CRISPR Transcript

8/19/2019 CRISPR Transcript

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1 UNITED STATES PATENT AND TRADEMARK OFFICE

_____________________

2

BEFORE THE PATENT TRIAL AND APPEAL BOARD3

_____________________

4

5 THE BROAD INSTITUTE, INC., MASSACHUSETTS INSTITUTE

OF TECHNOLOGY, AND PRESIDENT AND FELLOWS OF

6 HARVARD COLLEGE Patents 8,697,359; 8,771,945;

8,795,965; 8,865,406; 8,871,445; 8,889,356;

7 8,895,308; 8,906,616; 8,932,814; 8,945,839;

8,993,233; and 8,999,641

8

Junior Party,

9

v.

10

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,

11 UNIVERSITY OF VIENNA, AND EMMANUELLE CHARPENTIER,

Application 13/842,859,

12

Senior Party.13

_____________________

14

15 Patent Interference No. 106,048(DK)

16

______________________

17

18 Initial Teleconference Call

March 10, 2016

19 1:04 p.m.20 ______________________

21

22

BEFORE: Deborah Katz, Administrative Patent Judge,

23 Judge Lane and Judge Schafer

24

Page 1

Madison Deposition Services – A Veritext Company

www.veritext.com 312-379-0702


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1 APPEARANCES:

2 Counsel for Junior Party:

3 Jenner & Block

by Steven Trybus, Esquire

4 by Paul Margolis, Esquire

by Harold Roper, Esquire

5 353 N. Clark Street

Chicago, Illinois 60654-3456

6 (312) 923-8307

[email protected]

7 [email protected]

[email protected]

8

- and -

9

Sunstein, Kann, Murphy & Timbers, LLP

10 by Lawrence M. Green, Esquire

by Elizabeth N. Spar, Ph.D., Esquire

11 by Timothy M. Murphy, Esquire

125 Summer Street

12 Boston , Massach usetts 02 110-1618

(617) 443-9292

13 [email protected]

[email protected]

14 [email protected] - and -

16 Rothwell Figg

by R. Danny Huntington, Esquire

17 607 14th Street, N.W. Suite 800

Washington, District of Columbia 20005

18 (202) 783-6040

[email protected]

19

- and -

20

Greenblum & Bernstein, P.L.C.

21 by Jill M. Browning, Esquire

1950 Roland Clarke Place

22 Reston, Virginia 20191-1411

(703) 716-1191

23 [email protected]

24 (continued)

Page 2




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1 APPEARANCES (continued):

2 Counsel for Senior Party:

3 Buchanan, Ingersoll & Rooney, PC

by Todd R. Walters, Esquire

4 by Erin M. Dunston, Esquire

by Travis W. Bliss, Esquire

5 1737 King Street, Suite 500

Alexandria, VA 22314-2727

6 (703) 836-6620

[email protected]

7 [email protected]

[email protected]

- and -

9

Goodwin Procter, LLP

10 by Brian A. Fairchild, Ph.D., Esquire

Exchange Place

11 53 State Street

Boston, Massachusetts 02109

12 (617) 570-1000

[email protected]

13

14

15

16

17

18

19

20

21

22

23

24

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1 P R O C E E D I N G S

2 1:04 p.m.

3

4 (Conference call proceeded as follows:

5 THE COURT: Hi, this is Deborah Katz, and

6 I have Judge Schafer and Judge Lane with me.

7 Who do I have on the call for Junior

8 Party, for Broad?

9 MR. TRYBUS: Good afternoon, your Honors.

10 For the party Broad, you have lead counsel Steve

11 Trybus from Jenner & Block. Also on the phone is

12 back-up counsel Harry Roper, also from Jenner &

13 Block; and with me here present is in addition from

14 Jenner & Block, a partner Paul Margolis, and also

15 present in the room with me is Danny Huntington from

16 the Rothwell Figg firm; Jill Browning, from

17 Greenblum & Bernstein; and from the Sunstein Law

18 Firm, Elizabeth Spar, Timothy Murphy, and Lawrence

19 Green.

20 THE COURT: Okay. Let me get -- I think I

21 lost you at Jill Browning. Elizabeth -- can you

22 spell the last name.

