The eBay case is a major decision, but Justice Kennedy’s concurrence that derides business method patents appears to foreshadow the outcome of the pending appeal of Laboratory Corp. of America (LabCorp) v. Metabolite Laboratories (Supreme Court 2006).
In eBay, the concurrence almost begged lower courts to force compulsory licenses when the asserted patent is a “business method.”
In addition injunctive relief may have different consequences for the burgeoning number of patents over business methods, which were not of much economic and legal significance in earlier times. The potential vagueness and suspect validity of some of these patents may affect the calculus under the four-factor test.
In LabCorp, the High Court will review the question of whether a patent can claim rights to a basic scientific relationship used in medical treatment if the claim is limited to “correlating” test results. Although the claim in question is a “medical method” it is not far afield from the much maligned “business methods.”
It appears highly likely that Justice Kennedy’s group of four (Justices Kennedy, Stevens, Souter, and Breyer) will stick together in an attempt to invalidate this patent (and potentially many others). And, they only need one more Justice to have a majority. On the other hand, as Professor Joseph Miller points out, the loose language of Kennedy’s concurrence might be a sign that they could not get a majority for the LabCorp decision.
I wondered though, as I read eBay, whether it was a sign the Court is not striking down the claim in LabCorp … on the theory that the Kennedy Four in eBay, knowing they had failed to muster a majority in LabCorp, were all the more determined to speak plainly, and a bit sharply, about the problems with the contemporary patent system that make automatic injunctions especially imprudent (assuming, for a moment, the merits of that critique).
Chief Justice Roberts, who led the more conservative concurrence will likely not take part in the decision because of a potential conflict of interest.
