that one out.)

Judges often have a romantic view that "inventors" (preferably mad ones!) are some sort of creative geniuses -- artists, if you will -- while real world engineers and scientists who do the actual inventing, are just overgrown grease monkeys. You see this in the "flash of creative genius," "inventive fire," "synergy" and other nonsense the Supreme Court has from time-to-time come up with to justify denying a true inventor his proper reward. (Incidentally, this is why as a plaintiff's lawyer you are well-advised to describe your client to the jury as an "inventor" or "entrepreneur" rather than merely an engineer, scientist or other such "boring" type. Jurors tend to share this bias too.)

While I thank the dissent for entertaining reading, I'm glad the full court did not get their hands on this case. I have quite enough to do keeping up with imaginary claim limitations, disappearing precedents and other mundane problems that crop up in modern patent practice without having also to worry about bull-in-the-china-shop inventors who boorishly invent "too much" and pigishly contribute more than they have any right to to human knowledge and our understanding of the natural world.

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Comments (8) Read through and enter the discussion with the form at the end
Jacob Howley - June 23, 2006 6:44 AM

IMHO, you need to take a deep breath when you're done with the righteous indignation and re-read the very quotes you include here. Breyer doesn't say that too much INVENTION is the problem; it's too many frivolous PATENTS, which ends up locking up subject matter for further research and creating the infamous "thicket" of legal uncertainty, both of which DO (in theory) hinder invention. No one is saying that there's too much invention; rather, Breyer's worried about the current state of the patent system producing too little invention.

A second point that I think you may have missed in the briefs, orals, and so on: There is no method at issue in this patent, and the correlative natural phenomenon at issue is not a mere aspect of the patent. The only original feature of the patent IS the natural correlation. Insofar as the patent requires methods in assaying or examining the chemicals, it specifically permits the user to use any method.
In sum: This case did not concern a method patent. All Metabolite claimed in its patent was the natural correlation - If X, then Y - and we seem to be in agreement with Justice Breyer that this is not kosher.

luke - June 23, 2006 7:04 AM

Boy do you know how to play with lamguage. The Court did not say that Mr. Inventor invented too much but that Uncle Sam gives away too much i.e. too much "excluding" of basic principles which does harm progress.

If you want to know what it mean to allow patenting of say fro example the law of gravity or E=mc^2 it seems to be simple. Whenever scientist or engineer makes calculations based on these theories an infringment would occur even if the calculation is done in your head. I think it makes sense not to hold one liable for infringement just for thinking. Indeed, what if homocysteine level was important in determining the onset of a heart attack then just the mere act of testing could lead to charges of contributory or inducement of infringement.

I do agree with you that the rat does not need more protection. I think we have gone too far with itellectual property protection in general, especially with copyrights.

SF - June 23, 2006 8:45 AM

I think there's a difference between a process that uses (that is, leverages) a natural phenomena and a process that merely includes detecting the natural phenomena and thinking about the natural phenomena.

Phil Mann - June 23, 2006 8:50 AM

I appreciate the comments.

I disagree that the claim is not a method claim. It is. It clearly states a method of detecting vitamin deficiencies by looking for elevated homocysteine levels. Now it may well be invalid for any number of reasons, such as novelty, enablement, indefiniteness, etc., but unpatentable subject matter isn't one of them. Indeed, as I understand it, the parties themselves didn't raise a section 101 challenge -- the Court did on its own. This was a properly thwarted attempt of judicial activism and I'm glad the majority blocked it.

As to "too much protection," well, maybe I put it on a bit thick. But the so-called "patent thicket" problem is not one of law but one of people who don't want to pay royalties. When basic technology is involved, the problem is rarely a lack of licenses -- it's people who resent the need to take one.

On an academic note, I've always wondered how a claim to "E=MC^2" would be worded? A "method of thinking" for example? I think if you actually try to draft a claim, you will find that it either does ultimately specify an actual "process" or falls apart for lack of definiteness or enablement or some other 112 issue.

As to Mickey, I never liked that miserable mouse in the first place.

Inventing It All - June 23, 2006 3:49 PM

The test of homocystine levels was prior art. The "correlation" happened in the heads of doctors. The CAFC found that providing the (pre-existing) test, along with the knowledge in doctors' heads makes providing the (pre-existing) test alone infringement. I find this rather disturbing, even if you don't.

If I patent a correlation between how much you exercise & how your cholesterol level drops, can I prevent you from collecting data on how much you exercise, because a doctor would know of this correlation & thus use it to infringe my claim?

John - June 24, 2006 8:50 AM

Here is what thinking about E=mc2 gets you.

UK Patent 630726

1. A method of generating radio-active
elements or energy or both by means of neutron isotopes, produced by means of a chain reaction in a body in which chain reaction neutron isotopes of differing mass number take part.

That claim belonged to Leo Szilard. He was a brilliant student of Einstein. His contribution, reduced to patentese above, is the application of E=mc2.

Einstein wrote to Roosevelt predicting that someone would think about his equation and create an atomic bomb (and gave evidence that the German's were in fact doing so).

Szilard thought harder. He invented it, then assigned it to the UK to keep it secret.

To be fair, this claim incorporates more than thinking about the relationship of mass and energy. But, the underlying discovery that mass and energy are related is the basis for the claim - an application of natural phenomena.

Diagnosing vitamin B deficiency relies on natural phenomena, but is no less inventive. There are uncounted numbers of metabolites in living beings. Which ones relate to another is only worked out through difficult work. Once it is figured out, the leverage of that knowledge to do something is an invention. Converting a correlation to diagnosis requires application of the correlation. Just like creating energy from isotopes requires application of E=mc2. True, unlike nuclear physics, most of us can understand the application. But, the invention does not disappear in the flash of genius just because we can understand it.

JLC - June 24, 2006 9:18 AM

While I agree that the Justices in dissent need to think a little harder about the scope and purpose of Sec. 101 and how the different patent doctrines fit together and why, there should be an easy way to deal with this type of patent in patent law and 101 is probably the place to do it. The question becomes what the line is when a method claim uses an old test for a new purpose. If you don't draw the line, you allow anyone who discovers a new scientific fact to claim a patent for all tests that measure that scientific fact or natural phenomenon. But if you do draw a line at "natural phenomenon, you open the door wide for lawyers to argue about what is and what is not a natural phenomenon. Something has to give.

This issue is intertwined with the written description requirement. But I don't think you need to go there for this patent.

There probably should be a per se rule that general method claims to make a measurement and then correlate fall outside patentable subject matter, where the doctrine is narrowly construed. This patent is no different than a hypothetical gravity measurement to find the distance between two objects: measure force and compute distance or measure speed and compute distance.

Regardless, as far as I understand the law, this case shouild have been dismissed early on because no "single" entity actually infringes. To have indirect infringement, you need a direct infringement. Here, two different entities performed the two different steps of the claim - assay and correlate. While AFAIK this is a loop-hole in U.S. patent law that sometimes makes sense and sometimes doesn't, I'm pretty sure it applies to this case.

Reader - August 4, 2006 9:24 AM

It's "Britney" Spears, not "Brittany," yo.

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