Saturday, August 05, 2017

Did the Berkeley CRISPR brief satisfy Dynamic Drinkware to establish Kim provisional filing date?

Further to an earlier post on IPBiz about the Berkeley brief in the CRISPR matter, a quick inspection of the brief does not show the UC/Berkeley lawyers met their burden to establish priority of the Kim application [ US application 14/685,568 (published appl. 20150322457) ] to the earliest provisional filing date under the law of Dynamic Drinkware v. National Graphics,800 F.3d 1375; 2015 U.S. App. LEXIS 15764; 116 U.S.P.Q.2D 1045.

Excerpts from the brief follow. [If anyone has additional information, please comment.]
From the brief-->

Second, the PTAB reasoned that the Kim Application was not public when Broad filed its provisional application in December 2012. But Section 102(e) prior art is prior art as of its effective filing date, not the date on which it eventually becomes public. In re Bartfield, 925 F.2d 1450, 1451 n.4 (Fed. Cir. 1991); Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 254-55 (1965).
Under the correct legal standard, it would have been obvious to a skilled artisan to take UC’s claims to using the CRISPR-Cas9 complex in any environment and follow the steps set forth in the Kim Application in order to use CRISPR-Cas9 to successfully cleave DNA in eukaryotes.13
13 Even if the Kim Application is not considered as Section 102(e) prior art, it is compelling evidence of simultaneous invention that the PTAB refused to consider. Considered under the correct legal standard, the evidence of simultaneous invention (including the Kim Provisional) and the level of guidance and knowledge in the art demonstrate beyond doubt that Broad’s claims are obvious. See Part III, infra.
III. When considered under the correct legal standard and all the evidence, Broad’s eukaryotic claims are obvious in light of UC’s generic claims.
The PTAB’s multiple legal errors led directly to its counterintuitive conclusion that Broad’s claims were not obvious in light of UC’s claims. Broad identified no innovation—or even extensive experimentation—that would be needed to employ UC’s CRISPR-Cas9 system in eukaryotic cells. Nor could it have done so, given that five other research groups succeeded in introducing CRISPR-Cas9 into eukaryotic cells within a matter of months using only conventional techniques. Broad staked its entire argument for non-obviousness (on which Broad bore the burden of proof) on the proposition that a skilled artisan seeking to employ CRISPR-Cas9 to cleave DNA in eukaryotes would have lacked a reasonable expectation that its effort would succeed. The PTAB accepted that argument because it erroneously required “specific instructions” in the prior art and conflated the need for experimentation with a lack of an expectation of success. O’Farrell, 853 F.2d at 903.
Considered under the correct standard and in light of the simultaneous-development evidence that the PTAB erroneously disregarded, the undisputed evidence permits only one conclusion: Broad’s claims are obvious. And at the very least, the PTAB’s decision is not supported by substantial evidence


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