PTAB Denies Two CVC Requests Regarding Motions

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP

Recently, the Patent Trial and Appeal Board denied two requests by Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") in Interference No. 106,115.

In the first, CVC asked a conference call to discuss its renewed request for leave to file a motion against Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University (hereinafter, "Broad") that alleged inequitable conduct.  This is a motion for which leave had been requested in this interference (see "CRISPR Interference Parties Propose Motions") as well as in prior Interference No. 105,048 (see "CRISPR Interference Motions Set").  In that earlier interference, the matter was mooted by the Board's determination that there was no interference-in-fact between the parties (see "PTAB Decides CRISPR Interference -- No interference-in-fact" and PTAB Decides CRISPR Interference in Favor of Broad Institute -- Their Reasoning).  In this interference, the Board had deferred consideration of CVC's request until after the priority phase (see "PTAB Redeclares CRISPR Interference and Grants Leave for Some (But Not All) of Parties' Proposed Motions").  Nevertheless, CVC contended in its request that the Board should grant leave at this time because "the issues it would argue overlap with issues raised in the priority phase and that there are new justifications for a requested motion."

The Board concluded that there was no need for a conference call "at this time," maintaining its decision that consideration of CVC's motion, if appropriate, should be deferred until after conclusion of the priority phase and that CVC's request was premature, relying on the discretionary nature of its authorization of motions in an interference, citing 37 C.F.R. § 41.121 (a)(1), as is any other basis for patentability under 35 U.S.C. § 135(a).  The priority issues having been briefed by the parties and with Final Hearing on priority looming, the Board rejected CVC's request for a conference call to consider inequitable conduct.

In its other motion, CVC requested that the Board add Broad U.S. Patent Application No. 15/349,603 to this interference, on the grounds that the application contained claims corresponding to the Count of this interference and the Examiner had issued a Notice of Allowance.

The Board rejected this request because "[b]riefing in the current interference is complete, with authorized motions, oppositions, and replies in the second, priority, phase of the interference having been filed . . . [Accordingly, a]uthorization of a new motion at this time would be disruptive and could impede our goal of securing the just, speedy, and inexpensive resolution of the proceeding," citing 37 C.F.R. § 41.1.  The Board included a reminder (or perhaps an admonishment) that "[t]he parties have a duty to disclose to the Office all information known to be material to patentability, which may include information about and disclosures in this interference" under Rule 56, to the extent the Examiner granted these claims in any way improvidently or without understanding the status of this interference; a brief review of the file wrapper on PAIR indicated that the Examiner had been made aware of the Board's substantive decisions in this interference by way of Information Disclosure Statements submitted by the applicant.

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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