Posts Tagged: "interference proceedings"

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? …  PGRs are estimated to cost more because of their broader discovery rules.  If cost is a major factor, IPRs are a less-expensive option due to restricted allowance of discovery, the most expensive aspect of patent litigation… If the invalidating arguments or art are not strong, an IPR may be a better option due to its lower threshold for institution.  The same prior art arguments that failed in a petition for a PGR may have succeeded in an IPR petition due to the lower standard.

Those now familiar with IPR proceedings will already have recognized how little resemblance current IPR proceedings have to what most supporters of the AIA envisioned upon its passage. In current practice, the role of the Director as an independent IPR gatekeeper never materialized because the USPTO’s implementing rules bypass the Director altogether, assigning the institution function to the PTAB, which in turn routinely assigns both the institution and final decisions to the same three judge panel. As a result, most of the safeguards against patent owner harassment were lost…. By failing to adopt the implementing rules needed to carry out the intent of the AIA, and by adopting other rules and procedures that are plainly skewed towards petitioners, the PTAB has intentionally tilted its IPR proceedings against patent owners. While this has been good for the PTAB, which has quadrupled in size, it was neither Congress’s intent nor that of most of AIA’s supporters to create an unfair IPR patent “killing field.”

The Federal Circuit vacated three interference decisions, in which the Board found that Stanford’s claims were unpatentable for lack of written description, and remanded for further proceedings… The Court thus vacated the interference decisions and remanded for the Board to (1) “reconsider whether Quake’s relevant patents and applications satisfy the written description requirement” and (2) examine whether the artisan “would have known, as of the priority date, that the … specification references to Illumina products meant random MPS sequencing as recited in the claims” and whether he or she “would have understood that the … specification disclosed random MPS sequencing, as opposed to whether the specification did not preclude targeted MPS sequencing.”

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.”… 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)… 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.

The alliance is composed of firms that have a vested interest in the outcomes of a CRISPR patent interference case currently in front of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). The interference proceeding specifically involves patents covering CRISPR/Cas9 gene editing technologies. The companies joining the alliance include Ireland-based ERS Genomics and Switzerland’s CRISPR Therapeutics (NASDAQ:CRSP) along with American biotech firms Caribou Biosciences and Intellia Therapeutics (NASDAQ:NTLA). These companies have all licensed CRIPSR/Cas9 technologies

Under the doctrine of inherent disclosure, it is not necessary for an earlier application to explicitly describe the later patent. There is adequate written description to support a later patent where it is undisputed that the invention inherently described in an earlier application was the same subject matter included in the claims of the later patent.

Sheehan contended that Dulcich, without permission, grafted Sheehan’s “Great Green” in 2010 and filed for a plant patent in 2012 claiming the “Great Green” as its own JPD-001 (“Green Emerald”). Dulcich’s plant patent on JPD-001 issued on March 18, 2014, while Sheehan’s own application on Great Green was pending… Meanwhile, Sheehan is seeking to have a stay lifted in co-pending litigation in the Eastern District of California between the same parties addressing allegations relating to conversion, unfair competition and trade secret misappropriation.

Right now, behind the walls of the USPTO, there is a fiery interference battle occurring between two scientific teams over who created a groundbreaking, DNA altering technique first. The victor stands to receive incredible gains. In one corner is a team of scientists from UC Berkeley headed by biologist Jennifer Doudna from the University of California, Berkeley and microbiologist Emmanuelle Charpentier from Umeå University in Sweden and the Max Planck Institute for Infection Biology in Berlin. In the other, a group led by synthetic biologist Feng Zhang of the Broad Institute of the Massachusetts Institute of Technology and Harvard in Cambridge, Massachusetts.

Bamberg’s specification stated that plastics must not melt at ironing temperatures (up to above 220 degrees Celsius) because the effects would be undesired. Bamberg argued that while this was in the specification, the written description requirement was satisfied because one skilled in the art would understand that one could have a layer that melted above and below 220 degrees Celsius, but both may not be desired. The Court held there was insufficient evidence on the record to support the conclusion that Bamberg possessed a white layer that melted below 220 degrees Celsius because it specifically distinguished this as an undesired result.