Patent Law Practice Center

Classen v. Biogen: CAFC Tries To Target Patent Eligibility But Misses

Ryan Chirnomas, Partner in the Biotechnology group at Westerman, Hattori, Daniels and Adrian, sent in this article discussing the Court of Appeals for the Federal Circuit’s recent Classen v. Biogen decision.  He highlights the key points of the decision and why he believes this case is a missed opportunity to clarify the machine-or-transformation test of Bilski.

Not long after issuing opinions in AMP v. USPTO and Prometheus v. Mayo, the CAFC has again taken on the difficult questions of patent eligible subject matter in Classen v. Biogen.  In 2008, the CAFC issued a three-sentence non-precedential opinion holding that Classen’s claims do not recite patent eligible subject matter.  This decision was appealed to the Supreme Court and subsequently remanded to the CAFC after the Supreme Court’s Bilski decision.  The instant decision includes a discussion of patent-eligible subject matter, as well as the safe harbor exception to infringement of pharmaceutical patents.  This discussion is limited to questions of patent eligible subject matter.  This decision relates to three patents:  U.S. Patent Nos. 6,638,739 (“the ‘739 patent”), 6,420,139 (“the ‘139 patent”) and 5,723,283 (“the ‘283 patent”). (more…)

Federal Circuit Reverses Course On Classen

Our friends at Foley & Lardner sent in this article discussing the Federal Circuit’s decision in Classen Immunotherapies, Inc. v. Biogen Idec.

On August 31, 2011, the Federal Circuit issued its second decision in Classen Immunotherapies, Inc. v. Biogen Idec (App. 2006-1643, -1649), on remand from the Supreme Court after Bilski v. Kappos (U.S. 2010). The Federal Circuit first decided Classen’s appeal in 2008, when a panel comprised of Circuit Judges Newman and Moore and District Judge Farnan (sitting by designation) held in a one-paragraph, non-precedential decision authored by Judge Moore that Classen’s claims do not satisfy 35 USC § 101. The second time around, the Federal Circuit (by a panel that included Chief Judge Rader in place of Judge Farnan) took a closer look at Classen’s claims, and determined that two of the three Classen patents at issue indeed are directed to subject matter that is patent-eligible under 35 USC § 101. In this decision, the Federal Circuit has provided useful guidance for method claims that involve some type of information gathering. It appears that if the claims recite a step of “putting this knowledge to practical use,” such as an active treatment step based on the information, they are likely to be patent-eligible under 35 USC § 101. On the other hand, if the claimed methods culminate in obtaining information, and nothing more, they may be vulnerable to challenge under 35 USC § 101.

Judge Newman wrote the opinion for the court, which was joined by Chief Judge Rader. Chief Judge Rader wrote a separate opinion to express “additional views,” which was joined by Judge Newman. Judge Moore wrote a dissenting opinion. (more…)

Join Us For Patent Litigation 2011 on September 19-20

Rapid changes in patent law require practitioners, whether plaintiff’s or defendant’s counsel, to be up-to-date on the current state of the law and to develop successful litigation strategies and tactics. Whether you are plaintiff’s or defendant’s counsel, attend this annual program to ensure that you are up-to-date on the current state of the law and on how to develop successful litigation strategies and tactics.  Join us for PLI’s Patent Litigation 2011 on September 19-20 in San Francisco (also available via live webcast or on October 13-14 in Chicago & on November 14-15 in New York) where faculty of outside and in-house lawyers who have earned national reputations in patent litigation by trying a wide variety of bench and jury patent trials,  will provide comprehensive coverage of every phase of a patent lawsuit. Through lecture and demonstration, you will be able to hone your patent litigation skills in just two days!

Here’s what you will learn:

• An expanded opening session focusing on the impact of new case law on patent litigation, including recent Supreme Court and Federal Circuit decisions
• An in-depth exploration of issues of joint/multiple infringement
• Growing trends in ITC practice
• Why is patent litigation so expensive? An analysis of the expense of patent litigation and strategies to effectively manage these costs
• Strategy and tactics in concurrent reexamination proceedings
• Fact and fiction in jury trials: what gets through to the jurors?
• Current trends in patent damages in the post-Uniloc environment

Click here for more information on Patent Litigation 2011!

 

Foley & Lardner On The ACLU/Myriad Decision

The following discussion comes from Courtenay C. Brinckerhoff and Jacqueline D. Wright Bonilla of Foley & Lardner.

Federal Circuit Decides Highly Anticipated “ACLU/Myriad” Gene Patenting Case – Subject Matter Patent-Eligibility of Isolated DNA and Diagnostic Methods Addressed Head-On

On July 29, 2011, in one of the most controversial and publicized biotech patent cases in many years, the Federal Circuit decided the “ACLU/Myriad” gene patenting case, formally known as Assn. Mole. Path. et al. v. USPTO et al. In a majority opinion by Judge Lourie, the Court addressed the case on the merits, after finding standing. The Court held all “isolated DNA” claims at issue patent-eligible, but held as patent-ineligible diagnostic method claims that in effect recite only “comparing” or “analyzing” DNA sequences. While it is anticipated that this ruling may be the subject of en banc review before the Federal Circuit and/or will ultimately find its way to the Supreme Court, today’s decision and its impact will undoubtedly be of great interest to everyone working in the biotechnology and diagnostic medicine fields.

Background

After hearing oral arguments on April 4, 2011, Judges Lourie, Bryson, and Moore issued opinions relating to the appeal of the March 29, 2010 summary judgment decision of the U.S. District Court for the Southern District of New York (Sweet, J.) that invalidated the challenged claims in seven Myriad patents as patent-ineligible under 35 U.S.C. § 101. (See Foley’s April 4, 2011 Legal News Alert: The Federal Circuit Hears Oral Arguments in Myriad Isolated DNA Case.) (more…)

Do You Have The Right To Sue: Understanding Contract Provisions In The Context Of Litigation

Written by Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, and his associates Josephine Liu and Tara Rahemba.

A patent grants the patentee the right to exclude others from making, using, selling, offering to sell or importing the patented invention into the United States.  35 U.S.C. § 271(a).  It follows that when this right to exclude is violated by an infringer, the “patentee” has the right to bring a “civil action for infringement of [its] patent,” i.e., standing to sue for patent infringement.  35 U.S.C.  § 281.

Recently, the identity of the “patentee” as defined, has been called into question.  The Federal Circuit has made it clear that nuances in the provisions and language used in patent licensing and assignment agreements can be critical in determining whether or not an inventor, licensee or assignee has standing to sue another party for patent infringement.  Slight imperfections or even subtle deviations from what was actually intended or desired by the parties can have a profound impact on their right to sue over the patent.  It is therefore imperative that practitioners are knowledgeable about the effects particular language and provisions have on a standing determination in order to ensure that their clients, whether individual inventors or corporations, licensors or licensees, preserve their right to sue for patent infringement. (more…)