Another Type of Invention that May Overcome Alice

In the on-going evolution of patentability following Alice (see New Guidance for Examiners Relative to Whether a Claim is Limited to an Abstract Idea, Alice Update–Patentability of Software-Related Inventions–Enfish v. Microsoft), The Court of Appeals for the Federal Circuit recently identified another type of invention which may overcome Alice and its progeny.

As background, in Alice the Supreme Court held that inventions directed to mere algorithms, natural phenomena, and laws of nature are not directed to eligible subject matter under 35 U.S.C. § 101. Since then, numerous patents have been invalidated and not granted because of the nature of the claims, including inventions directed to gene separation and identification.

In Rapid Litigation Mngmt Ltd. v. Cellzdirect, Inc., the Federal Circuit identified that claims directed to a method for producing a desired collection of liver cells are indeed patentable. As technical background, it was well understood that liver cells, called hepatocytes, could be frozen and thawed for analysis, but only once–otherwise, the population of hepatocytes became unusable for analysis. In the patent, the patentee identified a method of selection of hepatocytes which had been frozen and which could be refrozen, whereby a density gradient was applied so as to identify re-freezable hepatocytes. The claims are directed to that method, in combination with merging the cells from multiple sources and refreezing.

The Court was explicit is identifying that it is the method, and not the actual result, which is patentable and that the actual result is merely an unpatentable natural phenomena. The Court applied the Alice test (see Alice Update–Patentability of Software-Related Inventions–Enfish v. Microsoft) and noted that in step one, the test involves what the claim is directed to–in this case, the claim was directed to a process and therefore not a law of nature or a natural phenomenon. It suggests that the lower court misapplied the test to the result and not to the method.

This case is important for several reasons. But, like other cases which have passed the Alice test, the patent survived in part because the claims include sufficient detail (presumably the specification does as well) whereby the Court could understand what is new and different, what steps were not previously applied, and what the beneficial result is. This type of important information is not limited to liver cell inventions–the same approach is important for other types of patents, including software-based inventions, where the method is key to the invention.