PTAB Sets Preliminary Motions in CVC v. ToolGen Interference

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On March 1st, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued its Order on the Preliminary Motions Lists submitted by Junior Party University of California/Berkeley, University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") and Senior Party ToolGen Inc. in Interference No. 106,127.  (Somewhat curiously, the Board did not issue an Order in Interference No. 106,126 between The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad") and Senior Party Toolgen on similar interfering subject matter.)

CVC had requested permission to file six proposed motions (one of which is Motion No. 6 under 37 C.F.R. § 41.208(a)(4), which seeks judgment based on priority, which was routinely deferred to the Priority Phase of the interference).  CVC Motion No. 1 under 37 C.F.R. §§ 41.121(a)(1)(ii) and 41.208(a)(3) seeks to be awarded priority to their first-filed priority applications (specifically, in the alternative either the P1 or P2 applications), as set forth in this diagram:

2021-03-04 ImageThe Board GRANTED this motion, because "no estoppel yet applies to the decision on CVC benefit made in Interference 106,115 (where the Board granted CVC the benefit of priority no earlier than U.S. Patent Application No. 61/757,640).

The Board also GRANTED CVC's Motion No. 2 seeking to have the Board deny the benefit of ToolGen's priority application, U.S. Provisional Application No. 61/717,324, filed October 12, 2012.

The Board further GRANTED CVC's Motion No. 3 to include ToolGen's U.S. Patent No. 10,851,380 on the grounds that these claims correspond to the Count; specifically "methods of introducing a site-specific, double-stranded break at a target nucleic acid sequence in a eukaryotic cell, the method comprising introducing a chimeric guide RNA (i.e., a single guide RNA) and Cas9 into the eukaryotic cell."

The Board DEFERRED to the Priority Phase of the interference CVC's motions that ToolGen's involved claims were unpatentable.  The first of these, CVC's Motion No. 4, is for judgment that ToolGen's claims are unpatentable over CVC's U.S. Patent Application Publication No. 2014/0068797, which claims the benefit of priority to the P1 provisional application illustrated above.  The second, CVC's Motion No. 5, is for judgment that ToolGen's claims are unpatentable under 35 U.S.C. §§ 102 or 103 over U.S. Patent Application Publication No. 2016/0298138.  The Board's basis for deferring these motions is that "determination of patentability issues that do not impact the determination of priority during an interference is discretionary" under 35 U.S.C. § 135(a), and is not (nor has ever been) a threshold issue.  The Board's Order notes in this regard that a holding during the course of interference that a party's claims are unpatentable over prior art does not necessarily deprive that party of standing on the central issue of an interference — priority, citing 37 C.F.R. § 41.201.

Should CVC prevail on Motions No. 1 or 2 they would become the Senior Party to this interference.

ToolGen's Motions List contained eight motions including its Motion for Judgment on priority basis.  The Board DENIED ToolGen's Expedited Miscellaneous Motion No. 1 under 37 C.F.R. §1.645(d) that this interference should be stayed pending Final Judgment in Interference No. 106,115, because this motion is not one "to changing the status quo of the interference as declared in preparation for a priority phase, if one is necessary."

The Board GRANTED ToolGen's Motion No. 2 (hereinafter designated TOOLGEN MOTION 1) under 37 C.F.R. §§ 41.121(a)(1)(ii) and 41.208(a)(3) that seeks to be granted the priority benefit of U.S. Provisional Application Publication No. 61/837,481, filed June 20, 2013; and PCT Application KR2013/009488, filed October 23, 2013.

The Board also GRANTED ToolGen's Motion No. 3 (hereinafter designated TOOLGEN MOTION 2) under 37 C.F.R. §§ 41.121(a)(1)(ii) and 41.208(a)(3) attacking the priority benefit granted to CVC on the basis of U.S. Provisional Application No. 61/757,640, filed on January 28, 2013.

The Board DENIED ToolGen's request to file Motion No. 4 under 37 C.F.R. § 41.121(a)(1)(iii) for judgment that the involved patents or applications of each Junior Party are unpatentable for failure to satisfy the written description and enablement requirements of 35 U.S.C. § 112(a).  The Board's basis for denying the request is that "ToolGen did not allege that CVC's application claims were first made after the publication of ToolGen's application."

ToolGen's Motion No. 5 under 37 C.F.R. § 41.121(a)(1)(iii) for judgment that the involved patents or applications are unpatentable under 35 U.S.C. § 102 or § 103 was DEFERRED by the Board until the priority phase, on similar grounds upon which the Board based its denial of CVC's similar requests.

The Board ORDERED ToolGen, pursuant to its Motion No. 6 for a protective order under 37 C.F.R. § 42.54, to submit a proposed protective order to keep Toolgen's Priority Statement sealed until the priority phase of the interference commences (the request to file Motion No. 6 was dismissed as moot accordingly).  The Board's reasoning set forth in the Order was that "[d]uring Interference 106,115, CVC argued to have its priority statement filed under seal because, in part, competitors, including ToolGen and Sigma-Aldrich were pursuing patent applications claiming subject matter that might interfere with CVC's claims involved in that interference."  (Indeed, this interference validates CVC's previous apprehension in this regard.)  Based on the Board's earlier decision in the '115 Interference, this panel believes Toolgen's similar apprehension here has merit.

Finally, the Board DENIED ToolGen's Miscellaneous Motion No. 7 under 37 C.F.R. § 41.104(a) for the Board to order the '126 and '127 Interferences to proceed on the same schedule.  The Board's reasoning is that "ToolGen is free to agree or disagree with proposed changes in the schedule [set forth in the Order] and the Board expects all parties to cooperate on scheduling issues."

The Board refused to waive the requirement 37 C.F.R. § 41.121(d) for statements of material facts in each motion (which count against the page limits for each) but waived the requirement for consecutive exhibit number under Standing Order ¶ 154.2.1.

The Board set out the following briefing schedule, subject to agreement by the parties to change the schedule for TIME PERIODS 1-6:

TIME PERIOD 1 ............................................................. 9 April 2021
File motions
File (but serve one business day later) priority statements

TIME PERIOD 2 ............................................................. 14 May 2021
File responsive motions to motions filed in TIME PERIOD 1

TIME PERIOD 3 ............................................................ 25 June 2021
File oppositions to all motions

TIME PERIOD 4 ............................................................6 August 2021
File all replies

TIME PERIOD 5 ......................................................17 September 2021
File request for oral argument
File motions to exclude
File observations

TIME PERIOD 6 ...........................................................8 October 2021
File oppositions to motions to exclude
File response to observations

TIME PERIOD 7 ..........................................................15 October 2021
File replies to oppositions to motions to exclude

DEFAULT ORAL ARGUMENT DATE .................................................. TBD

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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