US PTO rules against Univ of California, argues that Broad Inst invented CRISPR

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US PTO rules against Univ of California, argues that Broad Inst invented CRISPR

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106,115 Decision on Priority Patent Case

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BoxInterferences@uspto.gov Filed: February 28, 2022 Tel: 571-272-9797 UNITED STATES PATENT AND TRADEMARK OFFICE  _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD  ______________

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,

UNIVERSITY OF VIENNA, AND EMMANUELLE CHARPENTIER Junior Party (Applications 15/947,680; 15/947,700; 15/947,718; 15/981,807; 15/981,808; 15/981,809; 16/136,159; 16/136,165; 16/136,168;16/136,175; 16/276,361; 16/276,365; 16/276,368; and 16/276,374), v.

THE BROAD INSTITUTE, INC.

, MASSACHUSETTS INSTITUTE OF TECHNOLOGY, and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Senior Party (Patents 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641, 9,840,713, and Application 14/704,551). Patent Interference No. 106,115 (DK)

Decision on Priority 37 C.F.R. § 41.125(a)

Before, SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ,

 Administrative Patent Judges

. KATZ,

 Administrative Patent Judge.

Interference 106,115 -2-

Summary

1 In this interference we determine that The Broad Institute, Inc., 2 Massachusetts Institute of Technology, and President and Fellows of Harvard 3 College (“Broad”) have priority over The Regents of the University of California, 4 University of Vienna, and Emmanuelle Charpentier (“CVC”) with respect to Count 5 1 – a single RNA CRISPR-Cas9 system that functions in eukaryotic cells. CVC 6 fails to provide sufficient, persuasive evidence of an earlier reduction to practice or 7 conception, as they are legally defined, of each and every element of Count 1 8  before Broad’s evidence of reduction to practice. Thus, we determine that CVC’s 9 currently involved claims are unpatentable under 35 U.S.C. § 102(g).

 10 Furthermore, we are unpersuaded by CVC’s arguments that Broad’s involved 11 claims are unpatentable under 35 U.S.C. § 102(f) for failure to name the correct 12 inventors and we exercise our discretion in declining to take up CVC’s arguments 13 regarding inequitable conduct. We enter judgment against CVC, finally refusing 14 CVC’s claims involved in this proceeding. 15 16

 I. Introduction

17 The same parties were before us previously in Interference 106,048. CVC 18 was involved in that interference based on claims to a CRISPR-Cas9 system that 19 cleaves DNA without restriction to the environment (

e.g.,

encompassing

in vitro

 20 environments outside of a cell and prokaryotic cell environments), whereas Broad 21

1

 Patent interferences continue under the relevant statutes in effect on 15 March 2013.

See

 Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).

Interference 106,115 -3- was involved based on claims that were limited to the system in a eukaryotic 1 environment. (

See

Interference 106,048, Senior Party Clean Copy of Claims, 2 Paper 12, Replacement Broad Clean Copy of Claims, Paper 17, and Decision on 3 Motions, Paper 893, 2:4–7.) That interference was terminated without a 4 determination of unpatentability or judgment against either party because it was 5 held, on motion by Broad, that the parties’ involved claims did not interfere. (

See

6 Interference 106,048, Decision on Motion, Paper 893.) Specifically, it was held 7 that CVC’s claims to a CRISPR-Cas9 system without restriction to environment do 8 not anticipate or render obvious Broad’s claims limited to a eukaryotic 9 environment. (

See id.

) 10 Subsequent to an affirmance of that decision by the Federal Circuit,

 at least 11 some of CVC’s involved applications were issued as patents with claims to a 12 method of cleaving DNA with a CRISPR-Cas9 system having a single RNA 13 component, without restriction to the environment. (

See,

e.g 

.

 ,

U.S. 14 Patent 10,266,850;

 see

CVC Opp. 5, Paper 2567, 37:4–6.) There is no dispute in 15 this proceeding over the patentability of those claims or that the CVC inventors 16 were the first to invent a CRISPR-Cas9 system with a single guide RNA to cleave 17 DNA in a generic environment. 18 CVC now presents claims to a CRISPR-Cas9 system having a single RNA 19 component in a eukaryotic cell environment. (

See

Junior Party’s Clean Copy of 20 Claims, Paper 7.) These claims were determined to interfere with the same Broad 21

2

See Regents of Univ. of California v. Broad Inst., Inc.

, 903 F.3d 1286 (Fed. Cir. 2018).

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