CVC Files Motion to Exclude Evidence, ToolGen Opposes, and CVC Replies in Interference No. 106,126

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

On September 17th, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") filed its Motion to Exclude certain evidence presented by Senior Party ToolGen Inc. in Interference No. 106,126.  ToolGen filed its Opposition to CVC's motion on October 8th, and CVC filed its Reply on October 15th.

CVC objected to but two ToolGen exhibits, as set forth in this Table:

In its brief, CVC noted that it had preserved its objections under 37 C.F.R. § 41.155(b)(1) by timely filing 7 days after ToolGen served these exhibits.  On the merits, CVC supported its objection to Ex. 1283 being that the YouTube video of Dr. Dana Carroll was "juxtaposed with untitled graphics and drawings in a different window."  ToolGen, CVC asserted, failed to authenticate the video, i.e., provided no substantiating testimony through a witness subject to cross-examination.  Nor, according to CVC, did ToolGen provide any "evidence regarding who posted this video and when, whether it was edited, and whether it accurately portrays Dr. Carroll's opinions or understandings, especially with respect to the purposes for which ToolGen cites it."  And nor, argued CVC, did ToolGen provide any "explanation as to who extracted the video from the internet and provides no metadata to establish its origins" and ToolGen did not question Dr. Carroll about the video during his deposition.

CVC's basis for its objection to Ex. 1593 was that ToolGen provided the interview "for the truth of the matter asserted," i.e., "CVC inventors' timing, difficulty, challenges, and knowledge relating to their invention of CRISPR-Cas9 in eukaryotes."  This constitutes "double hearsay" according to CVC and should be inadmissible because "it is a third-party's out of court statement recounting a party's out of court statement."  Moreover, CVC argued that "[t]he cited publication is an edited excerpt of a longer interview, as evidenced by bracketed text within Dr. Doudna's responses and other expository remarks."  These revisions were not made to "present a historical account of facts for the purposes of resolving intellectual property rights" CVC asserts but rather "were formulated to 'capture the interest' of the intended audience."  That these are the inventor's out-of-court statements does not rescue them from a hearsay objection according to CVC, citing Horta v. Sullivan, 4 F.3d 2, 8 (1st Cir. 1993) and New England Mut. Life Ins. Co. v. Anderson, 888 F.2d 646, 650 (10th Cir. 1989).  Neither does their status as "hearsay within hearsay" make them admissible under the party admission against interest under Fed. R. Evid. 805 according to CVC because "[o]ut-of-court statements that have been curated by a third-party for other purposes are not admissible to prove the sequences of events, the motivations, intentions, and expectations of the inventors," citing SO ¶ 152.2.1.

In its Opposition filed October 8th, ToolGen began its argument my reminding the Board that these are CVC's fact witnesses who are contradicting current positions taken in the interference.  As for the YouTube video (Ex. 1283), ToolGen asserts that CVC objected to only 15 seconds of a 53-minute video, but that in these 15 seconds "Dr. Carroll admits that ToolGen inventor Dr. Jin-Soo Kim discovered what was not obvious to skilled artisans at the time—that adding two guanines to the 5' end of guide RNA improves its specificity."  With regard to CVC's authenticity arguments, ToolGen noted that "the video shows that it was posted by the Innovative Genomics Institute, a company founded by CVC's own Dr. Doudna" (stating later in the Opposition that "CVC is thus challenging the authenticity of a video of its own witness, posted by its inventor's organization").  ToolGen argued further that there were "multiple indicia of authenticity supporting that the video reliably depicts Dr. Carroll and his views."  ToolGen contends that under FRE 901(b)(4), "the appearance, contents, and distinctive characteristics of the video support a finding that the video is what ToolGen claims it is: a lecture by Dr. Dana Carroll," citing Zen Design Grp., Ltd. v. Scholastic, Inc., No. 16-12936, 2019 WL 2996190, at *2 (E.D. Mich. July 9, 2019).  According to ToolGen, "[t]he Innovative Genomics Institute, Dr. Doudna, and Dr. Carroll also have had years to remove this video from YouTube if there were any inaccuracies depicted.  They have not done so."  ToolGen draws the conclusion that:

CVC moves to exclude this evidence only because the video clip directly contradicts CVC's litigation position with respect to obviousness.  Given the totality of the circumstances, the video is authentic and accurately depicts Dr. Carroll admitting that ToolGen was the first to discover that two guanines on the 5' end of the guide RNA improves specificity.

