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March 07, 2022


If CVC were to try to assert its cell-agnostic method claims against the practice of the method in eukaryotes, what principle would stop them? Prosecution history estoppel? Issue preclusion? Reverse doctrine of equivalents?

Per my earlier comment, I've now crunched through the main portions of the opinion. While it's not my scientific field at all, the decision makes a good amount of sense.

I do appreciate the seeming "injustice" as the OP describes it or cognitive dissonance that results from the opinion. That was the same impression I had after reading it. I guess it depends on how you look at what happened. On the one hand, if you view the single-guide RNA as the core inventive aspect, and what Broad later did with that as just a technical "implementation detail" then yes, it does feel a bit unfair to CVC. After all, CVC came up with single-guide by itself with no help from anybody, but Broad couldn't have accomplished anything without first having single-guide as a starting point. On the other hand, if you consider what Broad did as a separate and distinct invention all by itself, then maybe it's not so unfair to CVC. I'm leaning toward the latter, but again, it's not my field of expertise.

@James Scott Elmer: The same question came to
my mind. PHE seems like a good candidate. Or maybe prosecution disclaimer so the claims aren't construed to cover eukaryotic cells. Conversely, if they are construed that way, then based on the opinion (assuming it's not revised or reversed), don't they clearly fail written description/enablement? Maybe that would be a type of issue preclusion like you said.

JES: I will leave it to others to parse through which doctrine would apply (although I may think about this a little more and get back to you). I just cannot see a district court judge permitting patentee CVC to bring suit successfully against a defendant, having a license to Broad's patents, whom the PTO (assuming affirmance by the Federal Circuit) has determined is NOT entitled to a patent on the subject matter in suit. If only as a matter of equity.

We shall see. Thanks for the comment.

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