{"id":2209,"date":"2018-09-10T11:25:10","date_gmt":"2018-09-10T15:25:10","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2209"},"modified":"2018-09-16T11:31:44","modified_gmt":"2018-09-16T15:31:44","slug":"federal-circuit-affirms-boards-determination-of-no-interference-in-crispr-cas9-technology","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2209","title":{"rendered":"Federal Circuit Affirms Board’s Determination of No Interference in CRISPR-Cas9 Technology"},"content":{"rendered":"

In Regents of the University of California v. Broad Institute, Inc.<\/a>, [2017-1907](September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that there was no interference-in-fact between the University of California\u2019s Application No. 13\/842,859, and the claims of twelve\u00a0patents and one application owned by the Broad Institute,
\nInc., Massachusetts Institute of Technology, and the\u00a0President and Fellows of Harvard College.\u00a0\u00a0The involved claims relate to the use of a\u00a0CRISPR-Cas9 system for the targeted cutting of DNA\u00a0molecules.<\/p>\n

The Board applies a two-way test to determine\u00a0whether the claims are patentably distinct, asking\u00a0whether \u201cthe subject matter of a claim of one party would,\u00a0if prior art, have anticipated or rendered obvious the\u00a0subject matter of a claim of the opposing party and vice\u00a0versa.\u201d 37 C.F.R. \u00a7 41.203(a). If the\u00a0two-way test is not\u00a0met, no interference-in-fact exists.<\/p>\n

This Federal Circuit said that the case turns in its entirety on the substantial evidence
\nstandard. It noted that the Board found a person of ordinary\u00a0skill in the art would not have had a reasonable expectation\u00a0of success in applying the CRISPR-Cas9 system in
\neukaryotic cells. Given the mixture of evidence\u00a0in the record, the Federal Circuit found that substantial evidence\u00a0supports the Board\u2019s finding that there was not a reasonable
\nexpectation of success, and affirmed.<\/p>\n

UC argued\u00a0that the Board: (1) improperly adopted a rigid test for\u00a0obviousness that required the prior art contain specific\u00a0instructions, and (2) erred in dismissing evidence of\u00a0simultaneous invention as irrelevant. However the Federal Circuit found no error in the Board’s analysis. After a detailed review of the evidence, the Federal Circuit concluded that in\u00a0light of the record evidence, which includes expert\u00a0testimony, contemporaneous statements made by skilled\u00a0artisans, statements by the UC inventors themselves, and\u00a0prior art failures, the Board\u2019s fact finding\u00a0as to a lack of reasonable expectation of success is\u00a0supported by substantial evidence.\u00a0 The Federal Circuit said that the Board did not adopt a test requiring there be specific instructions\u00a0in the art in order to make a finding of a reasonable\u00a0expectation of success, and thus found no error in the Board’s analysis.<\/p>\n

On the issue of simultaneous invention, the Federal Circuit acknowledged that simultaneous invention may serve as evidence of obviousness\u00a0when considered in light of all of the circumstances.\u00a0 First, it is evidence of the\u00a0level of skill in the art, and second it constitutes objective\u00a0evidence that persons of ordinary skill in the art\u00a0understood the problem and a solution to that problem. However in the context of interferences,\u00a0evidence of simultaneous invention\u00a0cannot alone show obviousness, otherwise any claims\u00a0involved in an interference would be unpatentable for\u00a0 obviousness. Thus, the Federal Circuit instructed, the weight\u00a0of evidence of simultaneous invention must, therefore, be\u00a0carefully considered in light of all the circumstances.\u00a0 Noting that the Board\u00a0explained that each case must be decided in its particular\u00a0context, including the characteristics of the science or\u00a0technology, its state of advance, the nature of the known\u00a0choices, the specificity or generality of the prior art, and\u00a0the predictability of results in the area of interest, the Federal Circuit found no error in the Board’s analysis.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Regents of the University of California v. Broad Institute, Inc., [2017-1907](September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that there was no interference-in-fact between the University of California\u2019s Application No. 13\/842,859, and the claims of twelve\u00a0patents and … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[88],"tags":[],"class_list":["post-2209","post","type-post","status-publish","format-standard","hentry","category-interference"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2209","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2209"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2209\/revisions"}],"predecessor-version":[{"id":2211,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2209\/revisions\/2211"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2209"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2209"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2209"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}