Regarding the Doudna interview, ToolGen argued that even CVC's own exhibits contained articles where Dr. Doudna expresses the same sentiments regarding adapting CRISPR to eukaryotic cells, citing "Ex. 2279 ("We weren't sure if CRISPR/Cas9 would work in eukaryotes[.]"); Ex. 2032 ("Doudna experienced 'many frustrations' getting CRISPR to work in human cells."); Ex. 2033 ("[I]t was not known whether [a CRISPR-Cas9] system would function in eukaryotic cells.")."  These are "multiple indicia of trustworthiness" ToolGen contended; moreover, ToolGen argued that "Dr. Doudna's contemporaneous thoughts are far more probative than Dr. Doudna's testimony prepared for (sic) litigation."  ToolGen contended that Dr. Doudna's own statements were not hearsay under FRE 801(d)(2) because she is a party opponent, citing Nuance Communs., Inc. v. Abbyy Software House, 626 F.3d 1222, 1230 n.1 (Fed. Cir. 2010).  ToolGen also asserted that this interview satisfied FRE 807 as "the residual exception to hearsay" which provides the evidence is not excluded if:

(1) the statement is supported by sufficient guarantees of trustworthiness—after considering the totality of circumstances under which it was made and evidence, if any, corroborating the statement; and (2) it is more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts.

(all of which factual predicates are satisfied here, ToolGen argued).  ToolGen asserted three bases for establishing the interview's trustworthiness:  Dr. Doudna herself confirmed the article was written after she was interviewed; the sentiments contained in the interview were ones she had voiced in several other instances; and Dr. Doudna has never corrected or retracted she made in the interview, even in her deposition when given an opportunity to do so.

ToolGen also asserted that this evidence should not be excluded because it is "highly probative of Dr. Doudna's contemporaneous thoughts regarding the doubts she had that CRISPR-Cas9 could be adapted for use in eukaryotic cells," citing United States v. U.S. Gypsum Co., 333 U.S. 364, 395–96 (1948), and the Board's own preference for contemporaneous statements on this very issue in Interference No. 105,048 and in the Decisions on Motions in Interference No. 106,115.

In its October 15th reply, CVC directed its counterargument to ToolGen's "belated" attempt (in its view) to authenticate Dr. Carroll's YouTube video with reference to ToolGen Exhibit Nos. 1614 (the Innovative Genomics Institute website, Innovative Genomics Institute) and 1615 (Opening Screen of Ex. 1283 (Dana Carroll, Issues in CRISPR-Cas Editing, YOUTUBE, 32:42–32:57 (Nov. 4, 2017)).  The time to authenticate was August 5, 2021 (in response to CVC's timely objection) and the Board should not permit ToolGen to supplement its evidence with these attempts to corroborate, CVC argued.  CVC also rebutted ToolGen's argument that only 15 seconds of the Carroll lecture were to be excluded, saying that CVC had move to exclude the video "in its entirety" (emphasis in brief).  Rather, ToolGen submits a video "excerpt" unauthenticated as to "who excerpted it, and whether it still accurately portrays the original subject matter in its excerpted form" (emphasis in brief).

As to the Doudna interview, CVC argued in its Reply that ToolGen's distinction in its Opposition that CVC's Motion did not cite "patent cases" is irrelevant because the rules regarding hearsay do not depend on the subject matter ("Hearsay is hearsay").  And as for ToolGen's invocation of FRE 807, CVC argued that:

Courts have specifically found that mainstream media interviews edited for publication to a lay audience lack the traditional indicia of reliability that Rule 807 requires, because quotes in such publications are cherry-picked to give a sense of drama and "capture the interest of . . . readers, who might otherwise have little interest," rather than to present an accurate or fulsome account of events.

citing New England Mut. Life Ins. Co. v. Anderson, 888 F.2d 646, 650 (10th Cir. 1989), and Ohio v. Roberts, 448 U.S. 56, 65 (1980); Horta v. Sullivan, 4 F.3d 2, 8 (1st Cir. 1993).  Moreover, CVC's quotations from Dr. Doudna direct the Board's attention to the number of times that Dr. Doudna did not validate the statements attributed to her, saying frequently "I don't know that to be true" or variants thereof.  Finally, to the extent that ToolGen relied on statements from other sources similar to the ones the interview had Dr. Doudna making CVC argues that those sources may be equally unreliable and cited Gehin v. Wisconsin Group Ins. Bd., 692 N.W.2d 572, ¶ 92 (Wis. 2005), for the principle that "bootstrap[ping] uncorroborated hearsay with uncorroborated hearsay would eviscerate the requirement that there be corroboration of hearsay in order for the hearsay evidence to form the basis of an agency's finding of fact").

The Board will render its decision prior to Final Hearing in this Interference.

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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