Top Four Stories of 2020

By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories. For 2020, we identified eight stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants. On Monday, we counted down stories #8 to #5, and today we count down the top four stories of 2020. As with our other lists (2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of…

Separate Interferences Declared between Toolgen and Broad and CVC over CRISPR Priority Question

By Kevin E. Noonan — One of the most notable movie taglines, “Just when you thought it was safe to go back in the water,” was used to market the sequel to the original summer blockbuster movie, Jaws. It is perhaps impossible to not think of that message upon learning that the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office on December 20, 2020 declared two interferences: the first, Interference No. 106,126 involving the Broad Institute, Inc., the Massachusetts Institute of Technology, and the President and Fellows of Harvard College, and the second, Interference No. 106,127,…

Top Stories of 2020: #5 to #8

By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories. For 2020, we identified eight stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants. Today, we count down stories #8 to #5, and later this week we will count down the top four stories of 2020. As with our other lists (2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our…

CVC Files Reply to Broad’s Opposition to CVC’s Miscellaneous Motion No. 6; Board Issues Orders

By Kevin E. Noonan — Motion practice continues in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), with CVC filing on January 6th its Reply to Broad’s opposition to CVC’s Miscellaneous Motion No. 6 for leave to subpoena discovery (including depositions) from Luciano Marraffini and Shuailiang Lin, neither of whom is a party to this interference (pursuant to an Order authorizing filing of this Reply issued by the Board on December 28th). CVC’s…

Broad Files Priority Motion in CRISPR Interference*

By Kevin E. Noonan — In the latest development in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), Broad filed its priority motion (which, as Senior Party they were not obliged to do). Broad’s brief is a hybrid: on the one hand establishing its dates of conception and actual reduction to practice, and on the other denigrating CVC’s claims of conception and reduction to practice. The latter portion of its argument hinges on…

CVC Files Substantive Motion No. 3 (for Improper Inventorship) and Broad Opposes

By Kevin E. Noonan — Last fall the Patent Trial and Appeal Board, in Interference no. 106,115, granted leave to Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”) to file a dispositive motion for improper inventorship against Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”). CVC filed this motion, and Broad has filed its opposition. CVC set forth the precise relief requested at the outset: invalidation for improper inventorship of all Broad patents and applications in the interference having misjoinder of inventors, under 35 U.S.C. §…

Broad Files Motion Opposing CVC’s Motion to Subpoena Witnesses

By Kevin E. Noonan — At the end of October, in Interference No. 106,115 between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), the Patent Trial and Appeal Board (PTAB) consented to CVC’s request that they file a motion under 37 C.F.R. § 41.156(a) for leave to subpoena discovery from Luciano Marraffini and Shuailiang Lin, neither of whom is a party to this interference. (Readers may remember that Dr. Marraffini, faculty at The Rockefeller University, was involved…

CVC Discloses Priority Evidence and Earliest Conception Date in Interference

By Kevin E. Noonan — Almost three weeks ago, on October 31st, Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”) filed its priority motion in Interference No. 106,115, setting forth for the first time its earliest conception date (March 1, 2012) and evidence of that conception for practicing CRISPR in eukaryotic cells: In the remainder of its 50 page brief, CVC set out its arguments for serial events of conception (April 11, May 28, or June 28, 2012), when the invention encompassed by the Interference Court was serially reduced to practice (earliest date,…

CRISPR Housekeeping

By Kevin E. Noonan — Since the Patent Trial and Appeal Board (PTAB) rendered its decisions on Motions in Interference No. 106,115, Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”) have filed a number of miscellaneous motions, and the Board has issued several Orders in response. The most significant of these was a joint stipulation to extend Time Periods 11-13, each by a week. The Board granted this request under 37 C.F.R. § 41.104(c), and thus the…

Supreme Court to Consider Constitutional Propriety of Appointment of PTAB Judges

By James Lovsin — Today, the Supreme Court granted petitions for a writ of certiorari to review the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., in which the court of appeals held how administrative patent judges were appointed to the Patent Trial and Appeal Board (“PTAB”) violated the Appointments Clause of the Constitution (Art. II, sec. 2, cl. 2). To prospectively remedy that violation, the court severed a portion of the America Invents Act restricting the way APJs can be removed, and vacated and remanded the PTAB’s judgment for a new hearing. The Federal Circuit denied…

PTAB Grants Broad Motion No. 4 for Priority Benefit to U.S. Provisional Application No. 61/736,527

By Kevin E. Noonan — In the Patent Trial and Appeal Board’s decision on motions issued September 10th in Interference No. 106,115 (see “PTAB Decides Parties’ Motions in CRISPR Interference”) between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), the Board granted Broad’s Motion No. 4 for priority benefit to U.S. Provisional Application No. 61/736,527. As a result, Broad will remain Senior Party during the Priority Phase of the interference. Broad in its substantive Motion No. 4…

PTAB Denies Broad Motion No. 3 to De-designate Claims as Not Corresponding to Count No. 1

By Kevin E. Noonan — In the Patent Trial and Appeal Board’s decision on motions issued September 10th in Interference No. 106,115 (see “PTAB Decides Parties’ Motions in CRISPR Interference”) between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), the Board denied Broad’s Motion No. 3 to De-designate Claims as Not Corresponding to Count No. 1. Broad’s brief parsed its claims into three categories of claims that it argued do not correspond to the Count, depending on…

