Yesterday the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued a decision in the CRISPR patent interference pending between The Broad Institute, Inc. (the Junior Party; second filer) and The Regents of the University of California (the Senior Party; first filer). The dispute related to U.S. Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641; and U.S. Patent Application Serial No. 14/704,551.
The PTAB, in a per curiam decision, wrote:
Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference. Broad provided sufficient evidence to show that its claims, which are all limited to CRISPR-Cas9 systems in a eukaryotic environment, are not drawn to the same invention as UC’s claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment. Specifically, the evidence shows that the invention of such systems in eukaryotic cells would not have been obvious over the invention of CRISPR-Cas9 systems in any environment, including in prokaryotic cells or in vitro, because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful in a eukaryotic environment. This evidence shows that the parties’ claims do not interfere. Accordingly, we terminate the interference.
The PTAB concluded:
Based on our determination that the preponderance of the evidence shows there is no interference-in-fact between the parties’ claims, we need not decide the other pending motions. Cf. Berman v. Housey, 291 F.3d 1345, 1352 (Fed. Cir. 2002) (holding that the Board did not err in refusing to consider Berman’s patentability motion when Housey’s motion under 35 U.S.C. § 135(b), “a condition precedent to the declaration of an interference,” was granted). A determination of no interference-in-fact deprives UC of standing to raise other challenges against Broad’s claims in this proceeding. See 37 C.F.R. § 41.201 (defining no interference-in-fact as an issue that deprives the opponent of the movant of standing). Accordingly, we terminate the proceeding without entering judgment against either party’s claims.
This ruling is a victory for The Broad Institute, who had filed a motion arguing that the interference should never have been declared because there is no intereference-in-fact between the claims being made by the parties.
There will be much more to write about this decision in the coming days and weeks, and given the amount of time and energy devoted to this fight by The Regents of the University of California an appeal to the United States Court of Appeals for the Federal Circuit seems all but certain.
UPDATED February 16, 2:03pm ET. An earlier version of this article erroneously suggested that The Regents of the University of California could still seek review in the Eastern District of Virginia. According to Biogen v. Japanese Foundation, pre-AIA 35 U.S.C. 146 is no longer available for interferences declared on or after September 12, 2016. Thanks to Publius (comment #1) for pointing out this error.