CVC Files Reply to Broad's Opposition to CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)

By Kevin E. Noonan --

Last December, Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") filed its Substantive Motion No. 3 under 37 C.F.R. § 41.121(a)(1) asking for judgment of unpatentability for all claims in interference under 35 U.S.C. § 102(f) or (if post-AIA) 35 U.S.C. § 115(a) for "failure to name all inventors of the alleged invention" against Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University (hereinafter, "Broad") in Interference No. 106,115.  In support of its motion, CVC argued that Broad deliberately misidentified the inventors on its involved patents and applications in the interference.  These allegations were based on differences between the named inventors in the patents- and applications-in-interference and the inventors named in a declaration by the Broad's patent attorney during a European opposition (EP 277146); it may be recalled that such irregularities involving a Rockefeller University inventor (Dr. Luciano Marraffini) not named in the EP application were the basis for that patent to be invalidated (see "The CRISPR Chronicles -- Broad Institute Wins One and Loses One").  More recently, Broad filed is motion opposing CVC's allegations of misjoined inventorship (see "Broad Files Motion Opposing CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)").  Last week CVC filed its Reply.

Reply briefs in motions before the PTAB are constrained by page length and a format wherein the movant must address all grounds of opposition raised against the motion, and CVC's Reply conforms to both constraints.  The brief sets forth, step by step, each allegation and ground of opposition raised by Broad in its opposition brief.

Thus, CVC begins it responsive argument with Broad's attorney's (Thomas Kowalski) argument.  The brief notes that the evidence it has relied upon for misjoinder of invention is based on a declaration Mr. Kowalski submitted to the European Patent Office in an application related to patents-in-interference (specifically, those related to the EP equivalents of PCT/US2013/074611, PCT/US2013/074790, and PCT/US2013/074667).  CVC's motion relied upon an analysis of the claimed subject matter disclosed and claimed in certain of these EP applications, the corresponding patents-in-interference, and differences in inventorship between applications claiming the same or sufficiently closely related subject matter.  CVC broadly argues that Dr. Baily's analysis and conclusions were not challenged nor factually rebutted by any evidence presented in support of Broad's opposition.

Broad's first challenge to CVC's arguments was brought against their expert witness Dr. Bailey for lack of proper credentials (he is not a lawyer) and for not making the comparison using, inter alia, claim charts.  CVC argues that their witness's credentials were not relevant because the analysis was of differences in the face of representations under oath by Mr. Kowalski who certainly had the proper credentials ("if [Mr.] Kowalski's analysis is correct, then those individuals who made the inventive contributions should have been (but were not) named as inventors of the involved patents and application").  Expert witness Bailey's testimony was based on an understanding of a person of ordinary skill in the art comparing the claims and disclosure of the EP applications that were the subject of Mr. Kowalski's declaration and certain patents-in-interference here, which to the extent the claimed subject matter was sufficiently the same yet inventorship differed supported CVC's misjoinder motion (the basis of this analysis was exemplified with regard to Cas9 "ortholog designs" in these applications and patents).  As stated by CVC in its brief, "Bailey considered, from the perspective of a person having ordinary skill, the relevant specification and claim language, before concluding that certain claims of Broad's PCT applications and its involved patents and application cover the same invention (italics in brief).  This is shown, for example, by comparison between "relevant claim limitations [in] the '691 PCT application and the '233 patent."

While acknowledging that Dr. Bailey had not performed a conventional claim comparison (appropriately so, he not being a patent attorney), CVC argued that "CVC's motion identifies relevant terms (pertinent to Kowalski's assessments and recited in Broad's involved claims) and offers comparisons sufficient to support the requested relief, all supported by Bailey's declaration (italics in brief).  In a related criticism, CVC argued that Broad's insistence that Dr. Bailey's analysis was deficient (inter alia, for not performing a "claim-by-claim analysis") "ignores [the Broad's] own attorney's inventorship analysis" and that "[n]othing more is required to establish that Broad failed to name the correct inventors than its attorney's sworn testimony that these individuals made inventive contributions."  Similarly, CVC argued that criticism that its analysis had not considered the consistencies in the inventorship analyses between the EP applications and the patents-in-interference was inapposite because it was only the inconsistencies that are relevant to their misjoinder motion.  Nor, according to CVC, were the various priority relationships between these applications or patents relevant; what was relevant were the differences in inventorship in applications and patents having the same claimed subject matter.

Finally on substantive issues, CVC countered Broad's argument that statements by its attorney cannot be used as admissions in this interference.  According to CVC, this is contrary to Fed. R. Evid. 801(d)(2), which apply in interferences under 37 C.F.R. § 42.62, as admissible admissions against interest.  CVC's brief cites a variety of legal precedent contrary to Broad's argument, including Williams v. Union Carbide Corp., 790 F.2d 552, 555-556 (6th Cir. 1986), and U.S. v. McKeon, 738 F.2d 26, 30 (2d Cir. 1984) (citing Oscanyan v. Arms Co., 103 U.S. 261, 263 (1880) (none of which apparently in either the patent context or involving proceedings before the U.S. PTO or PTAB).  More relevant are CVC's arguments that Broad relied upon Mr. Kowalski's declaration and should not now be allowed to disclaim it ("Broad cannot use the Kowalski Declaration to support its European opposition proceeding and in a later proceeding, like this interference, discount and abandon the same sworn testimony"), citing Pfizer Inc. v. Teva Pharm. USA, Inc., 2006 WL 3041102 at *4-5 (D.N.J. 2006) and perhaps most tellingly, Therasense, Inc. v. Becton Dicksinson & Co., 864 F.Supp.2d 856 (N.D. Cal. 2012).  CVC also supports its argument that Mr. Kowalski's declaration is admissible in this interference in support of CVC's motion for invalidity due to misjoinder because it is an admission against interest, citing Garrido v. Holt, 547 Fed. Appx. 974, n.3 (Fed. Cir. 2013), and Fed R Evid. 804(b)(3) and distinguishing precedent cited by Broad in its opposition.

Procedurally, CVC argued that Broad's motion to change inventorship as a remedy to any infirmities in inventorship is not appropriate for the reasons set forth in its opposition to Broad's motion for this remedy (see "CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes"), as well as being barred by laches and purported bad faith.  Finally, CVC reiterates in brief its argument that only the Director is empowered under the statute to file a Certificate of Correction in an inventorship dispute and there is no evidence that the Director has delegated this authority to the Board.

Comments

[hardreaders]

I always enjoy these updates.

Have you considered monetizing them as NFTs?

https://www.nytimes.com/2021/05/27/science/nobel-prize-nft-berkeley.html?action=click&module=Science%20%20Technology&pgtype=Homepage

-hr

[Kevin E Noonan]

Hardreaders: I'd have to understand what exactly NFTs are (and knowing what the acronym stands for doesn't seem to help me!)

But thanks for the suggestion.

[hardreaders]

It was more a joke about Berkeley/CRISPR anyway. One part being just the silliness of their whole NFT enterprise, as described in the NYT article. The other being the suggestion (albeit faint) they are desperate for side income despite having the lucrative CRISPR. (Perhaps they really will be if all goes south for them at the PTAB, but I doubt it.)

If you’ve not had occasion to get into the details of NFTs, I think you should consider yourself lucky.

Have a good Memorial Day!

-hr