For those with long memories, last August the Patent Trial and Appeal Board received proposed motions from the parties (University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier, Junior Party, and The Broad Institute, Massachusetts Institute of Technology, and Harvard University, Senior Party) in Interference No. 106,115. Thereafter, the Board authorized the parties to file some but not all of these motions; the Decision on these Motions was issued by the Board on September 10th (see "PTAB Decides Parties' Motions in CRISPR Interference").
But several of each parties' motions were deferred until the priority phase. Last week, CVC requested and the Board granted leave to file one of them: CVC's Motion 5, under 37 C.F.R. § 41.121(a)(1) that asks for judgment of unpatentability 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." In support of its request, CVC argued that it would "demonstrate that Broad deliberately misidentified the inventors on its involved patents and applications . . . ." 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; see, Kolcraft Enters. v. Graco Children's Prods., Nos. 2018-1259, 2018-1260, 2019 U.S. App. LEXIS 19751 (Fed. Cir. July 2, 2019). The factual bases for this motion are 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 EP application were the basis for that patent to be invalidated (see "The CRISPR Chronicles -- Broad Institute Wins One and Loses One").
It will be appreciated that, as in Europe, a determination in CVC's favor would be dispositive for some if not all of Broad's claims. The Board granted CVC leave to file its motion during Priority Phase No. 1, having a deadline of October 23rd (with Broad having the opportunity thereafter to oppose and CVC the opportunity to reply to any opposition). It is somewhat ironic that CVC will now be in a position Broad sought in its Motion No. 1 regarding estoppel recently denied by the Board, to be able to get judgment in its favor without having to "prove up" priority (with all the attendant uncertainties and risk of that endeavor).
Posts on these efforts will appear shortly after the motion/opposition/reply are filed with the PTAB.
