Supreme Diagnosis

This week should be a fun one for diagnostic companies and the venture funds who back them. On Tuesday, March 21, the Supreme Court will hear oral arguments in LabCorp v. Metabolite (04-607). Dennis Crouch over at Patently-O has done a fine job documenting the issues to be considered, including links to briefs from big guys and small weighing in on this case (including one jointly submitted by Mohr-Davidow Ventures).

The case revolves around whether Metabolite's claim 13 (U.S. Patent No. 4,940,658) is too broad to enforce:

13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

Thus, the method comprises two steps, (i) assaying a body fluid and (ii) correlating the measure with a mineral deficiency. Metabolite has other, more specific claims for assaying a body fluid for an elevated level of total homocysteine, but those aren't in dispute. LabCorp (and other briefs) contend that patenting the correlation step goes too far, stopping even doctors from mentally correlating a homocysteine test result to specific deficiencies. They claim that patenting that correlation is just patenting natural laws -- a big no-no in patent caselaw.

I haven't read all the briefs myself so I won't venture to guess who should win here. I will, however, guess there are a lot of venture dollars riding on the outcome -- particularly where diagnostic correlations and business methods drive value. A key hope, by both sides is that whatever result will be narrowly tailored to avoid whacking IP value across the spectrum of startup and conglomerate patent portfolios.

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On a different note, Dennis also provides some great coverage on eBay v. MercExchange (05-130) coming before the Court later this month, and, specifically, whether an injunction should issue once a patent is found to be valid and infringed. On its face it sounds pretty simple, but there are significant equities to weigh -- particularly when plaintiffs aren't practicing their art anyway.