Rapid Litigation Management v. CellzDirect (Fed. Cir. 2016)
In an interesting decision, the Federal Circuit has rejecting a district court Section 101 invalidity finding. On appeal, the Federal Circuit held that the claimed hepatocyte prep-method was “not directed to a patent-ineligible concept.”
The claim of the ‘929 patent is 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 basically an artificial-selection approach of freezing-and-thawing a group of hepatocytes and then selecting the ones still viable. The claims include a few additional details such as using density gradient fractionation (centrifuge) to separate the viable from nonviable; not plating the cells between the first and second freeze; and using a pooled preparation of hepatocytes from multiple sources. U.S. Patent No. 7,604,929.
After reading the claims, the district court found that the patent effectively claimed the ‘natural law’ that some hepatocytes can survive multiple freeze-thaw cycles. On appeal the Federal Circuit disagreed with this characterization and instead found that the claims “directed to a new and useful laboratory technique for preserving hepatocytes.”
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.” Myriad, 133 S. Ct. at 2120 (quoting Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303, 1349 (Fed. Cir. 2012) (Bryson, J., concurring in part and dissenting in part)). 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.
Here, the court distinguished this invention from others – noting that the claimed application was not an “abstract mental process” but instead directed to a production method. In trying to draw a line to protect important advances in science and technology, the court added to the oft-stated argument that a true application of Mayo/Alice would decimate the patent system:
Through the recited steps, the patented invention achieves a better way of preserving hepatocytes. The ’929 patent claims are like thousands of others that recite processes to achieve a desired outcome, e.g., methods of producing things, or methods of treating disease. That one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim “directed to” that natural ability. If that were so, we would find patent-ineligible methods of, say, producing a new compound (as directed to the individual components’ ability to combine to form the new compound), treating cancer with chemotherapy (as directed to cancer cells’ inability to survive chemotherapy), or treating headaches with aspirin (as directed to the human body’s natural response to aspirin).
Method Claim: The court here distinguished this case from Funk Brothers primarily by indicating that the present case is about a method-of-producing while the Funk Brother’s invalid claim was directed to a product – namely a mixture of already existing bacteria. In that case, the Supreme Court expressly stated that it was not addressing the question of whether a method of creating the mixture might be patent eligible.