Broad Institute takes three lines of attack in CRISPR appeal filing
The Broad Institute of Harvard and MIT has adopted three major arguments in its response to the University of California (UC), Berkeley’s appeal against a patent finding on the CRISPR technology.
In December last year, the Patent Trial and Appeal Board (PTAB) said the Broad Institute’s patents—which are all limited to CRISPR/Cas9 systems in a eukaryotic environment—do not interfere with patent claims filed by UC, Berkeley and the University of Vienna. These claims are not restricted to any environment.
After UC, Berkeley appealed to the US Court of Appeals for the Federal Circuit, the Broad Institute said yesterday, October 25, that the PTAB’s ruling was supported by substantial factual evidence, that it was fully consistent with the law, and that it considered the evidence presented in the case.
The parties had appeared in front of judges at the PTAB in December last year for an interference proceeding, requested by UC, Berkeley, into patent claims covering the gene-editing technique CRISPR.
In the interference proceeding, the Broad Institute requested priority based on its patent application filed on December 12, 2012.
UC, Berkeley, which filed applications on May 25, 2012 as well as in 2013 and 2014, similarly asked for its applications to be prioritised.
But the PTAB said the Broad Institute “has persuaded us that the parties claim patentably distinct subject matter”.
LSIPR reported in July that UC, Berkeley had filed a brief in its appeal with the Federal Circuit, asking the court to determine whether the PTAB committed error in “ignoring overwhelming evidence” that the Broad Institute’s claims are obvious in light of UC, Berkeley’s.
UC, Berkeley said the PTAB’s ruling “flies in the face of core legal principles” governing the interference-in-fact enquiry and “defies common sense”.
It added: “This court should not let such a profoundly erroneous and unjust result stand.”
But in its latest brief, the Broad Institute disagreed, saying the PTAB’s judgment was supported by substantial evidence and fully complied with the law.
The Broad said the PTAB relied on five separate categories of supporting evidence which, together, provide “overwhelming” justification for the ruling.
These include statements by UC, Berkeley inventors themselves “expressing frustrations and doubts about the ability to make CRISPR/Cas9 systems function in eukaryotic cells”, and statements by “skilled artisans … that stated clear concerns and identified multiple reasons why CRISPR/Cas9 systems might not function in eukaryotic cells”.
The Broad Institute currently owns CRISPR-related patents in the US and Europe, while it has applied for patents in China, but these have not yet been granted.
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