CRISPR Housekeeping

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Since the Patent Trial and Appeal Board (PTAB) rendered its decisions on Motions in Interference No. 106,115, Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") have filed a number of miscellaneous motions, and the Board has issued several Orders in response.

The most significant of these was a joint stipulation to extend Time Periods 11-13, each by a week. The Board granted this request under 37 C.F.R. § 41.104(c), and thus the deadlines for filing the Junior Party priority motion, the Senior Party priority motion (should Broad deign to file one) and Oppositions to those motions are now:

TIME PERIOD 14 ........................................................26 February 2021
File all replies

TIME PERIOD 15 ..............................................................2 April 2021
File request for oral argument
File list of issues to be considered
File motions to exclude
File observations

TIME PERIOD 16 .............................................................23 April 2021
File oppositions to motions to exclude
File response to observations

TIME PERIOD 17 ................................................................7 May 2021
File replies to oppositions to motions to exclude

ORAL ARGUMENT DATE (if ordered) ................................................TBD

The remaining time periods are unaffected by this change.

CVC also requested that the Board waive the requirement for the parties to file a separate statement of material facts and that any such statement not count towards the page limit (50 pages) for each party's priority briefs. The Board denied the request to waive the requirement that the parties each include a statement of material facts by ordering that each priority brief have such a statement, limited to 20 pages, submitted as an appendix to the parties' priority brief. These pages will not be counted as part of the 50 page limit. In addition, the Board modified the Standing Order ¶ 121.5.2 to the effect that the material facts enumerated in each parties' statement "need not reiterate each and every fact asserted in the Motion" but "[r]ather, the enumerated facts should support the central issues argued by the parties."

Finally, CVC requested that the Board permit CVC to subpoena discovery from Luciano Marraffini and Shuailiang Lin, neither of whom is a party to this interference. (Readers may remember that Dr. Marraffini, faculty at The Rockefeller University, was involved in a dispute over inventorship of certain of the Broad's patents that resulted ultimately in some of the European counterparts of these patents to be revoked by the European Patent Office; see "The CRISPR Chronicles -- Broad Institute Wins One and Loses One"). CVC proposes to pursue such subpoenas through application to U.S. District Court under 35 U.S.C. § 24.

Although opposed by Broad, the Board consented to CVC's request that it file a miscellaneous motion under 37 C.F.R. § 41.156(a) for Board authorization, limited to 5 pages by November 6, 2020. The Board further ordered that CVC's motion must:

• describe the general relevance of testimony by Dr. Marraffini and Dr. Lin;
• present the basis on which CVC reasonably believes that Dr. Marraffini and Dr. Lin have knowledge of Broad's priority proofs and can refute them;
• outline the scope of the testimony they will be seeking; and
• explain why subpoena is necessary to obtain the testimony of Dr. Marraffini and Dr. Lin and why an attempt to obtain a subpoena will be successful.

As it has done for other Party motions, no opposition is authorized yet (but should CVC make a convincing argument the Board will undoubtedly permit Broad to respond in opposition).

CVC's Priority Motion is due tomorrow, October 30th.

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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