CVC Files Motion Opposing Broad Motion to Correct Inventorship

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.  Recently, Broad filed its opposition to this motion.  At the time, Broad filed a responsive motion asking for leave to correct inventorship, and CVC recently filed its motion opposing Broad's attempt to effect a post hoc inventorship correction, the details of which are set forth herein.

CVC begins its opposition brief by asserting that Broad has not established that it is entitled to this relief, as required under 37 C.F.R. § 41.121(b).  The basis of this argument comes first from the language of the statutes -- 35 U.S.C. §§ 116 and 256 -- permitting inventorship correction.  This language requires an applicant or patentee, respectively, provide proof of the facts surrounding the change and an identification of the inventors who should properly be named ("on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed").  Second, CVC argues that Broad did not provide consent for one of the individual -- Shauiliang Lin -- to be added as an inventor.  Third, CVC alleges that the motion is barred by laches and submitted in bad faith.  And finally, CVC argues 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.

CVC's first argument is a matter of applying the statutory requirements to Broad's motion.  CVC argues that Broad's motion is defective because the motion represents that all that is needed is to pay the appropriate fee and name the proper inventors.  This ignores the requirements set forth in the statutory language quoted above, according to CVC, citing Loken-Flack, LLC v. Novozymes Bioag, A/S, No. 105,996, 2015 BL 165619, *2-3 (P.T.A.B. May 27, 2015).  CVC asserts that Broad's motion is devoid of any evidence regarding the contribution the newly named individuals made to the claimed invention.  Because Broad as movant has the burden of showing it Is entitled to the relief requested under 37 C.F.R. § 41.121(b), CVC maintains that Broad needs to "explain how each (currently unidentified) person contributed to the conception of at least one claim of each of Broad's involved patents and application" and "provide evidence to support those assertions," citing Henkel Corp. v. Proctor & Gamble Co., No. 105,174, 2008 WL 5783337, at *20-25 (B.P.A.I. Mar. 28, 2008).  Moreover, CVC notes that Broad contends in its motion that it need not concede that inventorship is incorrect, which puts Broad in "the untenable position of, on the one hand, arguing that inventorship is correct and, on the other, having to affirmatively set forth why inventorship should be corrected," a situation of Broad's own making according to the brief.  And Broad's reliance on precedent is unavailing according to CVC because the circumstances here differ from those in that cited precedent.  CVC argues that while "Broad appears to believe that if CVC wins its motion on incorrect inventorship, then Broad automatically meets its burden to correct inventorship," this is an incorrect reading of the statute and precedent, due to "binding concessions" made with regard to statements presented to the European Patent Office under declaration in a related application.

CVC's arguments regarding putative inventor Lin are straightforward, to the extent that the statute requires "all parties" to apply for the correction, citing Iowa State Univ. Research Found., Inc. v. Sperry Rand Corp., 444 F.2d 406, 410 (4th Cir. 1971), for the proposition that "when the Commissioner is asked to correct innocent errors of misjoinder or nonjoinder, all parties must apply for relief to comply with the requirements of the first and second paragraphs of § 256."  CVC further argues that the PTAB cannot waive this requirement, citing Chien Ming Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1460 (Fed. Cir. 1988).

CVC's laches argument is based on the time -- 8 years -- between Broad's motion and when the "error" in inventorship arose (2013, when the Broad conducted "inventorship studies" on the patents in interference).  CVC asserts that the Board can impose laches as an equitable sanction under In re Stephen B. Bogese II, 303 F. 3d 1362 (Fed. Cir. 2002).  CVC also characterizes Broad's failure to correct inventorship in 2013 as "unreasonable behavior" supporting its resort to laches.  Broad's failure to effect the change in inventorship eight years ago that its motion seeks (improperly) from the PTAB now is the basis of CVC's bad faith allegation, alleging specifically that "to achieve a strategic advantage—and without any excuse—Broad ignored this knowledge" for the need to correct inventorship (although CVC does not set forth what "strategic advantage" Broad sought to achieve thereby).  CVC also disputes Broad's assertion that its intent is not at issue, stating that "[t]he intent of an interference party seeking a change of inventorship in the middle of the priority phase after submitting its priority brief is highly relevant" and "[g]iven the consequences such a change may have, the candor with which that change is solicited is paramount."  Directly seeking recourse to the duty of candor under 37 C.F.R. § 1.56, CVC asserts that:

In the face of evidence that Broad intentionally misidentified the inventors of its involved patents and applications, as demonstrated by its own attorney's sworn declaration, and pursuant to the Federal Circuit's suggestion in Stark[v. Advanced Magnetics, Inc., 119 F.3d 1551, 1555 (Fed. Cir. 1997)], the PTAB should address whether there was bad faith in the original inventorship determination and deny Broad's motion.

Finally, the brief asserts its jurisdictional argument that the Board is not competent to grant Broad's motion because that authority resides in the Director.  Citing Honeywell Int'l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019) (which CVC concedes may be merely informative if not controlling), the brief argues that the proper procedural process would be for Broad to "(1) seek the Board's authorization to file a motion; (2) file the authorized motion, asking the Board to cede its exclusive jurisdiction to permit the Director's consideration of a certificate; and, (3) if the motion is granted, ask the Director to issue a certificate" (the Director then deciding whether to grant the certificate). Which of course Broad has not done.

Broad has its opportunity to reply on April 19, 2021.

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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