Saturday, January 16, 2016

KQED weighs in on CRISPR patent battle

In a post titled CRISPR Patent War: Billions at Stake for UC Berkeley, KQED had some interesting comments on the CRISPR patent interference.

On a possible (later) appeal to the US Supreme Court:

The victor won’t be announced in 2016. Sherkow says the trial will take years. It could go all the way to the Supreme Court, but he says that’s not likely.

“The chances of it going to the Supreme Court are only slightly better than the Powerball we had [this week],” he says.

IPBiz does not know how this probability was estimated, but suspects it is too low, likely lower than that of any appealed case getting cert.

If you were wondering about Powerball, consider text from Huffington Post:

What are your chances of winning? A quick look at the Powerball website tells you the probability of winning the jackpot is 1 in 175,223,510. To see where that number comes from, imagine purchasing every number combination. In Powerball, a player first picks five different whole numbers between 1 and 59. One could make a list of all the possibilities, starting with (1, 2, 3, 4, 5), (1, 2, 3, 4, 6), and so on all the way through (55, 56, 57, 58, 59). But it would take a long time to make that list, because it has more than five million entries! Indeed, mathematics tells us the number of ways to choose five distinct numbers from 1 to 59 is 5,006,386.

After choosing the five numbers between 1 and 59, the player then picks another number between 1 and 35 that is called the Powerball. So, we multiply the 5,006,386 by 35 and see that there are 175,223,510 possible Powerball combinations. For simplicity, let's be generous and round off to an even 175,000,000.


For comparison, the number of cert petitions per year between 1986 and 1990 was about 5000, and in 1992 cert was granted for 120 cases. Of more recent vintage, the Cockle Bur blog wrote:

In recent years, the Court has received between 7500 and 8000 cert. petitions per year: from July 2011 to July 2012, for example, 7712 new petitions were filed. There were 7857 in the same period from July 2010 to July 2011 and 8159 the year before that. One notes that 100/8000 is 1 in 80 (0.0125), a lot bigger than 1 in 175 million.

AND, also from KQED:

‘Whoever has a patent on this could charge as much in royalties as they want and can set their price because they now have a monopoly.’
— Mildred Cho, Stanford University

One notes that one could have a diode/triode situation, wherein neither party can control. Or, the integrated circuit outcome,
wherein the competitors cut a deal.

As another matter, note also

Interference Appeals Not Just For Fed. Circ., Justices Told

with the subject matter related to a drug for multiple sclerosis.

**As to some pertinent points in an interference, contemplate text from Stephen P. Troy, Jr. v. Samson Mfg. Corp. :

The '665 application and the '451 patent relate to a modular handguard rail for a firearm. During the interference, Troy was declared the "junior party." The Board also determined that Samson's earliest constructive-reduction-to-practice date was January 18, 2005 ("the Critical Date").


Troy bore the burden of establishing priority of invention in the District Court by showing an actual reduction to practice of the invention prior to Samson's Critical Date. In order to establish an actual reduction to practice, Troy needed to demonstrate that (1) he constructed an embodiment or performed a process to meet every element of the claim and (2) the embodiment or process operated for its intended purpose.


IPBiz has already written about Noyce v. Kilby, 416 F.2d 1391, 163 U.S.P.Q. 550 (CCPA 1969) concerning who would be granted priority for the discovery of the integrated circuit.

Consider also 146 F.3d 1348

The parties to Patent Interference No. 102,598 are Gilbert P. Hyatt, inventor of United States Patent No. 4,942,516 entitled "Single Chip Integrated Circuit Computer Architecture" (the '516 patent), and Gary W. Boone, inventor of patent application Serial No. 07/473,541 entitled "Variable Function Programmed Systems" (the '541 application).

Consider also Tummers v. Kleimack, 455 F.2d 566 (1972)

Also, from Behr v. Talbot:

On the other hand, application claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count are given the broadest reasonable interpretation consistent with the corresponding disclosure, as in ex parte proceedings. See In re Zletz, 893 F.2d 319, 13 USPQ2d 1320, 1322 (Fed.Cir.1989):

During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the application is granted, there is no reason to read into the claim the limitations of the specification). The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed.Cir.1987); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.1984). The issued claims are the measure of the protected right. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing General Electric Corp. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69 (1938)).

This rule of claim construction also applies to patent claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count. See Lamont v. Berguer, 7 USPQ2d at 1582 (the presumption of validity under 35 U.S.C. § 282 does not apply to patent claims involved in an interference). Moreover, giving involved patent claims the broadest reasonable construction is consistent with the fact that the patentee can move under 37 CFR 1.633(h) [FN4] to add a reissue application for the involved patent; reissue application claims are given the broadest reasonable interpretation consistent with the disclosure. In re Reuter, 651 F.2d 751, 756, 210 USPQ 249, 253-54 (CCPA 1981). Construing involved patent claims in this manner is also consistent with the fact that original claims of an unexpired patent under reexamination are given the broadest reasonable construction consistent with the disclosure on the ground that the patentee can amend the patent claims during reexamination. In re Yamamoto, 740 F.2d at 1571, 222 USPQ at 936; Ex parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986).

Some interferences in the biotech area:

Amgen v. Chugai - 1991 [ the Court found that conception of a new gene sequence does not occur until the after the gene has been isolated. ]

Fiers v. Revel - 1993 [[I]rrespective of the complexity or simplicity of the method of isolation employed, conception of a DNA, like conception of any chemical substance, requires a definition of that substance other than by its functional utility. ]

Chiron v. Abbott - 1995 [ The mere idea of a recombinant immunoassay based on env region polypeptides, without knowledge and analysis of the nucleotide sequence of specific env DNA fragments, is, as the court in Amgen put it, "simply a wish to know the identity of any material" that would be immunoreactive with HIV, not a "definite and permanent idea of the complete and operative invention."
(citing Amgen and Fiers) ]

Hitzeman v. Rutter - 2001 [issue of unpredictability making it impossible to have conception prior to reduction to practice ]

See 88 JPTOS 603.


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