McDonnell Boehnen Hulbert & Berghoff LLP

At the end of October, 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 Patent Trial and Appeal Board (PTAB) consented to CVC's request that they file a motion under 37 C.F.R. § 41.156(a) for leave to subpoena discovery from Luciano Marraffini and Shuailiang Lin, neither of whom is a party to this interference.  (Readers may remember that Dr. Marraffini, faculty at The Rockefeller University, was involved in a dispute over inventorship of certain of the Broad's patents that resulted ultimately in some of the European counterparts of these patents to be revoked by the European Patent Office; see "The CRISPR Chronicles -- Broad Institute Wins One and Loses One").

CVC filed its motion on November 6th, circumscribed by the contours of the Board's order that its motion (limited to 5 pages) must:

• describe the general relevance of testimony by Dr. Marraffini and Dr. Lin;
• present the basis on which CVC reasonably believes that Dr. Marraffini and Dr. Lin have knowledge of Broad's priority proofs and can refute them;
• outline the scope of the testimony they will be seeking; and
• explain why subpoena is necessary to obtain the testimony of Dr. Marraffini and Dr. Lin and why an attempt to obtain a subpoena will be successful.

CVC's motion was based on the knowledge these witnesses had from their work with Feng Zhang and their prior statements CVC characterized as being "material to Broad's priority proofs [and] that contradict its priority statement allegations."  This testimony, CVC asserts, is in the interest of justice because the Broad is likely not to proffer their testimony and without it "the PTAB's fair assessment of Broad's priority case will be frustrated."

Substantively, CVC asserted that Dr. Marraffini was expected to testify that Dr. Zhang did not conceive of an embodiment falling within the scope of the Count before publication of the Jinek 2012 reference (disclosing CVC's invention).  This testimony would be consistent with assertions CVC made in its priority motion, stating without alleging that Broad derived its invention from CVC's disclosures (formal and otherwise).  The motion further places Dr. Marraffini in collaboration with Dr. Zhang from December 2011 as evidenced by publications and patent applications filed by research teams including Dr. Marraffini and Zhang.

The motion then sets out quotations from Dr. Marraffini attributing development of single-guide RNA embodiments of CRISPR to CVC's inventors ("[t]he Doudna-Charpentier paper [i.e., Jinek (2012)] is when we all learned about single-guide RNA").  The motion characterizes this statement as contradicting Broad's assertion in its priority statement that Dr. Zhang conceived an invention within the scope of the Count prior to publication of the Jinek 2012 reference.  In addition ("[b]ut there is more"), the motion asserts that Dr. Marraffini was named as a co-inventor on several Broad provisional patent applications, including significantly the Zhang provisional that was the subject of the Board's grant of priority benefit (see "PTAB Grants Broad Motion No. 4 for Priority Benefit to U.S. Provisional Application No. 61/736,527"), a status that Broad has acknowledged.  The motion identifies four categories of testimony from Dr. Marraffini:

(1)     his knowledge of Zhang's work on CRISPR-Cas9 systems, particularly the status of that work before publication of Jinek 2012;

(2)     his knowledge of Zhang's failures to conceive and reduce to practice a single-guide RNA CRISPR-Cas9 system;

(3)     his communications with Zhang before the filing of [Application No. 61/736,527] about the use of single-guide RNA in a CRISPR-Cas9 system; and

(4)     related testimony that contradicts Broad's allegations of priority.

CVC recounts for the Board its attempts to obtain this testimony voluntarily and Dr. Marraffini (and his employer The Rockefeller University) refusing to have him testify, and speculates that a recent settlement of an inventorship dispute might have resulted in an agreement between Broad and Rockefeller that Dr. Marraffini not voluntarily testify "against the Broad's interests."  Therefore, CVC argues, the requested subpoena is necessary.

Regarding Dr Lin, CVC attests that, like Dr. Marraffini he is expected to testify that Dr. Zhang had not invented single-guide RNA species of CRISPR-Cas9 prior to publication of the Jinek 2012 reference.  This expectation is based on correspondence between Dr. Lin and Jennifer Doudna from 2015 that:

• "After seeing [the Jinek 2012] in vitro paper, Feng Zhang and Le Cong quickly jumped to the project without letting me know."

• "My lab notebooks, emails, and other files like dropbox or gel pictures recorded every step of the lab's failure process."

• "We did not work it out before seeing [the Jinek 2012] paper.  It is really a pity."

In addition, the motion contends that Dr. Jin prepared a laboratory presentation in June 2012 where he stated that "the lab had been unsuccessful in implementing a CRISPR-Cas9 system in eukaryotes."

