Broad Files Motion Opposing CVC Motion for Misjoinder of Inventorship under 35 U.S.C. § 102(f)

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

Last December, Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") filed its 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" against Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University (hereinafter, "Broad") in Interference No. 106,115.  In support of its motion, CVC argued that Broad deliberately misidentified the inventors on its involved patents and applications in the interference.  These allegations were based on differences between the named inventors in the patents- and applications-in-interference and the inventors named in a declaration by the Broad's patent attorney during a European opposition (EP 277146); it may be recalled that such irregularities involving a Rockefeller University inventor (Dr. Luciano Marraffini) not named in the European application were the basis for that patent to be invalidated (see "The CRISPR Chronicles -- Broad Institute Wins One and Loses One").  Proper inventorship is important in the interference, inter alia, because the Board needs to know whose testimony can corroborate and whose needs to be corroborated under interference practice, where the uncorroborated testimony of an inventor is given no weight; seeKolcraft Enters. v. Graco Children's Prods., Nos. 2018-1259, 2018-1260, 2019 U.S. App. LEXIS 19751 (Fed. Cir. July 2, 2019).

At the time, Broad filed a responsive motion asking for leave to correct inventorship, which CVC has opposed; this opposition will be the subject of a future post.  On March 26th Broad filed a motion in opposition to CVC's motion for judgment based on misjoinder of inventorship, which is discussed here.

Broad begins its opposition by asking the Board either to deny CVC's motion outright, or to grant the remedy requested in Broad's Contingent Responsive Motion No. 6 and permit correction of inventorship.  Rather than applying the proper test for inventorship, the Broad contends, CVC took "a shortcut" by arguing that a declaration by distinguished U.S. patent counsel Thomas Kowalski be considered dispositive on the issue of misjoinder.  This declaration set forth Mr. Kowalski's legal conclusions regarding inventorship of one of Broad's PCT applications, which was then submitted as evidence in an Opposition Proceeding against the counterpart granted European patent.  (Broad notes that "[t]he PCT applications that were the subject of that declaration are not involved in this interference.")  Broad then accused CVC of engaging in "a word search exercise, locating words in the PCT applications that match words in the involved claims" and asserting that the inventors of those claims are misjoined inventors of claims-in-interference here.  Broad argues that this effort is without support and should be denied on that basis.

The brief then accuses CVC of creating a fanciful narrative that Broad intentionally omitted inventors in patents-in-interference "so that it could keep in reserve a greater pool of corroborators for this Interference," starting in 2013.  This requires the Board to believe that the Broad's focus at that time was "eight years into the future to some imagined interference where Broad would want to rely on certain individuals for corroboration to help establish priority," a narrative Broad characterizes as "far-fetched".

Broad also objects to CVC's allegations that its prosecuting attorneys were guilty of inequitable conduct for participating in any such chicanery, terming this "rank speculation."  And Broad particularly objects to CVC's requested remedy, citing Federal Circuit precedent permitting 35 U.S.C § 256 and § 116 to be used as a "savings clause" for patents and applications, respectively, that name inventors incorrectly.

On the law, Broad argues that CVC has not carried its burden of establishing misjoinder, its motion being "almost wholly . . . attorney argument."  The declaration of Scott Bailey, proffered in support of CVC's motion, is impermissible expert testimony on a question of law, which is squarely and only within the Board's purview.  Accordingly, Broad argues it should be given no weight.  In addition, Broad argues that Mr. Bailey is a scientist not a lawyer, doubly damning his opinions as being irrelevant to the adverse inventorship determination requested from the Board.  And Broad sets forth another litany, in this case of all the deficiencies in Mr. Bailey's declaration regarding the inventorship question.

Another deficiency Broad alleges in CVC's motion is that CVC did not perform any ("zero") inventorship analysis; Broad argues that "the appropriate legal test for inventorship barely makes a cameo appearance in CVC's motion—if you blink you'd miss it" before setting forth its objections to CVC's inventorship arguments with particularity.  These include not construing the claims and not providing factual support for why certain individuals were not named as inventors in a "claim-by-claim, element-by-element comparison."  Rather, CVC improperly relied on Mr. Kowalski's declaration in the European Opposition which was not directed at the issues CVC used it to support, according to the brief.  Broad uses Mr. Bailey's complaint that performing this analysis would have been a "mammoth task" to argue that the remedy CVC requests -- invalidating all of the involved claims in all of the involved patents -- requires performance of this task no matter how "mammoth' it may be in scope.  Of course, Broad further argues that such a proper analysis assessment would have found no error (thus providing a reason why CVC didn't make the argument).

The brief also notes that CVC "both relies upon and rejects Kowalski's inventorship analysis," calling this treatment "inconsistent" and providing specific examples.  The brief also argues that CVC does not provide support for its allegations that Mr. Kowalski's declaration should be considered conclusive, other than treating the declaration as a "judicial admission."  Which it is not, Broad argues, because it fails the definition that a judicial admission is a "formal statement[] of fact made in judicial proceedings that have the effect of deeming facts conclusively established, eliminating the need for proof," citing Barnes v. Owens-Corning Fiberglas Corp., 201 F.3d 815, 829 (6th Cir. 2000), as well as failing the definitional evidentiary tests used to establish a judicial admission.

As a consequence, Broad argues, CVC did not satisfy its burden of establishing misjoinder of inventorship and its motion should be denied.

Despite having addressed (and in their view rebutted) the substantive grounds of CVC's misjoinder arguments, Broad takes the time (and page numbers) to provide its rebuttal that it has intentionally omitted inventors for an improper purpose. "CVC has not established and cannot establish,[ such an improper motive, and] CVC's attribution of an improper motive is unwarranted" according to the brief.

Broad completes its arguments in opposition by asking the Board to permit correction of inventorship as the proper remedy should the Board be swayed by CVC's argument that correction is required.  Broad's brief argues that Egenera, Inc. v Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020), Is controlling and permits correction under the appropriate statutory provisions.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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