Tafas v. Dudas.

Analysis later …

The Federal Circuit has, in a nonprecedential opinion issued today in Classen Immunotherapies v. Biogen Idec, affirmed the invalidity of U.S. Patent No. 5,723,283 on patentable-subject-matter grounds.  (Dennis Crouch quotes the one-paragraph opinion, and Claim 1 of the ‘283 patent, here.)

The Classen ruling puts it all on the Bilski case.  Bilski, recall, states as follows:

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson . . . the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.

In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008).

What’s intriguing about Classen is that it doesn’t appear to rely on the more general considerations stated in Bilski, i.e., the need for “meaningful limits on the claim’s scope” and the derogation of “insignificant extra-solution activity.”  Of course, Classen is highly compressed, clocking in at a total of 68 words (including words in citations), so I may wrong about this.  But here’s the (one and only) sentence providing the court’s rationale:

Dr. Classen’s claims are neither “tied to a particular machine or apparatus” nor do they “transform[] a particular article into a different state or thing.”

(Quoting Bilski.)

At first blush, however, Classen Claim 1 does appear to recite a transformation of a physical article – namely, a mammal (actually, more than one), which the process takes from an unimmunized to an immunized state:

1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.

It would appear, then, that the Federal Circuit doesn’t view the mammal recitation in Classen Claim 1 to be a transformed article or a machine.

If I’m right about the Federal Circuit’s view, I think there’s some tension between Bilski & Classen, on the one hand, and the Supreme Court’s decision in Diamond v. Chakrabarty, 447 U.S. 303 (1980), on the other hand.  Chakrabarty holds that a genetically modified bacterium is a patentable “manufacture” or “composition of matter” under section 101.  Classen appears to imply that something – namely, a mammal – could be a manufacture under section 101, and at the same time not the sort of article a transformation in which renders a method patentable under section 101.

Of course, one could counter that I’m eliding – improperly – an important difference between the single-cell bacterium in Chakrabarty and the much more complex, higher life form recited in Classen.  Is it possible, for example, to hold that a genetically modified bacterium is a manufacture for section 101 purposes but that a genetically modified mammal is not a manufacture for section 101 purposes?  Of course!  Indeed, the Supreme Court of Canada did just that in the 2002 Harvard College case rejecting the patentability, in Canada, of the Harvard oncomouse.  Interestingly, the patentable subject matter statute in Canada is copied from our own 1793 Patent Act and uses the same terms, “manufacture” and “composition of matter.”

Perhaps patentee Classen Immunotherapies will seek certiorari on the ground that the Federal Circuit’s rejection of the method claim can’t be squared with Chakrabarty’s holding that a genetically modified bacterium is a manufacture . . . 

I missed this one in March, but, happily, my Westlaw tracking just picked it up …

In March, Judge Camp, U.S. District Judge for the Northern District of Georgia, issued his opinion in a bench trial in a patent case.  Among the issues Judge Camp decided is whether Kleen-Tex’s asserted claims would have been obvious.  Judge Camp’s opinion is a model of clarity and thoroughness.  If you want to see nonobviousness analysis at its careful best, you can’t do better than Judge Camp’s Kleen-Tex decision.

Lucky for us, it’s available as a pdf through the good work of Coby Nixon’s excellent Georgia Patent Law Blog.  He summarizes Kleen-Tex here.

In sum: Read Kleen-Tex.  And check out Nixon’s blog!

Are you curious to know the bottom-line outcomes in the 17 published post-KSR Federal Circuit cases that conduct a nonobviousness inquiry? The below picture sorts the results in a crude, but (I think) interesting way. [ Note (with a hat tip to my anonymous commenter: This count doesn't include summary affirmances.  One can't know what issues were considered in such a case without reading the appeal briefs in the case, and I haven't done that. ]

Last October, we hosted an interdisciplinary conference about nonobviousness, here at Lewis & Clark Law School.

Several of the papers from the conference have now been published in the Lewis & Clark Law Review. You can snag pdfs of the articles at http://www.lclark.edu/org/lclr/current.html

It’s an interesting collection of psychologists, lawprofs, and an economist. I hope you’ll take a look.

Yesterday, the district court granted summary judgment in favor of promotional CD reseller Troy Augusto on his copyright exhaustion claim.

The Electronic Frontier Foundation, representing Augusto, has posted a pdf of the opinion here.

Those who wonder whether purported licenses on tangibles (”Not for resale,” etc.) can negate the exhaustion principle, in copyright or in patent, need to take a close look at Judge Otero’s analysis

The leading contemporary case citation for understanding whether a reference “teaches away” is In re Gurley, 27 F.3d 551 (Fed. Cir. 1994).  Looking over post-KSR cases about nonobviousness, I thought I was seeing it more than usual (along with discussion of a patentee’s “teach away” contention about a piece of prior art).

Well, here’s an almost certainly useless, but nonetheless amusing, contrast:

In the 4,702 days that elapsed between In re Gurley (June 15, 1994) and the Supreme Court’s decision in KSR (April 30, 2007), the federal courts cited Gurley by name 62 times, i.e., about once every 76 days.

In the 406 days that elapsed between the day after KSR and today, the federal courts cited Gurley by name 13 times, i.e., about once every 31 days.

Hmm …  Could it be that, post-KSR, the “teaching away” question is more salient?

What do you think is the most important law review article about patent law that was published in the 1980s?

What do think is the most important law review article about patent law that was published in the 1960s?

Today, in Agrizap, Inc. v. Woodstream Corp. (Fed. Cir. May 28, 2008), the Federal Circuit overturned a jury verdict of nonobviousness. The claimed invention is a rodent electrocution trap, U.S. Patent No. 5,949,636. The key difference between the ‘636 trap and the key prior art trap (a trap the patentee sold more than a year before the ‘636 patent’s filing date) is that the prior art trap used a mechanical switch and the claimed trap uses a resistive switch.

The Federal Circuit’s analysis employs a post-KSR presumptive obviousness framework that I think we’ll see quite a bit of in the coming years. Here’s the entirety of the court’s substantive analysis of the nonobviousness question:

This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and the asserted claims, as conceded by Agrizap, is the type of switch used to complete the circuit that triggers the generator. The asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch employed by the Gopher Zapper. As illustrated by the Dye and Madsen patents, the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. In favoring resistive switches over mechanical switches, both the Dye and Madsen patents are directed to solving the same problem as the ’636 patent—the malfunction of mechanical switches in environments prone to dirt and dampness. See ’746 patent col.1 ll.43-46, ll.53-63; ’809 patent col.1 ll.31-55.

In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness. Similarly, in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., we held that the objective considerations of nonobviousness presented in that case, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid. 485 F.3d 1157, 1162 (Fed. Cir. 2007). Based on the foregoing, we reverse the district court’s denial of Woodstream’s motion for JMOL as to the obviousness of the asserted claims.