23 MR. TRYBUS: Elizabeth Spar, S-P-A-R.

24 THE COURT: Okay. And --

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1 MR. TRYBUS: And Timothy Murphy. And

2 Lawrence Green.

3 THE COURT: Okay. M-U-R-P-H-Y?

4 MR. TRYBUS: Yes.

5 THE COURT: And Lawrence Green you said?

6 MR. TRYBUS: Yes. Correct.

7 THE COURT: And then?

8 MR. TRYBUS: And that's everyone on our

9 side, and there is a court reporter also, your

10 Honor.

11 THE COURT: Right. Thank you. Green was

12 spelled how?

13 MR. TRYBUS: G-R-E-E-N.

14 THE COURT: Okay. And Browning was spelled

15 as it sounds, Browning?

16 MR. TRYBUS: Yes.

17 THE COURT: Okay. All right. And can

18 you -- and for the Senior Party, who's on the line,

19 please?

20 MR. WALTERS: Your Honor, this is Todd

21 Walters. I have on the phone my colleagues Erin

22 Dunston and Travis Bliss from the Buchanan Ingersoll

23 & Rooney firm, and we also have here with us Brian

24 Fairchild from the Goodwin Procter firm.

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1 THE COURT: Okay. Thank you.

2 And is that all on the call? Is there

3 anybody else on the call who wants to identify

4 themselves?

5 MR. TRYBUS: Not from our side.

6 THE COURT: Okay. Thank you.

7 All right. So in terms of -- I'll just

8 because I always forget this at the end, the

9 transcript of the call, could that be filed by

10 Monday?

11 MR. TRYBUS: Yes.

12 THE COURT: Okay. Thank you very much.

13 Hi. So we have read -- we're here for the

14 initial conference call. We have received both

15 parties' proposed motions list, and we have reviewed

16 them, and we will take them under consideration.

17 An order will go out with determinations

18 of which motions are authorized and other issues. I

19 think this is -- our time is best used by getting to

20 some questions about the motions, which we will get

21 to in a moment.

22 I wanted to also put some things up front,

23 so that we don't forget about them later. I would

24 like to have the statement of material facts in the

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1 brief; so that requirement is not waived. I find

2 that helpful. They do count towards the page limit

3 also.

4 Claim charts, where they are appropriate,

5 are also good if they don't count towards the page

6 limits.

7 And then just to put up front, we are not

8 going to generically extend the page limits this

9 time. If you find when you are briefing that you

10 are having trouble meeting the page limit for a

11 specific reason, please feel free to come ask us for

12 an extension at that time and be able to support why

13 you need the extra pages.

14 Okay. I may also to get through the

15 schedule, we did receive the order -- we did receive

16 your proposed schedule. A schedule will be put out

17 in the order authorizing the motions and setting the

18 times. To be honest, it looks like it will be

19 shorter, so that we can stay within the two-year

20 time. So I just wanted to ask if a hearing is held,

21 if we do authorize a hearing, that may be in mid

22 November, are there any times that counsel has

23 trouble in mid November, wants to tell us up front

24 before we block out some dates?

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1 I guess, Junior Party, is there anything

2 that you know of at this time?

3 MR. TRYBUS: Let me look for one moment,

4 your Honor.

5 (Pause.)

6 MR. TRYBUS: I have a commitment, your

7 Honor, on the 11th of November; but other than that,

8 it seems like I don't have any conflict for mid

9 November.

10 THE COURT: Okay. And for Senior Party,

11 and this is only that you know of right now. You

12 know, if something ...

13 MR. WALTERS: Your Honor, this is Todd

14 Walters. I don't know of an issue right at the

15 moment, but certainly would want to talk with our

16 client and make sure that there's no problem there.

