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« SNIPR Technologies Ltd. v. The Rockefeller University (PTAB 2021) | Main | Ticked Tabby Cats and Their Genetic Bases Elucidated »

December 06, 2021

Comments

Keven, even if inequitable conduct is found in an application in interference, that still leaves the historical messy question of what can or should be its consequences for the interference? Or, what is the appropriate extent or type of the sanction in the interference itself? The IC party's ultimate patents may be unenforceable for IC, but the PTAB does not have jurisdiction to make that decision. It has been argued that IC alone does not logically justify interference judgements effectively awarding patent claims to other parties who would not have won on a priority contest?

Paul: the case the PTAB cited, Miyazaki, seems to indicate that the Board thought it had the authority to do so, and you could make the argument that a showing of inequitable conduct should make the claims unenforceable (which could be appealed in due course). But this doesn't answer the priority question. I suspect a decision rendering the claims unenforceable might motivate the parties to settle the interference in CVC's favor with Broad getting some sort of (non-exclusive) license and perhaps some small portion of CVC's royalties for licensing their patents.

I looked for the Miyazaki interference decision and could not find it; the case was appealed to the Federal Circuit in 2004 (Docket No. 04-1245) but haven't found a decision on the CAFC website.

I'll let you know if I find anything else. Thanks for the comment.

I found a copy of the McDonald case at the BPAI. (According to a docket sheet I also found, the CAFC appeal was dismissed by mutual agreement before any briefs were filed.) Here is the Casetext link.

https://casetext.com/admin-law/ex-parte-mcdonald-39

The IC discussion begins at paragraph [61]. As one can see, that paragraph also states that a finding of IC empowers the Board to hold claims unenforceable during an interference—but only the involved claims.

-kd

Too many crispr interference.. about Sigma, CVC, Broad, how is it going?

Thanks, kd - greatly appreciated.

david - if you put CRISPR in the PatentDocs search box you will get an up-to-date description of where we are. Short answer: in the '115 (CVC v Broad) interference, the only thing remaining is the Oral Hearing on priority, and this inequitable conduct motion.

For both the '126 (Broad v. ToolGen) and '127 (CVC v. ToolGen) they have their Oral Hearing on the Preliminary Motions. It is unlikely that the Board will change the Count or dedesignate claims (what Broad wants) and if they don't then whether they grant "inside" priorities to ToolGen becomes less significant.

Of course, should the Board find IC as asserted by CVC in the '115 interference then a similar outcome could arise in the '126 Interference.

I think (unless I've missed it) that Sigma hasn't had an interference declared yet.

Thanks for reading

Thank you for your comments.

But I think you need to check below website.

https://acts.uspto.gov/ifiling/PublicView.jsp?identifier=106132&identifier2=null&tabSel=1&action=filewrapper&replyTo=PublicView.jsp

https://acts.uspto.gov/ifiling/PublicView.jsp?identifier=106133&identifier2=null&tabSel=1&action=filewrapper&replyTo=PublicView.jsp

Thanks very much!

david k: any idea if Sigma is provoking an interference with ToolGen?

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