28 July 2017
Reporter: Barney Dixon

UC Berkeley fires broadsides in opening brief

UC Berkeley has filed its opening brief in its appeal against the US Patent Trial and Appeal Board’s (PTAB) decision on its CRISPR-Cas9 gene editing patent.

UC Berkeley is seeking to overturn the PTAB’s decision in the case between UC Berkeley and the Broad Institute, and reinstate interference.

Interference is a legal proceeding that determines who was the first to invent a technology.

Both UC Berkeley and the Broad Institute’s patents overlap in scope, but the PTAB found that the claims in the interference were separately patentable, and therefore terminated the interference.

In its brief, UC Berkeley said that the ruling “flies in the face of core legal principles that govern the interference-in-fact inquiry, and defies common sense.”

“If uncorrected, the ruling threatens to allow Broad Institute to arrogate to itself much of UC Berkeley’s transformational invention without Broad Institute demonstrating anything close to the genuine innovation that would justify finding its claims to be separately patentable.”

“This court should not let such a profoundly erroneous and unjust result stand.”

UC Berkeley is joined by the University of Vienna and Emmanuelle Charpentier, who worked with UC Berkeley’s Jennifer Doudna to turn what the university calls “an obscure system used by bacteria to defend themselves against virus infections” into an “easy-to-use gene-editing tool that has revolutionised biomedical research and fueled human hopes for gene therapy to cure disease”.

The university said it wants to establish once and for all that the team led by Doudna and Charpentier was the first to engineer CRISPR-Cas9 for use in all cell types.

CRISPR allows scientists to make precise changes to DNA with a very high success rate and research has shown that the technology can be used to genetically modify mosquitoes to fight malaria in their bodies and pass that trait to their offspring.

Doudna and Charpentier claim to have invented the technology, but soon after UC Berkeley filed patent applications on their behalf covering the use of technology in all cells, Feng Zhang of the Broad Institute published research showing evidence of CRISPR in eukaryotic cells and moved to patent the technology.

Eukaryotic cells belong to plants, animals and humans.

UC Berkeley disputed this patent, arguing that “a person of ordinary skill” could adapt the technology for use in any type of cell.

The PTAB, however, disagreed, ruling: “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.”

Since the ruling, both the Broad Institute, UC Berkeley and Charpentier’s CRISPR Therapeutics, have secured patents in Europe and the US.

Recently, the Broad Institute and Harvard entered into discussions to create a CRISPR-Cas9 patent pool, coordinated by MPEG LA.

The patent pool will allow commercial users to license CRISPR patents from one place, avoiding the complexities of securing licenses from multiple institutions.

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