Once again, ("[b]ut there is more"), the motion asserts Lin has "direct and personal knowledge of Broad's priority proofs," including use of his laboratory notebook included as exhibits in another witness's (Dr. Sanjana) affidavit.  And as with Dr. Marraffini, Dr. Lin was named as a co-inventor in Zhang's priority Application No. 61/736,527 and in addition Broad has admitted that Dr. Lin is a co-inventor of "certain methods of using CRISPR-Cas9 in eukaryotes."

Consistent with the Board's Order, CVC asserts that Dr. Lin is expected to testify regarding these topics (and that his deposition will be limited to them):

(1) his involvement with Zhang's experiments;

(2) the circumstances surrounding Zhang's first awareness of a single-guide RNA in a CRISPR-Cas9 system;

(3) Zhang's failures in reducing a CRISPR-Cas9 system to practice before learning of the CVC inventors' work; and

(4) related communications between Lin and Zhang concerning such issues.

As with Dr. Marraffini, CVC argues that the subpoena is necessary because Dr. Lin has refused to testify voluntarily.

The motion concludes with a brief recitation of the law regarding the standards for the Board to grant leave to a party for such a subpoena, and that these circumstances warrant it; most importantly CVC asserts that it does not need the Board's authorization, citing Brown v. Braddick, 595 F.2d 961, 967 (5th Cir. 1979) (but noting conflicting precedent).

The Board having granted Broad leave to file an opposition to CVC's motion, the Senior Party did so on December 18th.  Predictably, Broad argued that granting leave to subpoena these witnesses and their purportedly expected testimony would not be in the interests of justice.  But, according to Broad, should the Board grant leave to subpoena these witnesses then Broad should be awarded half of the maximum 7 hours for each deposition.

Broad's rebuttal of CVC's arguments in favor of subpoenaing this testimony is grounded in CVC not satisfying the requirements under 37 C.F.R. § 41.150(c) that in addition to being in the interest of justice CVC had proffered relevant testimony from these witnessed.  In Broad's view, the purported evidence proffered by CVC was duplicative or could be obtained from other witnesses or documentary evidence.

According to Broad, CVC's category 3 evidence can be obtained from a series of e-mails between Drs. Zhang and Marraffini from January through October 2012.  These same e-mails are the source of category 1 and 2 evidence and suffer the same deficiencies with regard to the need for Dr. Marraffini's testimony.  And Broad cites Tropix, Inc. v. Lumigen, Inc., 53 U.S.P.Q.2d 2018 (B.P.A.I. 2000), for the proposition that category 4 testimony is too broad "to show relevance, the interests of justice, or that Dr. Marraffini has any information related to Dr. Zhang's conception and actual reductions to practice as set forth in detail in Broad's Priority Motion."

Broad further argued that "there is no distinction between Dr. Marraffini's statements [cited by CVC] and the evidence Broad is presenting with its Priority Motion" and that his status as a Zhang collaborator is "immaterial."  And Broad asserts that its Priority Motion and the evidence contained therein "confirm that CVC has no legitimate reason for taking the testimony of Dr. Marraffini."

Turning to Dr. Lin, Broad contends that CVC's category 1 evidence -- relating to the experiments performed in the Zhang lab -- were available from other Broad declarants, particularly because they were members of the Zhang lab as opposed to Dr. Lin's status as a visiting graduate student (nicely supporting an effort to discredit the competence of his testimony).  Similar, according to Broad CVC's category 2 evidence has been presented in Dr. Zhang's declaration, and certain of the e-mails referenced with regard to this evidence were not shared while Dr. Lin was in the Zhang lab.  Broad interprets this statement, ". . . Feng Zhang and Le Cong quickly jumped to the project without letting me know," as evidence that Dr. Lin lacked knowledge.  For CVC's category 3, Broad characterizes the cited statements as being "incredible, after-the-fact assertions that should not open up the record to a fishing expedition through additional discovery" (while noting parenthetically that at the time of these e-mails Dr. Lin was seeking a position in the Doudna lab).  Further casting suspicion on the veracity of Dr. Lin's statements, the opposition cites his biographical blurb as Director of Genome Engineering at Ligandal, Inc. to suggest that contrary to these statements he "again embraced his contributions to CRISPR"

And for category 4, as with Dr. Marraffini Broad asserts that the testimony sought was too broad under Tropix, Inc. v. Lumigen, Inc. for the Board to properly permit CVC to subpoena Dr. Lin.

For all these reasons, Broad asks the Board to deny CVC's motion or, in the alternative, to grant leave for Broad to depose these witnesses equally during the 7-hour deposition period.

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