Tuesday, July 05, 2016


A decision of the ND Illinois was reversed and claims were found to survive 101 analysis under Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014).

Bloomberg wrote of the case:

The dispute is over a way to preserve a type of liver cell known as hepatocytes, used for things like testing the toxicity of a new drug. There’s a limited supply for researchers and the cells have a short lifespan in labs, and it was earlier believed they could only be frozen once and then had to be discarded.

The inventors on the patent discovered that some hepatocytes could survive multiple freezings and thawings, and created a process to weed out the cells that were most likely to still be viable after the second freezing.

Were this not be eligible for a patent, “no one could ever get a patent on cryopreservation, or on any other innovative method that acts on something that is naturally occurring,” Chief Judge Sharon Prost wrote for the three-member panel.

link: http://www.bloomberg.com/news/articles/2016-07-05/personalized-medicine-gets-boost-from-court-ruling-on-patents

[One might question Bloomberg's use of "weed out" as to the viable cells. The claim notes: cryopreserving the recovered viable hepatocytes to thereby form said desired preparation of hepatocytes without requiring a density gradient step after thawing the hepatocytes for the second time ]

The CAFC found the patent claims survived BOTH prongs of the Alice test.
Of the second prong:

Even if LTC were correct that the ’929 patent
is “directed to” hepatocytes’ natural ability to survive multi-
ple freeze-thaw cycles,
and that we must proceed to step
two, we would find the claims patent-eligible at that point as well.
Under step two, claims that are “directed to” a
patent-ineligible concept, yet also “improve[] an existing
technological process,” are sufficient to “transform[] the
process into an inventive application” of the
patent-ineligible concept. Alice, 134 S. Ct. at 1358 (quoting
Mayo, 132 S. Ct. at 1299) (discussing
Diamond v. Diehr, 450 U.S. 175 (1981). The claims
of the ’929 patent do precisely that: they recite an improved
process for pre-
serving hepatocytes for later use. The
benefits of the improved process over the prior art methods are signifi-

ALICE O. MARTIN, of Barnes & Thornburg LLP, Chicago, IL, wrote an amicus curiae brief for Biotechnology Industry Organization, supporting the patentee.


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