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| Cite as: 548 U. S. ____ (2006)
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| Per Curiam
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| NOTICE: This opinion is subject to formal revision before publication in thepreliminary print of the United States Reports. Readers are requested tonotify the Reporter of Decisions, Supreme Court of the United States, Wash-ington, D. C. 20543, of any typographical or other formal errors, in orderthat corrections may be made before the preliminary print goes to press.
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| SUPREME COURT OF THE UNITED STATES
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| No. 04–607
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| LABORATORY CORPORATION OF AMERICA HOLD-
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| INGS, DBA LABCORP, PETITIONER v. METABO
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| -LITE LABORATORIES, INC., ET AL.
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| ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
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| APPEALS FOR THE FEDERAL CIRCUIT
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| [June 22, 2006]
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| PER CURIAM. The writ of certiorari is dismissed as improvidentlygranted.
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| THE CHIEF JUSTICE took no part in the consideration or decision of this case.
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| _________________
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| _________________
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| 1
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| SUPREME COURT OF THE UNITED STATES
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| No. 04–607
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| LABORATORY CORPORATION OF AMERICA HOLD-
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| INGS, DBA LABCORP, PETITIONER v. METABO
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| -LITE LABORATORIES, INC., ET AL.
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| ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
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| APPEALS FOR THE FEDERAL CIRCUIT
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| [June 22, 2006]
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| JUSTICE BREYER, with whom JUSTICE STEVENS and JUSTICE SOUTER join, dissenting.
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| This case involves a patent that claims a process for helping to diagnose deficiencies of two vitamins, folate andcobalamin. The process consists of using any test (whether patented or unpatented) to measure the level ina body fluid of an amino acid called homocysteine and then noticing whether its level is elevated above the norm; if so, a vitamin deficiency is likely.
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| The lower courts held that the patent claim is valid.They also found the petitioner, Laboratory Corporation of America Holdings (LabCorp), liable for inducing infringe-ment of the claim when it encouraged doctors to order diagnostic tests for measuring homocysteine. The courts assessed damages. And they enjoined LabCorp from usingany tests that would lead the doctors it serves to find a vitamin deficiency by taking account of elevated homocys-teine levels.
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| We granted certiorari in this case to determine whetherthe patent claim is invalid on the ground that it improp-erly seeks to “claim a monopoly over a basic scientific relationship,” Pet. for Cert. i, namely, the relationshipbetween homocysteine and vitamin deficiency. The Court has dismissed the writ as improvidently granted. In my
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| 2 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| view, we should not dismiss the writ. The question pre-sented is not unusually difficult. We have the authority todecide it. We said that we would do so. The parties and amici have fully briefed the question. And those who en-gage in medical research, who practice medicine, and who aspatients depend upon proper health care, might well benefit from this Court’s authoritative answer.
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| I
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| A
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| The relevant principle of law “[e]xclude[s] from . . . patent protection . . . laws of nature, natural phenomena,and abstract ideas.” Diamond v. Diehr, 450 U. S. 175, 185 (1981). This principle finds its roots in both English and American law. See, e.g., Neilson v. Harford, Webster’s Patent Cases 295, 371 (1841); Le Roy v. Tatham, 14 How.
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| 156. 175 (1853); O’Reilly v. Morse, 15 How. 62 (1854); The Telephone Cases, 126 U. S. 1 (1888). The principle means that Einstein could not have “patent[ed] his celebrated law that E=mc2; nor could Newton have patented the law ofgravity.” Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980). Neither can one patent “a novel and usefulmathematical formula,” Parker v. Flook, 437 U. S. 584, 585 (1978), the motive power of electromagnetism or steam, Morse, supra, at 116, “the heat of the sun, electric-ity, or the qualities of metals,” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948).
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| The justification for the principle does not lie in anyclaim that “laws of nature” are obvious, or that their dis-covery is easy, or that they are not useful. To the con-trary, research into such matters may be costly and time-consuming; monetary incentives may matter; and thefruits of those incentives and that research may prove of great benefit to the human race. Rather, the reason for the exclusion is that sometimes too much patent protec-tion can impede rather than “promote the Progress of
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| 3
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| Science and useful Arts,” the constitutional objective ofpatent and copyright protection. U. S. Const., Art. I, §8,
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| cl. 8.