17 THE COURT: Okay. All right. Once the

18 date and -- the call date, once those come out and

19 as soon as anybody knows of any problem, that would

20 be good.

21 Okay. I also wanted to ask if there has

22 been any attempt at settlement at this point? I

23 guess, Mr. Trybus, is there ...

24 MR. TRYBUS: There has not been, your

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1 Honor. We're under the understanding that Senior

2 Party would initiate such if they were interested in

3 it, but we have not had that opportunity one way or

4 the other to discuss settlement.

5 THE COURT: Okay. And, Mr. Walters, is

6 that ...

7 MR. WALTERS: That's my understanding is

8 there has not been any formal discussions between

9 the parties.

10 THE COURT: Okay. All right. And you

11 know that that's on the schedule too, so.

12 Okay. All right. So now if we turn to

13 the proposed motions list, would the Junior Party

14 first, the proposed Motion 47. So this is the

15 authorization for motion to argue that there's lack

16 of written description.

17 Is this -- Mr. Trybus, is this a

18 thresh -- you've characterized this as a threshold

19 motion or.

20 MR. TRYBUS: Yes, your Honor. We believe

21 that this is a threshold motion. It goes to all

22 of the claims that Senior Party has in the

23 interference; and, therefore, we believe it qualifies

24 on that basis.

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1 THE COURT: Okay. Mr. Walters, do you

2 agree that that would be a threshold issue?

3 MR. WALTERS: Your Honor, I don't think it

4 would resolve all of the issues because if there is

5 something that the Junior Party would identify in

6 terms of 112 issues, we certainly would request the

7 filing of a responsive motion.

8 THE COURT: Okay. And does that -- is

9 that defining a threshold motion?

10 MR. WALTERS: Pardon?

11 THE COURT: If you file a responsive motion,

12 does that mean whether it's threshold or not?

13 MR. WALTERS: Well, in my mind, if a

14 motion is filed that wouldn't ultimately resolve all

15 of the issues in the interference, then it would not

16 be a threshold motion. In here if we would file a

17 responsive motion to an attack of patentability,

18 then that attack of patentability wouldn't resolve

19 all the issues, if, for example, we presented a

20 claim that would address the patentability attack.

21 THE COURT: But ultimately if that claim

22 is found to not have any description support, then

23 would that resolve all of the issues? I guess

24 what's that to -- I mean, in that same proceeding,

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1 the responsive motion's just part of the threshold

2 issue?

3 MR. WALTERS: I think the way that it

4 would work would be that the motion was filed, and

5 then a responsive motion would be filed in response

6 to the motion. So the first motion that is filed on

7 the patentability attack wouldn't be threshold,

8 because it would not resolve all of the issues.

9 But, I guess, your Honor, you could say if

10 you dealt with all of the motions together, that all

11 of the motions together could decide ultimately the

12 outcome of the interference.

13 THE COURT: Okay. All right. All right.

14 I think that gives us some sense. We'll take that

15 under consideration.

16 All right. So, Mr. Trybus, for your

17 proposed Motion 48, are the limitations that you are

18 arguing a motion for lack of enablement, are those

19 limitations in -- we didn't know which claims are

20 they in? Are those in the independent claims,

21 Senior Party's independent claims or just the

22 dependent claims?

23 MR. TRYBUS: They are in the independent

24 claims, your Honor, and more specifically, I could

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1 say that the limitations that we set forth in

2 subparagraph A of 48 go to all of the involved

3 claims.

4 THE COURT: Okay. All right. Mr. Walters,

5 do you agree with that?

6 MR. WALTERS: Well, we don't agree with

7 any of the suggestions that there was a lack of

8 enablement.

9 THE COURT: Right. Right. But do you

10 agree that the limitations are in the independent

11 claims?

12 MR. WALTERS: I'm not exactly sure what

13 exactly they're going to argue, your Honor; so I

14 don't want to say anything in a blanket way, but

15 some of these limitations are in independent claims.

