IP Insights - May 2020

Date: May 8, 2020


By: Barry Bretschneider

CRISPR, or “Clustered Regularly Interspersed Short Palindromic Repeats,” is a revolutionary DNA cutting technique that promises to make gene therapy of diseases a reality.  Groups headed by the Broad Institute and the University of California have been battling over which was the first to invent the technology.  The first round amounted to a stand-off after the Patent Trial and Appeal Board (PTAB), and then the Federal Circuit, agreed that the two sides were battling over different inventions (in that it would not have been expected that Broad’s invention in eukaryotic cells, or cells with true nuclei, would be successful in light of Cal’s method carried out in bacteria) and declined to determine who invented first.  Regents of the University of California v. Broad Institute, Inc., 903 F.3d 1286 (Fed. Cir. 2018).

Now they’re back with Round 2, in Interference No. 106,115, and this time the battle is fully joined (and incredibly intricate).  The latest list of Cal’s claims involved in the interference is over 100 pages long!  The PTAB is holding oral argument on motions starting at 10:30 a.m. EDT on May 18, 2020.  Interested parties can contact up to five (5) business days before the hearing (that is, by May 13th) to request how to listen in.  Interesting issues before the Board include whether the decision in the first interference precludes Cal from prevailing in this second interference (so-called interference estoppel), whether Cal’s disclosure is good enough to disclose the invention the parties are battling over (written description) and whether the interference should proceed on different definitions of the invention at stake (motions to substitute counts in the interference).  The PTAB has made it clear that questions of patentability over the prior art and who invented first are not before it just yet.  STAY TUNED!!!