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| The problem arises from the fact that patents do not only encourage research by providing monetary incentivesfor invention. Sometimes their presence can discourageresearch by impeding the free exchange of information, for example by forcing researchers to avoid the use of poten-tially patented ideas, by leading them to conduct costlyand time-consuming searches of existing or pending pat-ents, by requiring complex licensing arrangements, and byraising the costs of using the patented information, some-times prohibitively so.
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| Patent law seeks to avoid the dangers of overprotection just as surely as it seeks to avoid the diminished incentive to invent that underprotection can threaten. One way inwhich patent law seeks to sail between these opposing and risky shoals is through rules that bring certain types ofinvention and discovery within the scope of patentability while excluding others. And scholars have noted that “patent law[’s] exclu[sion of] fundamental scientific (in-cluding mathematical) and technological principles,” (like copyright’s exclusion of “ideas”) is a rule of the lattervariety. W. Landes & R. Posner, The Economic Structure of Intellectual Property Law 305 (2003). That rule reflects “both . . . the enormous potential for rent seeking thatwould be created if property rights could be obtained in [those basic principles] and . . . the enormous transaction costs that would be imposed on would-be users.” Id., at 305–306; cf. Nichols v. Universal Pictures Corp., 45 F. 2d 119, 122 (CA2 1930) (L. Hand, J.).
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| Thus, the Court has recognized that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are . . . the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U. S. 63, 67 (1972). It has treated fundamental scien-
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| 4 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| tific principles as “part of the storehouse of knowledge”and manifestations of laws of nature as “free to all men and reserved exclusively to none.” Funk Bros., supra, at
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| 130. And its doing so reflects a basic judgment that pro-tection in such cases, despite its potentially positive incen-tive effects, would too often severely interfere with, ordiscourage, development and the further spread of useful knowledge itself.
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| B In the 1980s three university doctors, after conductingresearch into vitamin deficiencies, found a correlation between high levels of homocysteine in the blood and deficiencies of two essential vitamins, folate (folic acid)and cobalamin (vitamin B12). They also developed moreaccurate methods for testing body fluids for homocysteine, using gas chromatography and mass spectrometry. They published their findings in 1985. They obtained a patent.And that patent eventually found its commercial way into the hands of Competitive Technologies, Inc. (CTI), and its licensee Metabolite Laboratories, Inc. (Metabolite), therespondents here.The patent contains several claims that cover the re-searchers’ new methods for testing homocysteine levelsusing gas chromatography and mass spectrometry. Supp. App. 30. In 1991, LabCorp (in fact, a corporate predeces-sor) took a license from Metabolite permitting it to use the tests described in the patent in return for 27.5% of related revenues. Their agreement permitted LabCorp to termi-nate the arrangement if “a more cost effective commercialalternative is available that does not infringe a valid and enforceable claim of” the patent. App. 305 (emphasis added).Until 1998, LabCorp used the patented tests and paidroyalties. By that time, however, growing recognition thatelevated homocysteine levels might predict risk of heart
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| 5
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| disease led to increased testing demand. Other companies began to produce alternative testing procedures. And LabCorp decided to use one of these other procedures—atest devised by Abbott Laboratories that LabCorp con-cluded was “far superior.” Id., at 167 (testimony of Peter Wentz).
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| LabCorp continued to pay royalties to respondentswhenever it used the patented tests. But it concluded that Abbott’s test did not fall within the patent’s protective scope. And LabCorp consequently refused to pay royalties when it used the Abbott test. Id., at 237 (payment elimi-nated due to “change in methodology”).
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| In response, respondents brought this suit againstLabCorp for patent infringement and breach of the license agreement. They did not claim that LabCorp’s use of the Abbott test infringed the patent’s claims describing meth-ods for testing for homocysteine. Instead, respondents relied on a broader claim not limited to those tests, namelyclaim 13, the sole claim at issue here. That claim—set forth below in its entirety—seeks patent protection for:
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| “A method for detecting a deficiency of cobalamin or
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| folate in warm-blooded animals comprising the steps
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| of:
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| “assaying a body fluid for an elevated level of total
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| homocysteine; and
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| “correlating an elevated level of total homocysteine
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| in said body fluid with a deficiency of cobalamin or
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| folate.” Supp. App. 30.