16 THE COURT: Okay. Okay. All right.

17 Thank you for the assistance.

18 All right. Moving on to proposed Motion 51

19 and 56. This is Senior Party's designated --

20 THE COURT REPORTER: Excuse me. I'm

21 sorry. Your Honor, I'm having a hard time hearing

22 you. This is the court reporter. I don't know if

23 you can push your phone a little closer, if that's

24 possible.

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1 THE COURT: Okay. I'll try to move

2 closer.

3 THE COURT REPORTER: That's perfect.

4 Thank you.

5 THE COURT: Okay. Sorry. All right. So

6 now we're moving on to proposed Motion 51 and 56,

7 which is for a designation that some of the claims

8 do not correspond to Count 1.

9 Mr. Walters, are there any claims that you

10 agree -- any of Broad's claims that you agree do not

11 correspond to Count 1?

12 MR. WALTERS: No, your Honor.

13 THE COURT: Okay. Okay. All right. All

14 right. I think -- are there any other questions on

15 that?

16 All right. Then if we move on to UC's

17 proposed list, Mr. Walters, do you -- you

18 characterized your proposed Motion 2 as a threshold

19 defense. It looks like it's a motion for

20 patentability over the prior art. Why is this a

21 threshold motion?

22 MR. WALTERS: So, your Honor, unlike the

23 written description motion that we talked about

24 earlier, the motion that we have proposed here is

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1 based upon the way the interference is set up, and

2 the interference was set up such that the Junior

3 Party was not given benefit to an application prior

4 to March 16 of 2013, and all of its claims are

5 designated to correspond to the count in the

6 interference.

7 Senior Party's application was given the

8 benefit of -- or there is an application filed prior

9 to March 16 of 2013; so the way this interference is

10 set up right now, there's a presumption that all of

11 Junior Party's claims are unpatentable over Senior

12 Party's application, and Senior Party should not be

13 entitled to swear behind -- I'm sorry -- the Junior

14 Party should not be entitled to swear behind the

15 Senior Party's application, because in each of the

16 patents, each of Junior Party's patents involved in

17 this interference, they have a claim that was in

18 their application; and many of the claims have ended

19 up in the issued patents that do not have support to

20 an application pre-March 16, 2013.

21 Because they have these claims, and we've

22 identified several dozen limitations throughout the

23 12 patents, we believe that each of their claims are

24 presumptively unpatentable because they would not be

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1 able to swear behind our application.

2 Each of their claims are designated to

3 correspond to the count, and this is an issue that

4 you cannot fix once you have presented that claim in

5 your application.

6 That's why we consider this a threshold

7 issue. It's based on written description. It

8 cannot be fixed by an amendment to the patent,

9 because once you taint the application that results

10 in the patent, you are stuck in AIA prior art world.

11 THE COURT: So, well, first of all, the

12 declaration of the interference is a beginning of

13 the interference; so I'm not exactly sure why what

14 you're saying is the presumption creates anything

15 more than what would have to be proven during the

16 interference.

17 So the fact that there was or was not

18 benefit afforded, how does that create a threshold

19 motion? I'm -- I'm ...

20 MR. WALTERS: I'm just pointing out, your

21 Honor, that as of right now where the interference

22 sits, they, Junior Party has not been afforded the

23 benefit of anything prior to March 16 of 2013.

24 We also believe that each of their

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1 applications that resulted in those patents is

2 subject to AIA prior art provisions, which means they

3 cannot swear behind the Senior Party's application.

4 THE COURT: Right. Okay. So but if in

5 the end, this comes down to whether the claims are

6 patentable over the prior art, is that a threshold

7 issue?

8 MR. WALTERS: In this particular case,

9 yes, because all of their claims are unpatentable,

10 and patentability is something that you should have

11 in order to proceed with the interference. If they

12 have no patentable claim, they shouldn't be allowed

13 to proceed forward with the interference.

14 THE COURT: But -- okay. Could there

15 still be a question of priority even if the other

16 party, whether the other party invented first,

17 whether or not the first party has a patentable

18 claim or the other -- the one party has patentable

19 claims or not?

