Last month, Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University (hereinafter, "Broad") filed its reply to an opposition to Broad's motion to correct inventorship filed by Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC"), which was filed as a contingent motion in response to CVC's Substantive Motion No. 3 under 37 C.F.R. § 41.121(a)(1) asking for judgment of unpatentability for all claims in interference under 35 U.S.C. § 102(f) or (if post-AIA) 35 U.S.C. § 115(a) for "failure to name all inventors of the alleged invention" in Interference No. 106,115.

CVC's opposition asserted that Broad has not established that it is entitled to this relief, as required under 37 C.F.R. § 41.121(b).  CVC also argued that Broad did not provide consent for one of the individuals -- Shauiliang Lin -- to be added as an inventor.  CVC further alleged that the motion is barred by laches and submitted in bad faith.  And finally, CVC asserted that as a matter of jurisdiction the Director -- not the Board -- has sole authority to change inventorship and that there is no evidence that the Director has delegated this authority to the Board.

The Broad asserts that CVC's motion was a "classic straw man," in part because its motion was a contingent motion and thus would only be considered by the Board if CVC's Substantive Motion No. 3 was granted (and then and only then will Broad and CVC understand which inventors had not been properly named).  This procedural consideration, in Broad's view, makes "quick work" of CVC's argument that Broad had failed to identify the unnamed inventors and that its motion was untimely.  Broad also argues that CVC's other allegations (of bad faith and breach of the duty of candor) are not supported by any evidence and hence "should not detain the PTAB for long"; indeed, Broad characterizes these arguments as a "witch hunt [and] nothing more."

As required by PTAB rules in an interference, Broad's reply methodically goes through CVC's opposition point by point in providing a rebuttal of the allegations therein.  Thus, Broad's argument explicates in detail the procedural deficiencies in castigating Broad for not identifying the unnamed inventors prior to the Board granting CVC's Substantive Motion No. 3 that there are any unnamed inventors to name.  Broad's position is that there are no such inventors.  Referencing the arguments Broad made in its Opposition to CVC's Substantive Motion No. 3 (see "Broad Files Motion Opposing CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)"), Broad states that if, despite its arguments therein, the Board grants the motion, then and only then will there be any unnamed inventors to name with regard to its contingent motion to amend inventorship.  And then and only then should the Board grant their motion, citing Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1376 (Fed. Cir. 2020).  This is because in order for the Board to grant CVC's motion the Board would have to have concluded that there were unnamed inventors, for which Broad would be entitled to file its change of inventorship.  (The Catch-22 nature of this argument harkens to a similar quality in some of CVC's arguments regarding inventorship; see "CVC Files Reply to Broad's Opposition to CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)".)

With regard to these arguments, Broad asserts that "CVC filed a half-baked motion to try to invalidate Broad's claims based on its allegation of missing inventors without providing any inventorship analysis or appropriate evidence" and "[i]f, despite those failings, the PTAB still finds there are missing inventors, then the relief requested in this contingent motion would be warranted based on the PTAB's finding an identification of the individuals it deems should have been named as inventors."

Broad uses similar arguments with regard to CVC's laches arguments, to the extent that it would only be after the Board granted CVC's Substantive Motion No. 3 that Broad was under an obligation to correct inventorship.  (While compelling as far as it goes, CVC's argument was rather different:  to the extent that Broad filed the PCT and EP applications that were the subject of a declaration on inventorship by their lawyer Thomas Kowalski, and that this inventorship differed from the inventors named in corresponding U.S. applications and patents claiming the same or substantially the same subject matter, the obligation to square these varying inventorship claims arose then, not only after the Board make its determination in this interference.)  More pertinent to Broad's argument is the focus of the unnamed inventor argument on a particular individual, Dr. Lin. Broad asserts precedent to the effect that laches does not arise when a putatively unnamed inventor moves to be added to an application or patent, including Advanced Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157 (Fed. Cir. 1993); Serdarevic v. Advanced Med. Optics, Inc., 532 F.3d 1352 (Fed. Cir. 2008); and Lismont v. Alexander Binzel Corp., 813 F.3d 998 (Fed. Cir. 2016).  Broad asserts no prior belief that there were any unnamed inventors in the patents-in-interference and thus no occasion for laches to arise with regard to inventorship questions.

Broad characterizes CVC's allegations of bad faith as "irresponsible" and "reckless" (as opposed to the laches argument, which is "merely wrong").  Alluding to the BPAI's decision in Nevel v. Hoeller, Patent Int. No. 104,025, Paper No. 65 (B.P.A.I. May 10, 2000), where the Board chastised a party making similar accusations based on inventorship as "fishing expeditions" and "witch hunts" and stated that they would be "aggressively quelched," Broad focuses its argument on the seriousness of CVC's allegations and the deficiencies (in Broad's view) of CVC's evidence.  Its rhetoric rising to meet the seriousness of CVC's allegations, Broad argues:

[CVC] has, at best, advanced a frivolous argument resulting in unnecessary briefing and increased costs for all.  Such behavior should not be condoned nor should it be overlooked.  Here the sword of equity should fall the other way.  See 37 C.F.R. § 42.12; see also Paper No. 2, Standing Order § 208.7 ("An allegation of inequitable conduct or fraud that fails to make out a facially sufficient case may result in sanctions or a referral to the Office of Enrollment and Discipline.").  It is past time for CVC's irresponsible allegations to stop.

Broad's Reply then turns to CVC's procedural argument, that the Director and not the Board is empowered to correct inventorship.  Authority Broad cites in this regard include 37 C.F.R. § 1.48(i) and § 1.324(d), as well as other interference decisions such as Flamm v. Vinogradov, Patent Int. No. 104,807, Paper No. 20 (B.P.A.I. Dec. 11, 2002); Chai v. Frame, 10 U.S.P.Q.2d 1460, Patent Int. No. 101,432 (B.P.A.I. 1988); and Thomas v. Eicken, 219 U.S.P.Q. 900 (B.P.A.I 1983).  The brief distinguishes the authority cited by CVC in its opposition, Honeywell Int'l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019), and resorts to both the C.F.R. and the M.P.E.P. for instances and circumstances where the Director can delegate her authority, including on an ad hoc basis.

Finally, Broad asserts that lack of consent by Dr. Lin should not be a basis for the PTAB to deny Broad's contingent motion to correct inventorship.  According to Broad, Dr. Lin's consent is not "strictly necessary" (not citing any authority for this point itself, Broad relies on a purported failure by CVC to cite authority to the contrary).  The Broad shores up this lack of authority by relying on MPEP § 1481.02(I) that suggests than faced with refusal by an unnamed inventor to assent to being named a patent holder "may wish" to file a non-broadening reissue application, because the unnamed inventor's assent is not required in that situation.  The relatively thin reed of the "may wish" locution "indicates discretion when an inventor does not consent—not an absolute bar to correction" according to the Broad.  Broad's arguments on this issue in the brief conclude with a citation of CVC's authority, Honeywell Int'l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019), for its holding that "it was an abuse of discretion for the PTAB to require Honeywell to show that the requirements to correct the priority chain of a patent had been met before authorizing Honeywell to file a motion for leave to petition the Director for a Certificate of Correction."