On June 24th, the U.S. Patent and Trademark Office declared an interference between patents (and an application) assigned to the Broad Institute (and other institutions) and applications assigned to the University of California/Berkeley. If this sounds like deja vu all over again it is and it isn't; as will be seen, the strategy employed by Berkeley has induced the Office to address the issues of priority raised in the earlier interference between the parties.
That interference involved these Broad patents (and their involved claims, which constitute all of the granted claims of all of the Broad patents):
• U.S. Patent No. 8,697,359 - claims 1-20
• U.S. Patent No. 8,771,945 - claims 1-29
• U.S. Patent No. 8,795,965 – claims 1-30
• U.S. Patent No. 8,865,406 – claims 1-30
• U.S. Patent No. 8,871,445 – claims 1-30
• U.S. Patent No. 8,889,356 – claims 1-30
• U.S. Patent No. 8,895,308 – claims 1-30
• U.S. Patent No. 8,906,616 – claims 1-30
• U.S. Patent No. 8,932,814 – claims 1-30
• U.S. Patent No. 8,945,839 – claims 1-28
• U.S. Patent No. 8,993,233 – claims 1-43
• U.S. Patent No. 8,999,641 – claims 1-28,
against only one pending (at that time) application from the Berkeley group:
• U.S. Patent Application Publication No. US 2014/0068797 A1 - claims 165, 200, 202-218, 220-222, and 224-247.
The Patent Trial and Appeal Board decided that interference was a nullity, because there was no interference-in-fact between Berkeley's claims (which broadly recited aspects of the CRISPR technology) and those in the Broad patents (which were specifically directed to reagents, systems, and methods for practicing CRISPR in eukaryotic cells. The Federal Circuit affirmed, leaving the Broad's patent estate intact (albeit arguably dominated by Berkeley's broader claims not limited to eukaryotic cells).
Berkeley adopted a strategy of filing several applications last fall specifically directed to eukaryotic cell-directed aspects of CRISPR that would provoke an interference with the Broad claims (although the USPTO declared this interference on the basis that the claims of the Berkeley application were patentable but for the interfering granted claims in the Broad patent).
The Broad patents and applications included in the interference (i.e., having claims considered to fall within the scope of the interference count) are: U.S. Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993, 233; 8,999,641; 89,840,713; and U.S. Application No. 14/704,551. Broad patents not not involved in this interference are U.S. Patent Nos. 8,889,418 and 9,882,372.
University of California/Berkeley patents included in the interference as declared by the USPTO are: U.S. Application Nos. 15/947,680; 15/947,700; 15/947,718; 15/981,807; 15/981,808; 15/981,809; 16/136,159; 16/136,165; 16/136,168; and 16/136,175. Berkeley patents and applications not included in the interference are: U.S. Patent Nos. 10,000,772; 10,113,167; 10,227,611; 10,266,850; 10,301,651; 10,308,961 and U.S. Application Nos. 15/435,233; 15/925,544; 16/201,836; 16/201,848; 16/201,853; and 16/20,855.
A more in depth analysis of this interference with be provided in subsequent posts. One pattern that can be discerned, however, is that Berkeley has taken advantage of the PTAB's decision that there was no interference in fact between its patents directed to CRISPR claims not limited to eukaryotic cells as a shield to protect its patents and applications having such broad claims from the current interference. Its strategy of filing applications having claims directed expressly towards CRISPR embodiments for use in eukaryotic cells enabled Berkeley to target the majority of Broad's patents and applications while putting "at risk" its newly filed applications and not its legacy patents to CRISPR.
The next step will be for the parties to propose preliminary motions to the PTAB, involving patentability issues, the propriety of the claims designated as corresponding (or not corresponding) to the count, and prima facie priority determinations regarding whether the Board properly designated the Broad as senior party (an important strategic consideration involving which party will have the burden of proof). These matters will also be discussed in subsequent posts. For now, it is enough to say that ownership of this technology remains uncertain, a state of affairs that will remain for the next 24-36 months unless these parties decide to settle (an unlikely outcome given the history of their interactions and behavior on the ownership question).
