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Natural Selection

When Laboratory Corporation of America asked the U.S. Supreme Court to hear its appeal, most IP experts thought it was little more than an act of desperation. The November 2004 certiorari petition asked the extremely busy High Court to review a technical issue that was of relatively little importance: Did a method patent on diagnosing vitamin deficiency specify the method in sufficient detail, or were the terms so vague that the patent had to be struck down?

However, the Court turned the case in a surprising direction. While pondering the petition, it invited the solicitor general in February 2005 to submit a brief addressing an issue that hadn't previously been raised in the case: "Is the patent [at issue] invalid because one cannot patent 'laws of nature, natural phenomena, and abstract ideas'?"

LabCorp responded by arguing, among other things, that Competitive's patent failed to satisfy Section 112 of the Patent Act, which requires a patent to contain "a written description of the invention, and of the manner and process of making and using it, in ?? 1/2 full, clear, concise, and exact terms ... " According to LabCorp, the patent failed to detail how to carry out the blood test and then use the results to determine if there is a vitamin B deficiency.

A Colorado jury didn't buy it, and hit LabCorp with more than $2 million in damages. LabCorp appealed, but the Federal Circuit upheld the verdict.

Other experts expect the justices won't reach quite so far.

"They [the justices] will say, at best, inventions that are too abstract can't be patented," says John Thomas, who teaches patent law at Georgetown University. "They won't go after business-method patents."


Steven Seidenberg

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