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