Lessons from Laboratories Corp. of America Holdings v. Metabolite Laboratories, Inc.

Abstract This article provides reflections on the scope of patentable subject matter, using the Supreme Court's recent consideration of Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. as a springboard for discussion. A brief introduction to the case and the current standard of patentable subject matter are provided as a backdrop for discussion of the role of patentable subject matter in the overall scheme of patentability and patent enforcement. In addition, this article addresses potential repercussions of the case within the judicial and legislative arenas. This article concludes by offering some broad-based issues for consideration, including both domestic and international implications. I. INTRODUCTION The world of patentable subject matter may soon be subject to a seismic shift. Initial rumblings were heard when the Supreme Court granted certiorari on the issue of patentable subject matter in Metabolite Laboratories, Inc. v. Laboratory Corp. of America Holdings--an issue seemingly crafted out of whole cloth since neither party had litigated the issue. Expectations of a clear metric in this area where dashed when the Court ultimately dismissed certiorari as improvidently granted. However the dissenting opinion to the dismissal directly challenged the standard of patentable subject matter (1) that the Federal Circuit, the court with exclusive jurisdiction over appeals in patent cases, has been applying for the last decade. (2) Although the dismissal of certiorari in Metabolite leaves patent lawyers waiting for a final conclusion from the Court on the proper scope of patentable subject matter, other institutional bodies continue to struggle with this issue. Until the Court declares a new standard of patentability, the Federal Circuit will likely continue to apply its standard of looking at whether an invention produces a "useful, concrete and tangible result," which has undeniably opened the patentable subject matter door to new categories of inventions, such as business methods. (3) Whether the Federal Circuit will allow further categories of inventions, such as electrical signals disembodied from a standard storage medium, to be patentable remains open to question as the Federal Circuit currently considers the case In re Nuijten. (4) In addition, the U.S. Patent and Trademark Office ("USPTO") Board of Appeals has taken different positions on whether the scope of patentable subject matter should be limited by engrafting a technological arts requirement on inventions. (5) Moreover, public perceptions of an unduly broad scope of patentable subject matter are again percolating, with the latest result being embodied in a bill to limit patentability on methods of achieving tax avoidance. (6) The appropriate scope of patentable subject matter is a prime topic for consideration by courts and commentators alike. This article focuses on the impact and import of the dissent from the dismissal of certiorari in Metabolite as a possible predictor of Supreme Court clarification on the issue. At a minimum, this article hopes to provide some lessons from the Court's consideration of the case that may be useful for both pending and future cases. This article begins in Section II with a review of the procedural history of Metabolite, including the subject matter of the invention. A brief review of the claim at issue provides context to discussing future directions in the area. Section III considers the implications of Metabolite with respect to future Supreme Court cases. Section IV outlines potential repercussions of Metabolite beyond the Supreme Court. Section V considers implications of the case for consideration by other institutional actors involved in patentable subject matter. Finally, Section V concludes with some remaining questions for consideration by policy-makers at all levels. II. BACKGROUND To help set the stage for discussion of the future of patentable subject matter, this section begins with the case that captured the attention of the Supreme Court. …