CRISPR Chronicles Continue

By Kevin E. Noonan --

While those interested in the outcome await the April 9th filing of motions authorized by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in Interference Nos. 106,126 (between Senior Party Toolgen Inc. and Junior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology, collectively termed "Broad") and 106,127 (between Senior Party Toolgen Inc. and Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier, collectively termed "CVC"), some "housekeeping" types of activities have arisen in these interferences as well as in the earlier-declared Interference No. 106,115 between Broad as Senior Party and CVC as Junior Party.

The Board issued a Memorandum on March 1st and an Order on March 9th.  In the Memorandum, the Board considered CVC's request for an order "sequestering" members of Broad's legal team in upcoming depositions of two Broad witnesses, Drs. Breaker and Ellington.  CVC's reasons in support of their request is that "Dr. Breaker adopted the entirety of Dr. Ellington's direct testimony as his own testimony in paragraphs 25 and 32 of his declaration," and thus the expectation is that "the cross examinations of Drs. Breaker and Ellington will significantly overlap and without sequester of Broad's counsel the second witness to be deposed may be prepared knowing what questions will be asked."  This would give the Broad an unfair advantage, according to CVC, and thus be prejudicial.  Also, CVC notes that in the earlier interference between these parties, No. 106,048, CVC had agreed to sequester their counsel.

Not surprisingly Broad opposed, based in part on the distinction with the '048 Interference that that sequestration was part of a compromise involving Broad's objections to CVC's evidence.  Here, in contrast, CVC did not object to Broad's evidence and has agreed to the deposition schedule without sequestration.

To CVC's detriment, the Board stated that the Junior Party did not assert any basis in the Standing Order for sequestration.  In addition, the Board stated that it was not clear why deposition of one witness who agrees with the testimony of another witness to be deposed, and adopts portions of that witnesses testimony, should be sufficiently prejudicial to CVC to warrant sequestration.  This sentiment is supported by the fact that the witnesses will be testifying under oath, according to the Board, and that testimony is required to be "based on their own knowledge and experience."  Moreover, the agreement between the parties in the '048 Interference is not binding on the Board, according to the Memorandum, which notes that "[t]he parties are free to reach an agreement in this proceeding and to agree to any deposition scheduling that complies with the time constraints of the interference schedule and other rules or orders."  Finally, the Memorandum states that CVC will be able to argue that the Board should give no weight to any witnesses' testimony or should be excluded.  As a result, the Board declined to issue CVC's requested offer, "[b]ecause CVC has failed to persuasively explain why counsel should be sequestrated for the depositions of Drs. Breaker and Ellington."

In its March 9th Order, the Board ordered that, pursuant to the parties' request in an e-mail dated March 5th, the page limits for oppositions to each party's priority motion be extended from 10 pages to 60 pages.

The news from the '126 and '127 Interferences is even less momentous, being merely Notice from Toolgen to the Board in each interference that it had, pursuant to Standing Order ¶126, had settlement discussions and, after a "good faith effort" by the parties in each interference had not agreed to settle either interference.

Comments

[Paul F Morgan]

Keven, what do you think of this new law firm article that is attempting to give an overall explanation of this entire patent mess?
https://www.osler.com/en/resources/critical-situations/2021/making-sense-of-the-battle-for-the-crispr-cas9-patent-rights

[hardreaders]

I'm not Attorney/Dr. Noonan, but it seems like a perfectly cromulent high-level overview to me. It doesn't really get in the weeds or have any analysis, which I guess was the point, so it's difficult to say much beyond that. And it had a citation to this blog, so you can't argue with a little free publicity.

Somewhat OT but Judge Wallach is going senior at the end of May. The NLJ article on the subject had a list of some potential nominees for Biden.

[Kevin E. Noonan]

Dear Paul:

I would say this sentence is factually incorrect:

"All jurisdictions in the world where patent applications claim priority from either UC Berkeley or Broad Institute patent applications are therefore awaiting the outcome of the U.S. proceedings to determine which competing patent applications may be granted."

The error seems to stem from this idea set forth in another sentence:

"In Canada, as in many other countries, the validity of patent applications will depend on the validity of priority patent applications filed in the United States."

These ideas are wrong because most other jurisdictions have their own priority and disclosure sufficiency requirements, and do not depend on the U.S. for those determinations.

Thanks for the comment.

[Kevin E Noonan]

Dear Hard:

Citations aren't the driver, keeping up with these cases is more important. And while some of this is truly housekeeping, those who are paying attention will understand in a few months why reply briefs are 60 and not 10 pages long.

Thanks for the comment

[hardreaders]

Totally understood. I never meant to suggest you were just shilling to drum up some extra citations, but sorry if anyone took it that way. The deep dives you do—even for housekeeping matters like these—are greatly appreciated, and I look forward to more.

-hr