United States: Supreme Court Docket Report – 2005 Term, No. 3

Recently the Supreme Court granted certiorari in one case of interest to the business community. Amicus briefs in support of the petitioner will be due on December 15, 2005, and amicus briefs in support of the respondents will be due on January 19, 2006.

Patent Law—Patents of Natural Phenomena. U.S. law does not grant patent protection to laws of nature, natural phenomena, and abstract ideas. E.g., Diamond v. Diehr, 450 U.S. 175, 185 (1981). However, patents are considered appropriate in instances in which an inventor reduces such a phenomenon to a practical application. The Supreme Court today granted certiorari in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., No. 04-607, to determine whether a patent for a method of detecting a vitamin deficiency qualifies for patent protection, or instead merely identifies an unpatentable basic scientific fact.

Deficiencies in two types of vitamin B—vitamin B12 and folic acid—can cause serious illness. This case stems from a patent for a method to detect such deficiencies. Respondent developed a technique to measure elevated levels of total homocysteine, an amino acid that B12 and folic acid metabolize, and to correlate these levels with deficiencies of B12 and folic acid. It obtained a patent for this "method for detecting deficiency," which in part called for "correlating an elevated level of total homocysteine in said body fluid with a deficiency of [vitamin B]."

Respondent sublicensed this technique to petitioner. After some time, however, petitioner stopped using this technique (and paying respondent royalties) and began using an alternative method of total homocysteine measurement developed by Abbott Laboratories. Respondent sued for infringement, and a jury found in its favor. The district court ultimately awarded over $2 million for the infringement (in addition to other damages), and permanently enjoined petitioner from using the infringing test. The U.S. Court of Appeals for the Federal Circuit affirmed by a 2-1 vote, rejecting petitioners’ challenges to the patent’s validity. See 370 F.3d 1354 (Fed. Cir. 2004). However, neither the majority nor the dissent in the Federal Circuit addressed the question on which the Supreme Court has now granted review: whether Metabolite’s patent was invalid because it claimed a natural phenomenon—the correlation between elevated levels of total homocysteine and deficiencies of B12 and folic acid.

The Court’s ruling in this case may have broad implications for a variety of research, technology, and healthcare industries and businesses, as well as for any business that relies on the patent system for intellectual property rights.

The Supreme Court also invited the Solicitor General to file a brief expressing the views of the United States in the following case of interest to the business community:

Federal Trade Commission v. Schering-Plough, No. 05-273. The question presented is whether it is a violation of federal antitrust law for the maker of a brand-name drug to pay a potential maker of a competing generic drug to delay putting that alternative drug on the market.

The Court also granted certiorari today in Fernandez-Vargas v. Gonzales, No. 04-1376, in which Mayer Brown Rowe & Maw LLP represents the petitioner on a pro bono basis. The question in this case is whether a provision of the Illegal Immigration Reform and Immigrant Responsibility Act of 1996 ("IIRIRA") that precludes adjustment of an alien’s status to legal resident based on his marriage to a United States citizen if the alien reentered the country illegally after previously having been deported applies to an alien who reentered the United States illegally before IIRIRA’s effective date. As a result of today’s grant in Fernandez-Vargas, the Court has now agreed to hear during the 2005 Term five cases in which Mayer Brown is counsel for the petitioner.

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