MEMORANDUM
TO: Law Firm
FROM: Janet Constantin
DATE: October 10, 2007
RE: United States Supreme Court decision - Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc., 126 S. Ct. 2921 (2006).
SUMMARY:
Three university physicians developed a more accurate method for testing body fluids for homocysteine by utilizing gas chromatography and mass spectrometry. The physicians had previously discovered that elevated levels of homocysteine could be indicative of folic acid and vitamin B (cobalamin) deficiencies. These findings were published in 1985 and ultimately patented by the doctors. Metabolite had licensed the patent for the improved method of testing. LabCorp agreed that it would give Metabolite 27.5% of related revenues in exchange for use of its license. LabCorp was permitted to terminate the agreement if “a more cost effective commercial alternative was available that did not infringe a valid and enforceable claim of the patent.†Id. at 3. In 1998, LabCorp began using a test produced by Abbott Laboratories. LabCorp did continue to pay Metabolite for the occasions when it did use Metabolite’s test, but it refused to pay Metabolite royalties for its use of the Abbott test, citing that the Abbott test did not fall within the Metabolite test’s scope. Metabolite argued that its claim language of “correlating†an elevated homocysteine level with a certain vitamin deficiency allowed it to monopolize such processes. Additionally, the correlation of such results in the mind of an ordering physician infringed upon Metabolite’s invention, when its product was not used.
Metabolite’s claim of infringement against LabCorp was based upon the process of relating an elevated homocysteine level with a deficiency of either folic acid or vitamin B, rather than the use of a specific test aiding in that process. This broader claim focused on the mental assimilations a doctor would make once he knew that the patient’s homocysteine level was elevated.
The District Court awarded Metabolite damages based upon royalties for LabCorp’s use of 350,000 Abbott homocysteine tests. Id. at 3. The Federal Circuit Court affirmed the lower Court’s decision, reasoning that every doctor who orders and reads the test is a direct infringer. Id. at 4. Although certiorari was granted, it was dismissed as improvidently granted.
PROCEDURAL HISTORY:
The District Court found LabCorp liable for inducing physicians to infringe a patent, which belonged to Metabolite and granted an injunction prohibiting LabCorp from performing any homocysteine-only testing. The Federal Circuit affirmed. Certiorari was granted. The United States Supreme Court dismissed the writ as improperly granted.
JUSTICE BREYER’S DISSENTING OPINION:
Justice Breyer argues that the United States Supreme Court should not have dismissed certiorari granted in this case. He reasons that the importance of the issue and the availability of evidence strongly urge the Court to address these present concerns. Although LabCorp did not question the patentability of the subject material of Metabolite’s patent, Justice Breyer argues that the patent is invalid as a natural phenomenon rather than a patentable process. Justice Breyer also adds that even if other members of the Court were to disagree with his invalidation of Metabolite’s patent, it is of the utmost importance that there be a legal decision in this case for the sake of medicine.
TO: Law Firm
FROM: Janet Constantin
DATE: October 10, 2007
RE: United States Supreme Court decision - Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc., 126 S. Ct. 2921 (2006).
SUMMARY:
Three university physicians developed a more accurate method for testing body fluids for homocysteine by utilizing gas chromatography and mass spectrometry. The physicians had previously discovered that elevated levels of homocysteine could be indicative of folic acid and vitamin B (cobalamin) deficiencies. These findings were published in 1985 and ultimately patented by the doctors. Metabolite had licensed the patent for the improved method of testing. LabCorp agreed that it would give Metabolite 27.5% of related revenues in exchange for use of its license. LabCorp was permitted to terminate the agreement if “a more cost effective commercial alternative was available that did not infringe a valid and enforceable claim of the patent.†Id. at 3. In 1998, LabCorp began using a test produced by Abbott Laboratories. LabCorp did continue to pay Metabolite for the occasions when it did use Metabolite’s test, but it refused to pay Metabolite royalties for its use of the Abbott test, citing that the Abbott test did not fall within the Metabolite test’s scope. Metabolite argued that its claim language of “correlating†an elevated homocysteine level with a certain vitamin deficiency allowed it to monopolize such processes. Additionally, the correlation of such results in the mind of an ordering physician infringed upon Metabolite’s invention, when its product was not used.
Metabolite’s claim of infringement against LabCorp was based upon the process of relating an elevated homocysteine level with a deficiency of either folic acid or vitamin B, rather than the use of a specific test aiding in that process. This broader claim focused on the mental assimilations a doctor would make once he knew that the patient’s homocysteine level was elevated.
The District Court awarded Metabolite damages based upon royalties for LabCorp’s use of 350,000 Abbott homocysteine tests. Id. at 3. The Federal Circuit Court affirmed the lower Court’s decision, reasoning that every doctor who orders and reads the test is a direct infringer. Id. at 4. Although certiorari was granted, it was dismissed as improvidently granted.
PROCEDURAL HISTORY:
The District Court found LabCorp liable for inducing physicians to infringe a patent, which belonged to Metabolite and granted an injunction prohibiting LabCorp from performing any homocysteine-only testing. The Federal Circuit affirmed. Certiorari was granted. The United States Supreme Court dismissed the writ as improperly granted.
JUSTICE BREYER’S DISSENTING OPINION:
Justice Breyer argues that the United States Supreme Court should not have dismissed certiorari granted in this case. He reasons that the importance of the issue and the availability of evidence strongly urge the Court to address these present concerns. Although LabCorp did not question the patentability of the subject material of Metabolite’s patent, Justice Breyer argues that the patent is invalid as a natural phenomenon rather than a patentable process. Justice Breyer also adds that even if other members of the Court were to disagree with his invalidation of Metabolite’s patent, it is of the utmost importance that there be a legal decision in this case for the sake of medicine.