News Release: LabCorp v. Metabolite: Supreme Court Declines Opportunity to Define Boundaries of Patent Law; CCIA Disappointed by Decision

File Under: 2006, Copyright

Jun 22, 2006

For Immediate Release

In a closely watched patent case, the Supreme Court dismissed as improvidently granted an appeal of a lower court’s holding that merely thinking about two phenomena at the same time could be patented, held today. The Court’s dismissal of LabCorp v. Metabolite (No. 04-607) left standing a controversial decision from the specialized patent appeals court, the U.S. Court of Appeals for the Federal Circuit. The Court's order leaves undisturbed the Federal Circuit's decision that merely “correlating” a test result with a common vitamin deficiency infringed a patent held by Metabolite. The LabCorp case addressed the heart of the issue of patentability – a core question in patent law which divides unpatentable “abstract idea” from patentable processes. CCIA is dismayed that the Court declined this opportunity to restore meaningful boundaries to the ever-growing U.S. patent system.

CCIA has repeatedly called for the Court to rein in the Federal Circuit. In two “friend-of-the-court” briefs, CCIA had argued that LabCorp illustrated the larger problem of the Federal Circuit’s radical expansion of patentable subject matter, which has led to problems such as the much-maligned “business method” patents. In part due to Federal Circuit decisions that removed meaningful limits on patentability, patents have mushroomed to include everything from sports moves and yoga positions to movie plots. CCIA’s brief argued that the Supreme Court should reassert its own precedents to “remedy the dysfunctional system that the Federal Circuit has created: one which encourages opportunism while undermining innovation.”

“A majority of the Court failed to recognize that patent law is out of control,” said CCIA President and CEO Ed Black. We had hoped that the Court would heed the call to restore order to patent law and ensure that it serves its purpose of promoting innovation.”

"We can take some small solace in the dissent from the dismissal order by Justices Breyer, Stevens, and Souter, which raises the question of whether patent law presently serves its statutory objectives. If nothing else, LabCorp's dismissal demonstrates that legislative reform to restore balance to our intellectual property laws is urgently needed," said CCIA Senior Counsel Matthew Schruers.

Read the dissent here.

Contact: Will Rodger, 202-783-0070 ext. 105