COJK as amicus curiae Counsel on Behalf of FCBA
3/21/06 - COJK recently participated as amicus curiae counsel on behalf of the Federal Circuit Bar Association in connection with the U.S. Supreme Court case LabCorp. v. Metabolite Laboratories, Inc. The Federal Circuit Bar Association ("FCBA") is a national organization comprising approximately 2,400 attorneys whose practice concerns the U.S. Court of Appeals for the Federal Circuit in all aspects of its jurisdiction. The Supreme Court's decision in LabCorp. v. Metabolite Laboratories, Inc., could affect the validity and enforceability of thousands of software, medical procedure, and business method patents.
The Supreme Court granted certiorari to review the panel decision by the Federal Circuit Court of Appeals affirming a verdict of willful infringement for Claim 13 of U.S. Patent No. 4,940,658, an invention entitled "Assay for Sulfhydryl Amino Acids and Methods for Detecting and Distinguishing Cobalamin and Folic Acid Deficiency." Claim 13 is drawn to a method of detecting vitamin B deficiency, a condition associated with a myriad of health problems.
Although the Petitioner (LabCorp) sought review of the validity of Claim 13 pursuant to 35 U.S.C. § 112, the Supreme Court framed the issue in terms of patentable subject matter set forth in 35 U.S.C. § 101. The Court sought views from the U.S. Solicitor General's Office and various amici why Claim 13 should not be invalid because one cannot patent "laws of nature, natural phenomena, and abstract ideas,"a rule established almost twenty-five years earlier by the Court's decision in Diamond v. Diehr, 450 U.S. 175 (1981). The Supreme Court has not issued a decision in the area of patentable subject matter since Diehr. The Supreme Court's decision in Diehr and subsequent cases from the Federal Circuit citing Diehr established settled expectations regarding the patentability of software, medical procedure, and business method patents despite their application of laws of nature, natural phenomena, and abstract ideas.
COJK litigator, Mark P. Walters, was counsel of record for the FCBA and principal author of the amicus brief. The FCBA urged the Supreme Court to dismiss LabCorp's petition as improvidently granted or, alternatively, to confine its holdings narrowly to the facts of the case and in a way that does not alter existing law.