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| Claim 13, respondents argued, created a protected monopoly over the process of “correlating” test results and potential vitamin deficiencies. The parties agreed that thewords “assaying a body fluid” refer to the use of any test at all, whether patented or not patented, that determines whether a body fluid has an “elevated level of total homo-cysteine.” And at trial, the inventors testified that claim
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| 6 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| 13’s “correlating” step consists simply of a physician’s recognizing that a test that shows an elevated homocys-teine level—by that very fact—shows the patient likelyhas a cobalamin or folate deficiency. App. 108–111 (testi-mony of Dr. Sally Stabler); id., at 131–148 (testimony of Robert Allen). They added that, because the naturalrelationship between homocysteine and vitamin deficiency was now well known, such “correlating” would occurautomatically in the mind of any competent physician. Id., at 137–138 (same).
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| On this understanding of the claim, respondents argued,LabCorp was liable for inducing doctors to infringe. More specifically, LabCorp would conduct homocysteine tests and report the results measured in micromoles (millionthsof a mole) per liter (symbolized μmol/L). Doctors, because of their training, would know that a normal homocysteinerange in blood is between 7 and 22 μmol/L (and in urine between 1 and 20 μmol/L), Supp. App. 14, and would knowthat an elevated homocysteine level is correlated with avitamin deficiency. Hence, in reviewing the test results,doctors would look at the μmol/L measure and automati-cally reach a conclusion about whether or not a person was suffering from a vitamin deficiency. Claim 13 therefore covered every homocysteine test that a doctor reviewed.And since LabCorp had advertised its tests and educated doctors about the correlation, LabCorp should be liable for actively inducing the doctors’ infringing acts. See 35
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| U. S. C. §271(b).
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| The jury found LabCorp liable on this theory. The District Court calculated damages based on unpaid royal-ties for some 350,000 homocysteine tests performed by LabCorp using the Abbott method. The court also en-joined LabCorp from performing “any homocysteine-onlytest, including, without limitation homocysteine-only tests via the Abbott method.” App. to Pet. for Cert. 36a–37a (internal quotation marks omitted).
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| 7
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| Cite as: 548 U. S. ____ (2006) BREYER, J., dissenting
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| LabCorp appealed. It argued to the Federal Circuit thatthe trial court was wrong to construe claim 13 so broadly that infringement took place “every time a physician does nothing more than look at a patient’s homocysteine level.” Corrected Brief for Appellant in No. 03–1120 (CA Fed.),
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| p. 28 (hereinafter Brief for Appellant). Indeed, if so con-strued (rather than construed, say, to cover only patentedtests), then claim 13 was “invalid for indefiniteness, lack of written description, non-enablement, anticipation,and obviousness.” Id., at 38. LabCorp told the Federal Circuit:
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| “If the Court were to uphold this vague claim, anyone could obtain a patent on any scientific correlation—that there is a link between fact A and fact B—merely by drafting a patent claiming no more than ‘test forfact A and correlate with fact B’ . . . . Claim 13 does no more than that. If it is upheld, CTI would improp-erly gain a monopoly over a basic scientific fact ratherthan any novel invention of its own. The law is set-tled that no such claim should be allowed. See, e.g., Diamond v. Diehr, 450 U. S. 175 (1981); . . . Chisum on Patents §1.03[6].” Id., at 41.
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| The Federal Circuit rejected LabCorp’s arguments. It agreed with the District Court that claim 13’s “correlating”step simply means “relating total homocysteine levels to cobalamin or folate deficiency, a deficiency in both, or a deficiency in neither.” 370 F. 3d 1354, 1363 (2004). That meaning, it said, is “discernable and clear”; it is definite, it is described in writing, and it would enable virtually anyone to follow the instruction it gives. And that is sufficient. Id., at 1366–1367. The Court did not address LabCorp’s argument that, if so construed, claim 13 must be struck down as an improper effort to obtain patentprotection for a law of nature.
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| Moreover, the Circuit concluded, because any competent
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| 8 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| doctor reviewing test results would automatically correlatethose results with the presence or absence of a vitamindeficiency, virtually every doctor who ordered and read thetests was a direct infringer. And because LabCorp “pub-lishes . . . Continuing Medical Education articles” and other pieces, which urge doctors to conduct the relevanttests and to reach a conclusion about whether a patient is suffering from a vitamin deficiency based upon the test results, LabCorp induces infringement. Id., at 1365. Finally, the court rejected LabCorp’s challenge to the injunction. Id., at 1372.