CVC Takes Its Turn at Filing Dispositive Motion to End Interference

By Kevin E. Noonan — For those with long memories, last August the Patent Trial and Appeal Board received proposed motions from the parties (University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier, Junior Party, and The Broad Institute, Massachusetts Institute of Technology, and Harvard University, Senior Party) in Interference No. 106,115. Thereafter, the Board authorized the parties to file some but not all of these motions; the Decision on these Motions was issued by the Board on September 10th (see “PTAB Decides Parties’ Motions in CRISPR Interference”). But several of each parties’ motions were deferred until the priority…

PTAB Denies Broad Motion No. 2 to Substitute the Interference Count

By Kevin E. Noonan — In the Patent Trial and Appeal Board’s decision on motions issued September 10th in Interference No. 106,115 (see “PTAB Decides Parties’ Motions in CRISPR Interference”) between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”) the Board denied Broad’s Motion No. 2 to substitute the Count. To recap, the Count in the ‘115 interference as declared recited in the alternative either claim 18 of the Broad’s U.S. Patent No. 8,697,359 (dependent on claim…

Claim Construction by PTAB in CRISPR Interference Decision

By Kevin E. Noonan — Judge Giles Sutherland Rich’s most famous aphorism in patent law is “the name of the game is the claim.”* This rubric is important to keep in mind when considering the Patent Trial and Appeal Board’s decision on motions issued September 10th in Interference No. 106,115 (see “PTAB Decides Parties’ Motions in CRISPR Interference”) between Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, “Broad”) and Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”). The focus of the claim construction issue was the meaning…

PTAB Decision Denying Broad’s Substantive Motion No. 1 in CRISPR Interference

By Kevin E. Noonan — On September 10th, the Patent Trial and Appeal Board rendered its decision on the parties’ Motions in Interference No. 106,115 (see “PTAB Decides Parties’ Motions in CRISPR Interference”). Perhaps the decision of most immediate significance was the Board’s decision denying the Senior Party’s (The Broad Institute, Harvard University, and the Massachusetts Institute of Technology, collectively, “Broad”) Substantive Motion No. 1, that Junior Party Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”) should be estopped in this interference by the PTAB’s decision in the earlier 105,048 interference between these…

USPTO Initiates Fast-Track Appeals Pilot Program

By Donald Zuhn — In a notice published in the Federal Register last month (85 Fed. Reg. 39888), the U.S. Patent and Trademark Office announced that it was initiating a Fast-Track Appeals Pilot Program, to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board. The new pilot program, which took effect on July 2, 2020, is scheduled to run until July 2, 2021 or until 500 petitions for inclusion in the program have been accepted, whichever occurs earlier. In announcing the new pilot program, the Office noted that appeals…

Arthrex Files Certiorari Petition in Arthrex case

By Kevin E. Noonan — Arthrex recently filed a certiorari petition with the Supreme Court in Arthrex v. Smith & Nephew Inc. (a case related to Arthrex, Inc. v. Smith & Nephew, Inc., which has also the subject of petitions from the U.S. government and Smith & Nephew). The Questions Presented are: 1. Whether the retroactive application of inter partes review to patents that were applied for before the America Invents Act violates the Fifth Amendment. 2. Whether a court of appeals can invoke forfeiture principles to refuse to address a constitutional claim in a pending appeal despite an intervening…

U.S. Government Petitions for Certiorari in Arthrex Case

By Kevin E. Noonan — Last fall, the Federal Circuit decided in Arthrex, Inc. v. Smith & Nephew, Inc. that Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB) were principal officers and thus had been improperly appointed under the Appointments Clause, and accordingly vacated a PTAB determination in an inter partes review proceeding and remanded for consideration by a panel of properly appointed APJs (see “Federal Circuit Holds APJs Are Principal Officers”). Thereafter, in Polaris Innovations Ltd. v. Kingston Technology Co., the Federal Circuit relied on its Arthrex decision to vacate and remand a PTAB…

Smith & Nephew File Certiorari Petition in Arthrex Case

By Kevin E. Noonan — While the Federal Circuit’s decision last fall in Arthrex, Inc. v. Smith & Nephew, Inc. raised issues about the appointment of Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB), it should be remembered that it also wiped out a PTAB decision in favor of Smith & Nephew in the underlying inter partes review of Arthrex’s U.S. Patent No. 9,179,907 on anticipation grounds (which, given the deferential nature of Federal Circuit review on factual issues, the challenger had every expectation the PTAB decision would be affirmed). At the end of June,…

In re Boloro Global Ltd. (Fed. Cir. 2020)

Federal Circuit Extends Arthrex to Patent Prosecution By James Lovsin and Alexa Giralamo* — This week, the Federal Circuit extended its holding in Arthrex, Inc. v. Smith & Nephew, Inc., that administrative patent judges (“APJs”) were improperly appointed in violation of the Appointments Clause, to ex parte proceedings in In re Boloro Global Limited. Under Article II, Section 2, Clause 2 of the Constitution, Congress has the authority to vest power in the President or in the Heads of Departments to appoint inferior officers, but must retain its power for principal officers. The Supreme Court considers certain hallmark factors of…