PTAB Decides Parties' Motions in CRISPR Interference

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

Having heard oral argument at a hearing held on Monday, May 18th, the Patent Trial and Appeal Board recently entered its decision on these motions in Interference No 106,115 between 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").

The Broad had four substantive motions to be decided by the Board:  Broad's Substantive Motion No. 1, requesting the Board to find (as it had in the earlier, 105,048 interference between these parties) that there was no interference-in-fact; Substantive Motion No. 2 to Substitute the Count; Broad's Substantive Motion No. 3 to de-designate claims as not corresponding to Count 1; and Broad's Substantive Motion No. 4 for priority to U.S. Provisional Application No. 61/736,527.

CVC for its part filed only two motions to be decided by the Board:  CVC's Motion No. 1 was to be accorded the benefit of priority to three earlier-filed provisional applications for Count 1 of the Interference as declared; and CVC's Responsive Contingent Motion No. 2 was to be accorded the benefit of priority to three earlier-filed provisional applications contingent on the PTAB granting the Broad's Motion No. 2 to Substitute the Count of the interference.

CVC also filed Miscellaneous Motion No. 2 to Exclude Evidence on April 2nd to exclude four references proffered by the Broad on the grounds that four prior art references should not be considered by the Board because they were not cited in any of Broad's papers; declarations from several individuals, including some of Broad's inventors, are inadmissible as hearsay because these individuals had not been made available for deposition; and certain expert testimony fails the Supreme Court's Daubert test for expert testimony admissibility.

In its decision last week, the PTAB denied Broad's Motion No. 1 that the interference be dissolved because CVC was estopped by the decision in the earlier interference between the parties (No. 105,048).  This decision is the most significant of the decisions handed down on the parties' motions, because the interference will now proceed to the priority phase.  The Board also denied the Broad's Mo No. 2 to substitute the Count, and its Motion No. 3 to designate claims corresponding and not corresponding to the changed Count.  Finally, with regard to the Broad’s claims, the Board granted Motion No. 4 to be accorded priority benefit to U.S. Provisional Application No. 61/736,527, having a filing date of December 12, 2012.

As for CVC's motions, the Board granted-in-part CVC's Motion No. 1, according priority benefit to USSN 61/757,640, filed January 28, 2013; because this application has a later filing date than the Broad's '527 application.  The Board dismissed CVC's Motion No. 2, which was contingent on the Board granting Broad's motion to substitute the Count, and granted-in-part CVC's motion to exclude evidence as to Exhibits that were not relied upon by the parties or the Board.

The consequences of these decisions are that the interference will proceed to the priority phase, and Broad's status as Senior Party is unchanged; accordingly, CVC has the burden of showing earlier conception of the subject matter defined in the Count as declared.  The Board redeclared the interference to reflect the benefit of priority decided in these motions.  It also issued an order establishing times for the parties to file priority motions, oppositions, replies, and other motions:

TIME PERIOD 11 -- 23 October 2020 -- JUNIOR PARTY ONLY file priority motion

TIME PERIOD 12 -- 4 December 2020 -- SENIOR PARTY ONLY file priority motion

TIME PERIOD 13 -- 29 January 2021 -- File oppositions to all motions

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

More in depth analysis and discussion of these decisions and their consequences will be provided in future posts.

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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