Rapid Litigation Management
v.
Cellzdirect
Presented by Katherine Kim
© 2016 Workman Nydegger
Invention- US 7,604,929 Patent (‘929 Patent)
An improved method of preserving hepatocytes (liver cells) using multiple freeze-thaw technique
Rapid Litigation Management v. CellzDirect
Federal Circuit Court Decision Holding: Method of preparing hepatocytes is patent
eligible
Rapid Litigation Management v. CellzDirect
History- Cryopreservation
Rapid Litigation Management v. CellzDirect
New Invention! Method Claim of US ‘929 Patent
• Directed to a method of preparing frozen hepatocytes that can be thawed and re-frozen (at least twice) while remaining viable
• The claimed method is an artificial-selection approach of freezing then thawing a group of hepatocytes and then selecting the cells still viable.
Rapid Litigation Management v. CellzDirect
Method Claim of US 7,604,929 Patent
Thaw
Rapid Litigation Management v. CellzDirect
Claiming “natural law” that some hepatocytes can survive these freeze-thaw
cycles?
Rapid Litigation Management v. CellzDirect
District Court for Northern District of Illinois
Holding: Patent method invalid!
Rapid Litigation Management v. CellzDirect
Federal Circuit Holding
Patentable Concept
Rapid Litigation Management v. CellzDirect
Federal Circuit Holding
• “The inventors certainly discovered the cells’ ability to survive multiple freeze-thaw cycles, but that is not where they stopped, nor is it what they patented. Rather, as the first party with knowledge of the cells’ ability, they were in an excellent position to claim applications of that knowledge. That is precisely what they did. They employed their natural discovery to create a new and improved way of preserving hepatocyte cells for later use.”
Rapid Litigation Management v. CellzDirect
Rapid Litigation Management v. CellzDirect