PTAB Overly Relied on Statements of Doubt in Determining Conception and Reduction to Practice in Interference Proceedings

"Regents of the University of California ("Regents") and Broad Institute were engaged in a patent interference proceeding involving the adaptation of CRISPR systems to edit eukaryotic DNA. Both parties were engaged in extensive testing related to editing eukaryotic DNA during the time of the invention, and both filed multiple patent applications that became the subjects of the patent interference proceedings."

"Before deciding preliminary motions, the PTAB determined that the claim term "guide RNA" in both parties' applications encompassed a single-molecule RNA configuration under the broadest reasonable interpretation. The PTAB also determined that Regents was only entitled to a January 2013 priority date because its earliest applications did not satisfy the written description requirement. Because of this priority date, the PTAB designated Regents as the junior party and designated Broad Institute as the senior party for the priority phase of the interference proceeding."

"In its final written decision, the PTAB determined that Broad Institute reduced the invention to practice in October 2012, and denied Regents' claims to an earlier reduction to practice based on emails, notebook entries, and reports related to microinjection and expression vector tests. Regents appealed the PTAB's decisions related to conception and written description. Broad Institute appealed the claim construction decision."

Regents of the University of California and Broad Institute contested priority in an interference over adapting CRISPR systems to edit eukaryotic DNA. Both parties conducted extensive testing and filed multiple patent applications during the invention period. The PTAB construed "guide RNA" to include a single-molecule RNA configuration and found Regents' earliest applications failed the written description requirement, limiting Regents to a January 2013 priority date. The PTAB designated Regents as the junior party, found Broad reduced the invention to practice in October 2012, and rejected Regents' asserted earlier reductions to practice based on emails, notebooks, and test reports. The Court reviewed PTAB decisions on conception, reduction to practice, written description, and claim construction.

Read at Intellectual Property Law Blog