Skip to content

Loeb & Loeb Secures Major Appellate Victory for In Vitro Inc. in Patent Infringement Case

Loeb & Loeb LLP, together with co-counsel from Mayer Brown, secured a major appellate victory for Rapid Litigation Management Ltd. and In Vitro, Inc. (collectively, “IVT”) when the U.S. Court of Appeals for the Federal Circuit issued a precedential decision reversing an Illinois district court’s summary judgement ruling invalidating IVT’s LiverPoolTM patent (U.S. Patent No. 7,604,929), and vindicating the patent eligibility of IVT’s methods for producing multi-cryopreserved liver cell products for use in in vitro drug metabolism studies.

In applying the two-part Mayo test of patent eligibility under Section 101 of the Patent Act, the district court had concluded that the ‘929 patent was “directed to an ineligible law of nature: the discovery that hepatocytes are capable of surviving multiple freeze-thaw cycles.” The Federal Circuit made a critical distinction in its decision to overturn the district court ruling, acknowledging that the ‘929 patent claims employ the laws of nature, but finding that the claimed methods are patent eligible as applying the natural discovery “to achieve a new and useful preservation process.”

The Federal Circuit ruling revives a patent suit against Life Technologies Corporation for infringement of the LiverPoolTM patent and marks a seminal decision for the biotechnology and pharmaceutical industries on the issue of patent subject matter eligibility in the wake of the Supreme Court’s decisions in Alice v. CLS Bank Int’l and Mayo Collaborative Services v. Prometheus Labs. This important holding will allow many life sciences innovations to obtain patent protection and meet the Section 101 test.

Loeb & Loeb has represented the patent owner during the prosecution of the LiverPool patent and since the inception of this case, including during the preliminary injunction proceedings and two prior appeals to the Federal Circuit.

Loeb & Loeb partner Adam Kelly commented: “Having been involved with the defense, enforcement, and prosecution of this patent for a decade, we had always believed that this novel cryopreservation process was patent-eligible. The inventors seized upon the discovery that hepatocytes could be successfully cryopreserved more than once and applied it to create a ground-breaking pooled hepatocyte product—one that is extremely important for drug discovery and testing. That ingenuity had to be protected by the patent law. If applying an unnatural, unconventional process to naturally-occurring material was not patent-eligible, then the entire life sciences industry would have been forced to drastically curtail resources for research and development. But, with the Federal Circuit’s decision today, that grim scenario is thankfully not the case.”

Loeb & Loeb’s team acting on behalf of IVT in this matter also included attorneys Laura A. Wytsma with support from Sarah C. Kunzendorf.