By Kevin E. Noonan --
Any party who has ever come before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) quickly realizes the extent to which the Board enforces procedural niceties. This tendency sometimes leads to logically incongruous results; for example, in its St. Regis Mohawk Tribe v. Mylan decision, the Board cited as sufficient grounds for denying the Tribe's motion to dismiss on sovereign immunity grounds, that there was no precedent for that decision (while conceding that it was a case of first impression). But that basis for denying the motion was consistent with the Board rule (37 C.F.R. § 41.121(b)) that the proponent of a motion bears the burden of establishing its right to the relief requested. (Fortunately, the Board reached the merits in supporting its decision.)
Sigma-Aldrich found itself in a similar situation, recently, related to its filing of an extraordinary motion to the Director and the Chief PTAB Judge, asking the Office to declare an interference between the University of California et al.'s patents and applications directed to CRISPR technology and its own applications having an earlier filing date (see "Sigma-Aldrich Wants Its Piece of CRISPR Pie"). Sigma's motion was based on the PTO's refusal to find its claims in condition for allowance, a perquisite for declaring an interference. Sigma made compelling arguments in its Petition, including that the Examiner (according to the Petition) provided no legal justification for refusing to acknowledge what Sigma contends is the precedential value of the decisions in the earlier interference. Sigma argued (to the Examiner and in its Petition) that if the Doudna et al. provisional applications did not provide sufficient support to find the Broad's claims obvious (in an interference context) they cannot support a determination of obviousness in ex parte patent prosecution involving Sigma's applications.
The Office dismissed this Petition without prejudice on September 23rd. To these arguments, the Board recited procedural deficiencies in Sigma's Petition; specifically, the Board dismissed the Petition (without prejudice) on the grounds that: 1) the petition is improper, because Sigma had included multiple petitions filed under different regulations, in contravention of 37 C.F.R. § 1.4(c); 2) the proper route to challenge the Examiner's decision was to appeal, under 37 C.F.R. § 41.21 (ignoring Sigma's argument that it would be prejudiced if required to appeal, in view of the delay that would be occasioned by appeal); 3) that declaring an interference would be "premature" because no claims were deemed allowable, as required under 37 C.F.R. § 41.102; and 4) Sigma had not satisfied the requirements of 37 C.F.R. §§ 41.202(a) and 41.202(d), governing suggesting an interference or adding an application to an interference (including, inter alia, "identify[ing] all claims that the applicant believes interfere, as well as propos[ing] one or more counts, and [explaining] how the claims correspond to the proposed count(s)") and explaining why the proponent would prevail on priority.
Sigma has replied to dismissal of its petition by refiling the petition in all its related, pending applications (U.S. Application Nos. 15/188,911, 15/188,924, and 15/456,204) and filing a paper in satisfaction of 37 C.F.R. §§ 41.202(a) and 41.202(d) suggesting the Office declare an interference between each of these applications and California's U.S. Applications Nos. 15/9547,718 and 15/981,809 (whole "reserve[ing] the right to supplement the request" for additional patents and applications). Also filed were amendments to the claims, a response to an outstanding Office Action in the '911 application, and extensive support for these amendments and the suggestion for interference. Except for these additional submissions and reference to the dismissal without prejudice of its initial Petition, Sigma's arguments were substantially reiterated, that the Examiner refused to be persuaded by Sigma's evidence and refused to recognize the allowability of its pending claims (reminding the Office that in the latest Office Action, in the '911 application, the phrase "unpersuasive" (or its equivalent) was repeated "over 70 times"). Sigma again argues that "[f]or the effective administration of justice, efficiencies of the USPTO and the parties, conservation of considerable valuable resources, and the public interest," the new interference should be declared (between Berkeley and Sigma in its petition; it is difficult to see the USPTO not including the Broad et al. patents in any such interference). And Sigma continues to argue that the delay that would be occasioned by following the Office of Petition's application of the rules by filing an ex parte appeal.
It took the Office about five weeks to render its decision on the Petition; if the Office considers Sigma's arguments on the merits, it is likely to take somewhat longer for Sigma to get a decision. In the meantime, the current interference between University of California et al. and The Broad Institute and its friends had continued apace (see "CRISPR Interference Parties Propose Motions"; "PTAB Redeclares CRISPR Interference and Grants Leave for Some (But Not All) of Parties' Proposed Motions"; "CRISPR Interference: Motion Practice; Broad Institute Takes Its Turn in Interference Motion Practice"; and "University of California/Berkeley et al. Authorized to File Motion Opposed to Broad Substantive Motion No. 1"). Sigma may have lost its moment, but it is not hindered by the Board's prior decision that there is no interference-in-fact with California's claims (or The Broad's) and, eventually, may have the opportunity to challenge claims from either or both parties to priority for CRISPR technology.
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