PTAB Decides CRISPR Interference -- No interference-in-fact

The U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) handed down its decision today that there is no interference-in-fact between several patents and patent applications owned by The Broad Institute and applications owned by the Regents of the University of California, Berkeley.  This decision ends the interference without any prejudice to any of the claims corresponding to the interference count.  Accordingly, both parties will be able to license (and assert) their patents to any third party.

The basis for the PTAB's decision is contained in a paper (#893) entitled Decision on Motions.  That paper is not yet available on the PRAB website.  We will post on this decision when it becomes available.

For additional information regarding this topic, please see:

• "Guest Post -- The Patient Side of the CRISPR Patent Battle," December 19, 2016
• "CRISPR Interference Motions Set," March 23, 2016
• "CRISPR Interference Declared," January 28, 2016

Comments

[Cardinal Intellectual Property]

US Patent No. 8,697,359 (Broad)
1. A method of altering expression of at least one gene product comprising:
introducing into a eukaryotic cell containing and expressing a DNA molecule having a target sequence and encoding the gene product an engineered, non-naturally occurring Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR)--CRISPR associated (Cas) (CRISPR-Cas) system comprising one or more vectors comprising:
a) a first regulatory element operable in a eukaryotic cell operably linked to at least one nucleotide sequence encoding a CRISPR-Cas system guide RNA that hybridizes with the target sequence, and
b) a second regulatory element operable in a eukaryotic cell operably linked to a nucleotide sequence encoding a Type-II Cas9 protein, wherein components (a) and (b) are located on same or different vectors of the system, whereby the guide RNA targets the target sequence and the Cas9 protein cleaves the DNA molecule, whereby expression of the at least one gene product is altered; and, wherein the Cas9 protein and the guide RNA do not naturally occur together.

is different from US 13/842,859 (UC Berkeley) http://portal.uspto.gov/pair/PublicPair

165. A method of cleaving a nucleic acid comprising:
contacting a target DNA molecule having a target sequence with an engineered
and/or non-naturally-occurring Type II Clustered Regularly lnterspaced Short
Palindromic Repeats (CRISPR)-CRISPR associated (Cas) (CRISPR-Cas) system comprising:
a) a Cas9 protein; and
b) a single molecule DNA-targeting RNA comprising:
i) a targeter-RNA that hybridizes with the target sequence, and
ii) an activator-RNA that hybridizes with the targeter-RNA to form a double-stranded RNA duplex of a protein-binding segment, wherein the activator-RNA and the targeter-RNA are covalently linked to one another with intervening nucleotides, wherein the single molecule DNA-targeting RNA forms a complex with the Cas9 protein, whereby the single molecule DNA-targeting RNA targets the target sequence, and the Cas9 protein cleaves the target DNA molecule.

So, they can license each other's patents to cleave a target DNA molecule.