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| LabCorp filed a petition for certiorari. Question Three of the petition asks “[w]hether a method patent . . . direct-ing a party simply to ‘correlate’ test results can validlyclaim a monopoly over a basic scientific relationship . . .such that any doctor necessarily infringes the patentmerely by thinking about the relationship after looking at a test result.” Pet. for Cert. i. After calling for and receiv-ing the views of the Solicitor General, 543 U. S. 1185(2005), we granted the petition, limited to Question Three.
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| II The question before us is whether claim 13, as construedand applied in the way I have described in Part I–B, isinvalid in light of the “law of nature” principle, described in Part I–A. I believe that we should answer that ques-tion. There is a technical procedural reason for not doingso, namely, that LabCorp did not refer in the lower courtsto §101 of the Patent Act, which sets forth subject matter that is patentable, and within the bounds of which the “law of nature” principle most comfortably fits. See 35
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| U. S. C. §101 (patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter”); Flook, 437 U. S., at 588–589. There is also a practical reason for not doing so, namely, that we might benefit from the views of the Federal Circuit, which did
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| 9
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| not directly consider the question. See, e.g., United States
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| v. Bestfoods, 524 U. S. 51, 72–73 (1998).
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| Nonetheless, stronger considerations argue for our reaching a decision. For one thing, the technical proce-dural objection is tenuous. LabCorp argued the essence of its present claim below. It told the Federal Circuit that claim 13 as construed by the District Court was too “vague” because that construction would allow “anyone” to “obtain a patent on any scientific correlation;” it wouldpermit the respondents “improperly [to] gain a monopolyover a basic scientific fact” despite “settled” law “that nosuch claim should be allowed.” Brief for Appellant 41 (citing Diehr, 450 U. S., at 1185; 1 D. Chisum, Patents §1.03[6]) (2006 ed.) (hereinafter Chisum). LabCorp explic-itly stated in its petition for certiorari that, “if the Courtallows the Federal Circuit opinion to stand . . . [respon-dents] would improperly gain monopolies over basic scien-tific facts rather than any novel inventions of their own.” Pet. for Cert. 25 (citing Diehr, supra; Gottschalk, 409 U. S. 63; Funk Bros., 333 U. S. 127; Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86 (1939)). And after considering the Solicitor General’s advice not to hearthe case (primarily based upon LabCorp’s failure to referto 35 U. S. C. §101), we rejected that advice, thereby “nec-essarily consider[ing] and reject[ing] that contention as abasis for denying review.” United States v. Williams, 504
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| U. S. 36, 40 (1992).
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| For another thing, I can find no good practical reason forrefusing to decide the case. The relevant issue has been fully briefed and argued by the parties, the Government,and 20 amici. The record is comprehensive, allowing us tolearn the precise nature of the patent claim, to consider the commercial and medical context (which the parties and amici have described in detail), and to become famil-iar with the arguments made in all courts. Neither the factual record nor the briefing suffers from any
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| 10 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| significant gap. No party has identified any prejudice due to our answering the question. And there is no indication that LabCorp’s failure to cite §101 reflected unfair gamesmanship.
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| Of course, further consideration by the Federal Circuitmight help us reach a better decision. Lower court consid-eration almost always helps. But the thoroughness of the briefing leads me to conclude that the extra time, cost, anduncertainty that further proceedings would engender arenot worth the potential benefit.
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| Finally, I believe that important considerations of thepublic interest—including that of clarifying the law in thisarea sooner rather than later—argue strongly for our deciding the question presented now. See Part IV, infra.
