Thursday, April 13, 2017

UC/Berkeley to appeal adverse PTAB decision in CRISPR case

The Scientist noted on April 13, 2017:

Update (April 13): The University of California, Berkeley, has filed an appeal with the US Court of Appeals for the Federal Circuit in Washington, DC, challenging the February ruling of the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), which determined that the patent issued in 2014 for Feng Zhang and colleagues’ work on CRISPR gene-editing technology at the Broad Institute of MIT and Harvard does not directly compete with a patent filed previously by the UC Berkeley team. In other words, the PTAB ruled that the two parties’ claims were separately patentable.


The February ruling was "no interference in fact."

A post from UC/Berkeley notes:

The University of California, the University of Vienna and Emmanuelle Charpentier (collectively UC) on Wednesday, April 12, filed an appeal to overturn a decision by the Patent Trial and Appeal Board (PTAB) that terminated the interference between a UC patent application for CRISPR-Cas9 gene-editing technology and the patent applications and issued patents of the Broad Institute, Harvard University and the Massachusetts Institute of Technology (collectively, the Broad).


“Ultimately, we expect to establish definitively that the team led by Jennifer Doudna and Emmanuelle Charpentier was the first to engineer CRISPR-Cas9 for use in all types of environments, including in non-cellular settings and within plant, animal and even human cells,” said Edward Penhoet, a special adviser on CRISPR to the UC president and UC Berkeley chancellor. Penhoet is the associate dean of biology at UC Berkeley and a professor emeritus of molecular and cell biology..


In parallel, UC intends to pursue continuing applications in the U.S. and globally to obtain patents claiming the CRISPR-Cas9 technology and its application in non-cellular and cellular settings, including eukaryotic cells. Corresponding patents have already been granted to UC in the United Kingdom, and the European Patent Office has announced that it will grant UC’s patent on May 10, 2017.

UC’s earliest patent application, which describes the CRISPR-Cas9 genome-editing technology and its use in any type of setting, was filed on May 25, 2012, while the Broad’s earliest patent application was filed more than six months later, on Dec. 12, 2012.

The law firm of Munger, Tolles & Olson LLP will be handling the appeal, with Don Verrilli, former solicitor general of the United States, as lead counsel.


**The Verge noted of CRISPR:

Its potential is limitless, and so is the amount of money and fame that whoever owns the intellectual property of the technology would get. The CRISPR patents are estimated to be worth billions of dollars. And that’s why the legal battle has been so heated. The two parties involved in the dispute — the University of California, Berkeley and microbiologist Emmanuelle Charpentier on one side, and the Broad Institute and MIT on the other — have been fighting for years now, spending millions of dollars on the case.

**Of legal issues

from Charles L. Gholz, 93 J. Pat. & Trademark Off. Soc'y 74 (2011) on the Rolls-Royce case :

Rolls-Royce, PLC v. United Technologies Corp. According to 37 CFR 41.203(a), "An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa." The phrase "the subject matter of a claim" has traditionally been interpreted as meaning the subject matter defined by that claim. In other words, the test for whether two claims owned by different parties interfere has traditionally been the same as the test for whether two claims owned by the same party but appearing in different cases n16 stand in an obviousness-type double patenting relationship. When the issue is obviousness-type double patenting, it is very well established that only the subject matter defined by the claims is to be compared and that the entire specification of the reference patent or application is not "prior art." n17 However, the Federal Circuit's opinion in Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325, 95 USPQ2d 1097 (Fed. Cir. 2010) (opinion by Circuit Judge Rader for a panel that also consisted of Chief Circuit Judge Michel and Senior Circuit Judge Schall), is at least verbally inconsistent with that traditional understanding. n18

Rolls-Royce was an appeal from a 35 USC 146 action brought to review a decision in a patent-application interference. Priority was not in dispute. The only issue was the propriety of the district court's reversal of the board's denial of the junior party's motion for a judgment of no-interference-in-fact.
Finally, the court concluded its analysis by saying that, "Because the '931 application does not render the '077 patent obvious, this court affirms the district court's holding that the claims of [the] Rolls-Royce '077 patent are patentable over UTC's '931 application." n21

Did the court really mean what it said? Perhaps not. Elsewhere in the opinion it said that, "If claim 8 of Rolls-Royce's '077 patent would not have been obvious to one of skill in the art in view of claim 23 of UTC's '931 application, then this record does not show a cause for interference." n22

Separately, from Noelle v. Lederman, 355 F.3d 1343:

Noelle appeals the decision of the United States Patent and Trademark Office, [p. 1510] Board of Patent Appeals and Interferences ("Board"), finding no interference-in-fact between the '480 application and the '771 patent and rejecting claims 51, 52, 53, 56, 59, and 60 of the '480 application pursuant to 35 U.S.C. § 102(b) (2000). Noelle v. Lederman, Interference No. 104,415 (Bd. Pat. App. & Int. Oct. 19, 2001). Because the decision of the Board is supported by substantial evidence and is not contrary to law, we affirm.


The Board concluded from the evidence submitted that there was no interference-in-fact. The Board reasoned that a person of ordinary skill in the art lacked a reasonable expectation of success of obtaining the other party's claimed invention given the state of the art at the time. The Board noted three different methods disclosed in Noelle's '480 specification by which a person of ordinary skill in the art could have isolated the human form of the CD40CR antibody given the mouse version of the CD40CR antibody. Dr. Edward A. Clark, Noelle's expert, declared that a person skilled in the art would have had a reasonable expectation of success in isolating human CD40CR antibody by utilizing the methods disclosed in Noelle's specification.


The Board correctly found no interference-in-fact between Noelle's claims and Lederman's claims. First, the Board was correct in not considering Noelle's methods of isolation of human CD40CR antigen using CD40-Ig found in his '799 specification because the methods were neither part of the parties' inventions nor "prior art." USPTO rules establish that an interference-in-fact exists when both parties claim the "same patentable invention." 37 C.F.R. § 1.601(n). A patentee's invention is only found in a patentee's claims, unless the patentee uses sufficient means-plus-function language to invoke 35 U.S.C. § 112, paragraph (6). Thus, if the Board is to compare two inventions, the Board must only compare the parties' claims. Noelle does not claim a method of isolating CD40CR antigens, CD40-Ig, or the receptor CD40 itself. Obviously, if certain terms in Noelle's or Lederman's claims were ambiguous, we could resort to the specification or other sources to define those terms; however, it is unnecessary here as none of the terms in the claims are ambiguous. Therefore, Noelle cannot rely on a method of isolating human CD40CR antigen using CD40-Ig in order to prove obviousness between his invention and Lederman's invention because the method is not claimed.


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