PTAB Grants Priority for Eukaryotic CRISPR to Broad in Interference No. 106,115

By Kevin E. Noonan --

In an 82-page decision, the Patent Trial and Appeal Board granted priority for eukaryotic CRISPR to the Broad Institute, Harvard University, and MIT (collectively, "Broad") as Senior Party and against Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") (the Decision on Priority 37 C.F.R. § 41.125(a) can be accessed here; see Document No. 2863).  Accordingly, all of Broad's patents and applications in interference remain and CVC's applications having claims directed to eukaryotic CRISPR are finally rejected for lack of priority (see "CRISPR Battle Joined Again").

While requiring more detailed analysis (which will be forthcoming in later posts), the Board was convinced by Broad's arguments that CVC's attempts to reduce eukaryotic CRISPR to practice were unavailing until after Broad's reduction to practice as evidenced by a manuscript submitted on October 5, 2012.  Operating on the legal principle that "priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive of the invention and that it exercised reasonable diligence in later reducing that invention to practice," Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998), the Board was unconvinced that CVC's March 1, 2012 conception satisfied the requirements of "complete" conception.  Using much of the same argument (albeit for different purposes) as it had to prevail in Interference No. 106,048 (see "PTAB Decides CRISPR Interference in Favor of Broad Institute -- Their Reasoning"), the Broad persuasively argued that the evidence of CVC's attempts to reduce eukaryotic CRISPR to practice showed sufficient uncertainty and failures for the Board to conclude that CVC did not satisfy the requirements for conception.  On this evidence the Board was unpersuaded that all that had been needed was the application of routine experimentation using the sgRNA detailed in CVC's March 1st priority statement.  Nor was the Board convinced that Broad derived the embodiments of eukaryotic CRISPR that they reduced to practice embodying sgRNA only after Dr. Marraffini obtained it from CVC and disclosed it to the Broad inventors (see "CVC Files Reply to Broad's Opposition to CVC's Priority Motion").

It must be said that this decision is not particularly surprising in light of the tenor of questioning by the Board in the Oral Hearing on February 4th (see "PTAB Hears Oral Argument in Interference No. 106,115") or by reading the hearing transcript.

In addition to the decision on priority, the Board denied CVC's motion for improper inventorship under 35 U.S.C. § 102(f) (see "CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes") for evidentiary deficiencies, and in their discretion refused to consider CVC's allegations of inequitable conduct against the Broad (see "Inequitable Conduct by Senior Party Broad Alleged in Interference No. 106,115 (and PTAB May Finally Hear Evidence About It)").

Thus, the status of eukaryotic CRISPR is where the parties left it after the '048 Interference decision but with Broad in a decidedly better position, having been granted priority on the merits here.

Having lost its priority to Broad, it is possible that Interferences Nos. 106,127 and 106,132 naming CVC as Junior Party in each will be dissolved but those decisions remain to be rendered (see "Separate Interferences Declared between Toolgen and Broad and CVC over CRISPR Priority Question" and "Sigma-Aldrich Joins the CRISPR Interference Fray").

The Board was careful to note that CVC retained its patents on CRISPR without any cell-specific limitations but that is almost certainly ephemeral with regard to eukaryotic CRISPR; CVC should be estopped from asserting those claims against Broad's licensees (or anyone else) practicing eukaryotic CRISPR.  Whether CVC's inequitable conduct allegations provide a roadmap for anyone challenging Broad's eukaryotic CRISPR estate remains speculative, and interferences involving Broad against both ToolGen (No. 106,126) and Sigma-Aldrich (No. 106,133) remain pending.

It can be expected that CVC will ask for reconsideration from the Board and when denied appeal to the Federal Circuit.

All this meaning the provenance of eukaryotic CRISPR has not been settled for good by the Board's decision today.

Comments

[kotodama]

Is there a link to the actual decision?

[Donald Zuhn]

Kotodama:

A link to the PTAB File Wrapper, where the Decision on Priority 37 C.F.R. § 41.125(a) can be accessed, has been added to the post.

Thank you for your comment.

Don

[kotodama]

Don, thank you! I was tooling around on PTAB E2E for a while, since I usually go there for IPR etc. documents, but I didn't realize interferences use the separate ACTS portal. So I've been thoroughly schooled. Now I just have to crunch my way through this 82-page decision...

-kd

[skeptical]

As this art field is typically outside of my bailiwick, I have not been paying too close attention.

But I was struck with a somewhat random thought this morning.

Given how "close" the contest has been, and recalling how some pundits have attempted to have a HYPER-powerful obviousness block on patents (amounting to an argument that ANY incidence of a close competing development is a clear indicator that such results is necessarily obvious (from the Latin, ob via, or, "in the road") - that NO ONE should obtain a patent for the contested matter) -- would patent law be better served with such a "NO patents for close contests" view of obviousness?

AND if the answer is "no," then does not the logic extend to ALL art fields?