Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

PETITIONER: Laboratory Corporation of America Holdings, dba LabCorp
RESPONDENT: Metabolite Laboratories, Inc., et al.
LOCATION: Board of Immigration Appeals

DOCKET NO.: 04-607
DECIDED BY: Roberts Court (2006-2009)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 548 US 124 (2006)
GRANTED: Oct 31, 2005
ARGUED: Mar 21, 2006
DECIDED: Jun 22, 2006

ADVOCATES:
Jonathan S. Franklin - argued the cause for Petitioner
Miguel A. Estrada - argued the cause for Respondents
Thomas G. Hungar - argued the cause for Petitioner, on behalf of United States as amicus curiae

Facts of the case

In the 1980s, research scientists at University Patents, Inc. (UPI) discovered that high levels of the amino acid homocysteine in the body are correlated with dangerously low levels of two B vitamins. UPI filed for a patent, seeking to license both the method of testing for the amino acid, and the correlation of the amino acid levels with B vitamin levels. UPI's successor licensed Metabolite Laboratories, which in 1992 sub-licensed the patent to Laboratory Corporation of America Holdings (LabCorp). When in 1998 LabCorp started using another company's test and stopped paying Metabolite royalties, Metabolite sued. A jury found LabCorp guilty of patent infringement and breach of contract and awarded damages to Metabolite. In an appeal to the Circuit Court of Appeals for the Federal Circuit, LabCorp argued that the patent was invalid. Natural phenomena themselves are not patentable, but new applications of them normally are. LabCorp argued that Metabolite had impermissibly patented a relationship that already existed in nature. The Federal Circuit rejected that argument, however, ruling that Metabolite could patent its discovery of the correlation and that any association of homocysteine levels with B vitamin deficiency could constitute patent infringement. LabCorp appealed its case to the Supreme Court.

Question

Is it permissible to patent a correlational relationship in a medical test result, such that a doctor necessarily infringes on the patent simply by thinking about the relationship after looking at the test result?

Media for Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

Audio Transcription for Oral Argument - March 21, 2006 in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

Audio Transcription for Opinion Announcement - June 22, 2006 in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc.

John Paul Stevens:

I also have the disposition to announce in No. 04-607, Laboratory Corporation of America versus Metabolite Laboratories, Inc.

The petition is dismissed as improvidently granted.

The Chief Justice did not participate in the case.

Justice Breyer has filed a dissenting opinion, in which Justice Souter and I have joined.