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| III I turn to the merits. The researchers who obtained the present patent found that an elevated level of homocys-teine in a warm-blooded animal is correlated with folate and cobalamin deficiencies. As construed by the FederalCircuit, claim 13 provides those researchers with controlover doctors’ efforts to use that correlation to diagnose vitamin deficiencies in a patient. Does the law permitsuch protection or does claim 13, in the circumstances, amount to an invalid effort to patent a “phenomenon ofnature”? I concede that the category of non-patentable “phenom-ena of nature,” like the categories of “mental processes,” and “abstract intellectual concepts,” is not easy to define. See Flook, supra, at 589 (“The line between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear”); cf. Nichols, 45 F. 2d, at 122 (“[W]e are as aware asanyone that the line [between copyrighted material and non-copyrightable ideas], wherever it is drawn, will seem arbitrary”). After all, many a patentable invention restsupon its inventor’s knowledge of natural phenomena;
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| 11
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| many “process” patents seek to make abstract intellectualconcepts workably concrete; and all conscious humanaction involves a mental process. See generally 1 Chisum§1.03, at 78–295. Nor can one easily use such abstract categories directly to distinguish instances of likely benefi-cial, from likely harmful, forms of protection. Cf. FTC, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, ch. 3, p. 1 (Oct. 2003) (herein-after FTC) (collecting evidence that “issues of fixed cost recovery, alternative appropriability mechanisms, and relationships between initial and follow-on innovation” vary by industry); Burk & Lemley, Policy Levers in PatentLaw, 89 Va. L. Rev. 1575, 1577–1589 (2003) (“Recent evidence has demonstrated that this complex relationship[between patents and innovation] is . . . industry-specific at each stage of the patent process”).
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| But this case is not at the boundary. It does not requireus to consider the precise scope of the “natural phenome-non” doctrine or any other difficult issue. In my view,claim 13 is invalid no matter how narrowly one reasonablyinterprets that doctrine.
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| There can be little doubt that the correlation between homocysteine and vitamin deficiency set forth in claim 13 is a “natural phenomenon.” That is what the petitioners argue. It is what the Solicitor General has told us. Brief for United States as Amicus Curiae 19 (filed Dec. 23, 2005) (“The natural relationship between elevated homocysteineand deficiencies in the B vitamins is an unpatentable ‘principle in natural philosophy or physical science’”)(quoting Morse, 15 How., at 116)). Indeed, it is close to what the respondents concede. Brief for Respondents 31(“The correlation between total homocysteine and deficien-cies in cobalamin and folate that the Inventors discovered could be considered, standing alone, a ‘natural phenome-non’ in the literal sense: It is an observable aspect of bio-chemistry in at least some human populations”).
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| 12 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| The respondents argue, however, that the correlation isnonetheless patentable because claim 13 packages it inthe form of a “process” for detecting vitamin deficiency,with discrete testing and correlating steps. They point tothis Court’s statements that a “process is not unpatentablesimply because it contains a law of nature,” Flook, 437
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| U. S., at 590; see also Gottschalk, 409 U. S., at 67, and that “an application of a law of nature . . . to a known . .. process may well be deserving of patent protection.” Diehr, 450 U. S., at 187. They add that claim 13 is apatentable “application of a law of nature” because, con-sidered as a whole, it (1) “entails a physical transforma-tion of matter,” namely, the alteration of a blood sample during whatever test is used, Brief for Respondents 33 (citing Cochrane v. Deener, 94 U. S. 780, 788 (1877); Gottschalk, supra, at 70), and because it (2) “produces a‘useful, concrete, and tangible result,’” namely, detection of a vitamin deficiency, Brief for Respondents 36 (citing State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed 1998)).
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| In my view, however, the cases to which respondents refer do not support their claim. Neither Cochrane nor Gottschalk can help them because the process described inclaim 13 is not a process for transforming blood or any other matter. Claim 13’s process instructs the user to (1)obtain test results and (2) think about them. Why shouldit matter if the test results themselves were obtained through an unpatented procedure that involved the trans-formation of blood? Claim 13 is indifferent to that fact, for it tells the user to use any test at all. Indeed, to use virtu-ally any natural phenomenon for virtually any usefulpurpose could well involve the use of empirical informa-tion obtained through an unpatented means that might have involved transforming matter. Neither Cochrane nor Gottschalk suggests that that fact renders the phenome-non patentable. See Cochrane, supra, at 785 (upholding
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| 13
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| Cite as: 548 U. S. ____ (2006) BREYER, J., dissenting
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| process for improving quality of flour by removing impuri-ties with blasts of air); Gottschalk, supra, at 71–73 (reject-ing process for converting numerals to binary formthrough mathematical formula).
