Patent holders are breathing a sigh of relief with today's dismissal of LabCorp v. Metabolite -- a case pending before the Supreme Court. That case had the potential of dramatically altering the landscape of patentable subject matter -- especially relating to method patents. The case was dismissed as improvidently granted (DIG). In the IPO Amicus brief, we made this argument (as well as others) [IPO Brief]
Dissent: Three justices, led by Justice Breyer would have heard the case and would have found the patent invalid:
There can be little doubt that the correlation between homocysteine and vitamin deficiency set forth in claim 13 is a "natural phenomenon." . . . [The claimed] process instructs the user to (1)obtain test results and (2) think about them. . . . At most, respondents have simply described the natural law at issue in the abstract patent language of a "process." But they cannot avoid the fact that the process is no more than an instruction to read some numbers in light of medical knowledge.
The dissent also took shots at the State Street decision that started the business method craze.
Neither does the Federal Circuit’s decision in State Street Bank help respondents. That case does say that a process is patentable if it produces a "useful, concrete, and tangible result." But this Court has never made such a statement and, if taken literally, thestatement would cover instances where this Court has held the contrary. The Court, for example, has invalidated a claim to the use of electromagnetic current for transmitting messages over long distances even though it producesa result that seems "useful, concrete, and tangible." Morse. Similarly the Court has invalidated apatent setting forth a system for triggering alarm limits inconnection with catalytic conversion despite a similarutility, concreteness, and tangibility. Flook. And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes,decimal figures into binary figures—even though theresult would seem useful, concrete, and at least arguably (within the computer’s wiring system) tangible. Gottschalk.