Understanding the timing of these two cases is important. On October 30, 2008, the court announced its much-anticipated decision in In re Bilski in which the court adopted the machine-or-transformation test for patentability of processes under 35 U.S.C. 101. The court heard oral arguments for Classen after oral argument for Bilski but before publication of the Bilski opinion. This timing means that members of the Classen panel were likely debating the Bilski issue and/or reviewing the Bilski opinion at the time of the Classen oral argument (The court sat en banc for Bilski).

Indeed, listening to the Classen oral argument clearly shows that Judge Moore was intensely interested in the patentability of mental processes at the time. She initiated a discussion on the issue by asking counsel for the patentee to ignore the non-mental immunizing step of the claim at issue (“yes, clearly you’re absolutely right…these are not exclusively mental process claims.”). Counsel entered into an academic discussion with Judge Moore only reluctantly and eventually offered an interesting perspective on why such claims should be patentable (just because you can’t enforce a patent doesn’t mean you should be prevented from getting the patent).

Then, after this fascinating discussion, the court issued its one paragraph opinion that summarily dismisses the claims as unpatentable. To support this holding, the court pointed only to Bilski. This would be unremarkable, of course, if the claims at issue in Classen were pure mental process claims. But, as is clear from the oral argument, the claims included a non-mental step (immunizing). Indeed, as mentioned above, Judge Moore had to hypothetically remove this step from the claim in order to entice counsel into the patentability discussion in the first place.

So what became of the non-mental immunizing step? We really have no idea. But, considering the lack of discussion in the Classen opinion and its non-precedential status, we know that an open question exists as to whether a non-mental step (particularly, a known non-mental step) in a process claim that can otherwise be performed mentally is sufficient to confer patentability.

How’s that for an interesting one paragraph opinion?