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| Neither does the Federal Circuit’s decision in State Street Bank help respondents. That case does say that a process is patentable if it produces a “useful, concrete, and tangible result.” 149 F. 3d, at 1373. But this Court has never made such a statement and, if taken literally, thestatement would cover instances where this Court has held the contrary. The Court, for example, has invalidated a claim to the use of electromagnetic current for transmit-ting messages over long distances even though it producesa result that seems “useful, concrete, and tangible.” Morse, supra, at 16. Similarly the Court has invalidated apatent setting forth a system for triggering alarm limits inconnection with catalytic conversion despite a similarutility, concreteness, and tangibility. Flook, supra. And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes,decimal figures into binary figures—even though theresult would seem useful, concrete, and at least arguably(within the computer’s wiring system) tangible. Gottschalk, supra.
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| Even were I to assume (purely for argument’s sake) thatclaim 13 meets certain general definitions of process pat-entability, however, it still fails the one at issue here: therequirement that it not amount to a simple natural corre-lation, i.e., a “natural phenomenon.” See Flook, supra, at 588, n. 9 (even assuming patent for improved catalytic converter system meets broad statutory definition of patentable “process,” it is invalid under natural phenome-non doctrine); Diehr, 450 U. S., at 184–185 (explaining that, even if patent meets all other requirements, it mustmeet the natural phenomena requirement as well).
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| At most, respondents have simply described the natural
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| 14 LABORATORY CORP. OF AMERICA HOLDINGS v.
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| METABOLITE LABORATORIES, INC.
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| BREYER, J., dissenting
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| law at issue in the abstract patent language of a “process.” But they cannot avoid the fact that the process is no morethan an instruction to read some numbers in light of medical knowledge. Cf. id., at 192 (warning against “al-low[ing] a competent draftsman to evade the recognizedlimitations on the type of subject matter eligible for patentprotection”). One might, of course, reduce the “process” toa series of steps, e.g., Step 1: gather data; Step 2: read a number; Step 3: compare the number with the norm; Step
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| 4: act accordingly. But one can reduce any process to aseries of steps. The question is what those steps embody. And here, aside from the unpatented test, they embody only the correlation between homocysteine and vitamindeficiency that the researchers uncovered. In my view,that correlation is an unpatentable “natural phenomenon,” and I can find nothing in claim 13 that adds anything more of significance.
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| IV If I am correct in my conclusion in Part III that thepatent is invalid, then special public interest considera-tions reinforce my view that we should decide this case. To fail to do so threatens to leave the medical profession subject to the restrictions imposed by this individual patent and others of its kind. Those restrictions mayinhibit doctors from using their best medical judgment; they may force doctors to spend unnecessary time and energy to enter into license agreements; they may divertresources from the medical task of health care to the legaltask of searching patent files for similar simple correla-tions; they may raise the cost of healthcare while inhibit-ing its effective delivery. See Brief for American Clinical Laboratory Association as Amicus Curiae 8–13. Even if Part III is wrong, however, it still would be valu-able to decide this case. Our doing so would help diminishlegal uncertainty in the area, affecting a “substantial
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| 15
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| Cite as: 548 U. S. ____ (2006)
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| BREYER, J., dissenting
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| number of patent claims.” See Brief for United States as Amicus Curiae 12–14 (filed Aug. 26, 2005). It would per-mit those in the medical profession better to understandthe nature of their legal obligations. It would help Con-gress determine whether legislation is needed. Cf. 35
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| U. S. C. §287(c) (limiting liability of medical practitioners for performance of certain medical and surgical proce-dures).
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| In either event, a decision from this generalist Courtcould contribute to the important ongoing debate, among both specialists and generalists, as to whether the patentsystem, as currently administered and enforced, adequatelyreflects the “careful balance” that “the federal patent laws. . . embod[y].” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 146 (1989). See also eBay Inc. v. MercExchange, L. L. C., 547 U. S. ___, ___ (2006) (slip op., at 2) (KENNEDY, J., concurring); FTC, ch. 4, at 1–44; Pollack, The Multiple Unconstitutionality of Business Method Pat-ents: Common Sense, Congressional Consideration, and Constitutional History, 28 Rutgers Computer & Technology
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| L. J. 61 (2002); Pitofsky, Antitrust and Intellectual Prop-erty: Unresolved Issues at the Heart of the New Economy,16 Berkeley Technology L. J. 535, 542–546 (2001).
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| For these reasons, I respectfully dissent.
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