Broad hits out at UC Berkeley in latest CRISPR battle
Tensions appear to be running high in the dispute between the Broad Institute of MIT and Harvard and the University of California, Berkeley (UC Berkeley) over which first invented the CRISPR gene-editing technology.
In a statement issued on Wednesday, July 31, the Broad Institute accused UC Berkeley of attempting to avoid any evaluation of which party actually invented the gene-editing technique first.
“Instead, UC Berkeley casts baseless claims at the Broad Institute patents and inventors in the hope of avoiding having to provide any actual evidence of UC’s work in eukaryotic cells,” said the Broad Institute.
The statement was issued after both the Broad Institute and UC Berkeley had submitted their proposed motions list to the US Patent and Trademark Office (USPTO) as part of an interference proceeding.
In June, the USPTO reignited the dispute over inventorship with the announcement that it would conduct an interference proceeding between 13 patents and one application of the Broad Institute and ten patent applications filed by UC Berkeley, all covering the use of CRISPR/Cas9 in eukaryotic cells.
The documents on the proposed motions lists will be considered by the administrative patent judges at the Patent Trial and Appeal Board (PTAB) and discussed with counsel for the parties on August 5. The PTAB will then authorise some motions to go forward in the first phase, and defer or deny others.
According to the Broad Institute, its motions list seeks authorisation to establish how this Interference on certain eukaryotic claims differs from an earlier interference, and “attempts to establish a path forward to resolve any remaining substantive issues between these parties”.
UC Berkeley had previously requested a proceeding, alleging that the claims of 12 patents and one application owned by the Broad Institute interfered with its own application.
But, in February 2017, the PTAB determined that the Broad Institute’s patents don’t interfere with patent claims filed by UC Berkeley.
The US Court of Appeals for the Federal Circuit affirmed the PTAB’s decision in September 2018, in a ruling that concluded the Broad Institute’s patents were valid and rejected a challenge brought by researchers at UC Berkeley.
The Broad Institute added that, for seven years, it has made many attempts to engage UC Berkeley.
“It is time for all institutions to move beyond litigation and instead work together to ensure wide, open access to this transformative technology,” said the institute.
In response to the Broad Institute’s statements, Eldora Ellison, lead patent strategist on CRISPR-Cas9 matters for UC Berkeley and a director at Sterne, Kessler, Goldstein & Fox, said that the original interference proceeding did not resolve the question of who first invented the use of CRISPR in eukaryotes.
“UC Berkeley looks forward to a clear-eyed consideration by the PTAB of all of the facts and evidence, and will not respond to each and every allegation the Broad Institute makes in the meantime,” she added.
In its own motions list, UC Berkeley is seeking a motion for a judgment that all of the Broad Institute’s involved patents and application are subject to American Invents Act prior art provisions and a contingent motion for unpatentability of all of Broad’s involved claims.
Merck KGaA-owned Sigma-Aldrich has also petitioned the USPTO to open an interference proceeding between its own pending CRISPR-Cas9 patents and patents awarded to the UC Berkeley.
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