September 2011

Spotlight Info

In Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 06-1634, -1649 (Fed. Cir. Aug. 31, 2001), the Federal Circuit, on remand from the Supreme Court following Bilski v. Kappos, 561 U.S. ___, 130 S. Ct. 3218 (2010), held, inter alia, that two patents contain patentable subject matter under 35 U.S.C. § 101 but that a third patent does not.  Classen Immunotherapies, Inc. (“Classen”) holds three related patents directed to a schedule of infant immunization designed to reduce risk for later occurrence of chronic immune-mediated disorders.  Following the Supreme Court’s guidance from Bilski on remand, the Federal Circuit found that, although the claimed methods in two of Classen’s patents included a mental step, these claims also included a physical step and therefore are directed to a specific, tangible application.   In contrast, the Federal Circuit found that the claimed method in the third Classen patent only involved collecting and comparing known information, and thus failed to qualify for patent eligibility under § 101.  Judge Moore dissented from the Court’s holding, because in her view, the claims-at-issue are to a fundamental principle that is too basic to be patentable.  Thus, Judge Moore would have found the subject matter of all three patents ineligible under § 101.  In addition to joining the majority opinion, Chief Judge Rader filed “additional views” joined by Judge Newman, expressing the view that the Federal Circuit should decline to accept invitations to restrict subject matter eligibility, because patent drafters devise new ways to circumvent judicially imposed restrictions and these restrictions could drive innovation outside the United States.  See this month’s edition of Last Month at the Federal Circuit for a full summary of the decision.