20 MR. WALTERS: Your Honor, in order to move

21 forward with the interference, we believe that they

22 need to have a patentable claim. Patentability is a

23 prerequisite to get into the interference in the

24 first place, but we don't believe that they should

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1 have been allowed to indicate to the Patent Office

2 that they were a pre-AIA application when, in fact,

3 when they filed the majority of their ADS sheets

4 with the Patent Office, they specifically indicated

5 that they were a transitional application subject to

6 AIA provisions.

7 For this reason, it would be really unfair

8 to not allow us to file that particular motion when

9 it was Junior Party who indicated to the Patent

10 Office that initially they were a post-AIA

11 application, meaning subject to AIA provisions, but

12 then subsequently changed their position on that

13 before they then did a swear-behind declaration to

14 get in front of our filing date. This seems like a

15 clear interference issue dealing with patentability,

16 no different than written description.

17 THE COURT: Okay. I guess, Mr. Trybus, do

18 you want to ...

19 MR. TRYBUS: Yes, your Honor. We do not

20 believe that this is a threshold issue. We believe

21 that this is patentability over prior art motion

22 pure and simple and does not need to be taken up

23 now. Say, obviously we disagree with the Senior

24 Party with regard to the underlying facts, but we'll

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1 not argue those; but we do believe that the statute

2 would provide as, I think one of your Honor's

3 questions got to, that even if -- and we don't

4 believe our claims are unpatentable, but even if the

5 claims were unpatentable as set forth here, that

6 there would still be, under the statutory provisions,

7 the ability for the interference or even the

8 requirement that the interference go forward with

9 our ability to show priority.

10 THE COURT: Okay. All right. I think we

11 see what the issues are in authorizing or not the

12 motion.

13 All right. I think the third -- all

14 right. I think those were the questions that we had

15 about the proposed motions list.

16 I guess I'd ask Junior Party if there's

17 anything other than the specific, you know, what

18 you've written in the proposed motions list -- we

19 don't want to go through each one -- but are there

20 other things that you want to bring up at this

21 initial conference?

22 MR. TRYBUS: Yes, your Honor, I do have

23 one thing that I do want to bring up, and it concerns

24 Senior Party's motion with regard -- Motion 11 with

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1 regard to inequitable conduct.

2 We strenuously deny all of the underlying

3 allegations; but more than that, your Honors, we

4 believe that the allegations made, they're unfounded

5 and that they also do not provide adequate basis for

6 the motion. We believe that this allegation does

7 not comply with paragraph 208.7 of the standing

8 order, and we believe and request that the Board

9 strike that from the record, and/or require the

10 Senior Party to file a proper list that does not

11 include these allegations. These allegations have

12 been picked up in the press to the harm of Junior

13 Party, and because these allegations not only have

14 no basis, but we believe are contrary to the Board's

15 rules and standing order, we would ask for that

16 relief.

17 THE COURT: Okay. All right. We will

18 look at that.

19 MR. WALTERS: Your Honor, may I respond?

20 THE COURT: Very briefly.

21 MR. WALTERS: I just -- first of all, the

22 motion that we're referring to is a motion addressing

23 inequitable conduct, and I want to let your Honors

24 know that we're certainly loath to put this on our

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1 motions list.

2 We recognize that your Honors may defer

3 such an issue to later in the interference. This is

4 an issue that I personally don't believe I've ever

5 put on a motions list before. However, after

6 reviewing the evidence in this particular case and

7 consulting with the clients in this particular case,

8 we felt it necessary to put it in the motions list,

9 so that we could preserve our ability to file that

10 motion and preserve the record.

11 We believe that the standing order indicates

12 that you have to put your proofs in with your motion,

13 not your motions list; and it's unfortunate that

14 this is an issue that is in a motions list, but we

15 felt we had to -- we had to preserve our rights

16 here.

17 THE COURT: Okay.

18 MR. TRYBUS: And, your Honor, if I could

19 briefly just make one last comment.

