The Supreme Court has granted certiorari in another patent case. This time, the Court (minus new Chief Justice John Roberts, who recused himself) will be hearing Laboratory Corporation of America v. Metabolite Laboratories, in which the Federal Circuit held valid and infringed a claim directed to a medical assay.
The Supreme Court limited its grant of certiorari to the third question presented in the petition, which reads as follows:
Whether a method patent setting forth an indefinite, undescribed, and non-enabling step directing a party simply to "correlat[e]" test results can validly claim a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.
I don't have much experience writing questions for cert petitions, but this question as framed just seems, well, stupid and uninteresting. Presumably the issue that petitioner wants before the court is drawing the line between patentable methods on the one hand, and mere algorithms or scientific facts on the other. It is true that business method patents often tread close to this line, and there are probably significant reasons to reconsider the boundaries of patentability with respect to them. But this question does not seem to get to that issue. If the claim is "indefinite," as the question presumes, it is invalid. If it is not enabled, it is also invalid. Under these circumstances, where the detailed and largely uncontroversial bodies of case law governing claim definiteness and enablement can be brought to bear on the validity of the patent, there is no need for any court, Supreme or otherwise, to reach the deep, difficult questions of the patentability of algorithms and business methods.
One surmises that the Supreme Court has understood the true nature of the question, and will reframe it with the correct premises: Presuming the claim is sufficiently definite and adequately enabled, is it nevertheless invalid for being directed to unpatentable subject matter?