Vanderbilt Journal of Entertainment & Technology Law


John G. New

First Page



In June 2006, after having granted certiorari and hearing oral arguments, the United States Supreme Court dismissed the case of Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc. as having been improvidently granted a writ of certiorari. Dissenting from this extraordinary step was Justice Breyer, joined by Justices Stevens and Souter. At issue in the case was a patent, the owners of which claimed that a physician's use of any test to infer vitamin deficiency by raised blood serum levels of the chemical homocysteine infringed the patent. This Article argues that the Supreme Court was itself improvident in dismissing the case because the patent at issue claims ownership of a basic scientific fact, a "phenomenon of nature," in violation of 35 U.S.C. § 101. Moreover, the lower courts' construction of the term "correlate" was erroneous in that it was not determined according to the knowledge of biomedical investigators and practitioners skilled in that art. Finally, sound public policy arguments caution against granting such a patent. By failing to act, the Supreme Court essentially affirmed the U.S. Court of Appeals for the Federal Circuit's holding that a patent claiming a scientific fact can be valid, and that practicing physicians who merely think about that fact are liable for patent infringement.