Classen Immunotherapies, Inc. v. Biogen IDEC

Inclusion of a physical step may allow an otherwise ineligible process, machine, manufacture, or composition of matter to pass the §101 threshold and remain patent-eligible.

Full Title: Classen Immunotherapies, Inc. v. Biogen IDEC and GlaxoSmithKline and Merck & Co, Inc. and Chiron Corporation, Kaiser-Permanente, Inc., Kaiser Permanente Ventures, Kaiser Permanente International, Kaiser Permanente Insurance Company, The Permanente Federation, LLC, The Permanente Company, LLC, The Permanente Foundation, The Permanente Medical Group, Inc., Kaiser Foundation Hospitals, Kaiser Foundation Added Choice Health Plan, Inc., and Kaiser Foundation Health Plan, Inc.

For full opinion:
2011 U.S.App.LEXIS 18126
2011 WL 3835409

Opinion (Newman): The Supreme Court vacated the Court of Appeals for the Federal Circuit’s ruling in Classen Immuotherapies, Inc. v. Biogen IDEC. The district court held that all of the Classen Immunotherapies, Inc. (“Classen”) patents claimed a method which “include[d] the mental step of reviewing relevant literature,” and were ineligible for patent protection. Two of Classen’s patents, U.S. Patent No. 6,638,739 (“739 patent”) and No. 6,420,139 (“139 patent”), claimed methods of lowering the risk of chronic immune-mediated disorder and included the physical step of immunization based on the optimum schedule. “The distinction between a concrete, physical step of a process claim, as compared with data gathering or insignificant extra-solution activity, warrants specific consideration in the context of evolving technologies.” Inclusion of the physical immunization step allowed both patents to pass the “course eligibility filter of §101″ and, thus, subject to further statutory evaluation. However, the third patent, U.S. Patent No. 5,723,283, only stated the idea of collecting and comparing known information and failed to claim a “patent-eligible process.” The district court erred when it provided summary judgment of noninfringement based on the safe harbor provision of §271(e)(1). AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART and REMANDED.