20 THE COURT: Go ahead.

21 MR. TRYBUS: We believe that, at least in

22 part, one of the things that is wrong with the list,

23 as filed, is that there's no even proper allegation

24 with regard to intent, and there's also not an

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1 allegation on but-for materiality as well.

2 Thank you.

3 THE COURT: Okay.

4 MR. WALTERS: Your Honor, I feel like I

5 have to respond again.

6 THE COURT: Go ahead.

7 MR. WALTERS: As Therasense indicates, the

8 En Banc decision, intent can come from circumstantial

9 evidence, and in situations where a party has

10 misrepresented facts to the Patent Office, the

11 but-for-materiality test is accepted in those

12 situations, as we understand the reading of

13 Therasense.

14 Your Honor, we also had a couple of

15 miscellaneous issues in our motions list that we'd

16 like to touch upon briefly.

17 THE COURT: All right. Well, Junior --

18 Mr. Trybus, are you -- is that the only thing that

19 you wanted to bring up?

20 MR. TRYBUS: Yes, your Honor. I don't

21 think we have anything else.

22 THE COURT: Okay. Mr. Walters, go ahead.

23 MR. WALTERS: Your Honor, as you know,

24 Junior Party has had a number of patents issue

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1 already. Many of those patents are in this

2 interference.

3 Junior Party is continuing to prosecute

4 additional applications, some of which we requested

5 to be part of the interference but ultimately were

6 not pulled into the interference.

7 We are assuming that those additional

8 applications were not put into the interference

9 because the subject matter of the claims had not

10 been yet indicated as allowable but for the

11 interference.

12 More recently, one of Junior Party's

13 applications, which is mentioned in Senior Party's

14 motions list is -- has been indicated to have

15 allowable subject matter, and a notice of allowance

16 was issued in that case.

17 We're trying to get some guidance from you

18 on how we deal with any additional applications like

19 this particular application that has been allowed

20 because we would treat that application like we

21 would treat all of the other patents that are

22 currently in the interference itself.

23 THE COURT: Let me ask one thing. Are the

24 issues of the -- there are already 12 patents in the

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1 interference. Are there other issues that this

2 particular application is bringing up?

3 MR. WALTERS: Well, our concern, your

4 Honor, is that if additional cases are being allowed,

5 and they'll go to issue, and we don't treat them in

6 this interference, then that could ultimately be

7 problematic, and then we have to bring about

8 separate proceedings on any newly issued cases;

9 and we want to just make sure -- we understand that

10 there's already 12 patents. We don't like that

11 either, but we want to make sure that we're not

12 foreclosing any opportunity of addressing those

13 cases as if and when they issue, and we honestly

14 don't think they should have issued -- any of them

15 should issue in the first place.

16 THE COURT: Right. All right. We will

17 take a look at the circumstances of where the

18 application is, and we will put out some guidance in

19 the orders.

20 MR. WALTERS: All right. I have another

21 issue, your Honor, and that is dealing with

22 responsive motions. And maybe this is not the

23 appropriate call for dealing with responsive motions

24 because we don't know what motions you're going to

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1 allow the respective parties to file.

2 THE COURT: Right.

3 MR. WALTERS: But I want to make sure that

4 we reserve at least some point in time for us to

5 address responsive motions because the Senior Party

6 certainly would want an opportunity to address a no

7 interference in fact motion, any unpatentability

8 attack, or any assertion that claims should be

9 undesignated because any of the categories of

10 undesignation we certainly have support for

11 interfering claims, should the Junior Party convince

12 you that any of that subject matter is separately

13 patentable.

14 We just want to make sure we can address

15 all of the issues with the parties.

16 THE COURT: All right. Well, I think

17 there is a time for filing of responsive motions, but

18 I believe you would have to request authorization

19 before that time period. Right?

20 MR. WALTERS: That is correct, your Honor.

21 I just want to make sure that we put that on your

22 radar.

23 THE COURT: Okay. All right. Okay. Is

24 there anything else from either of the parties?

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1 MR. WALTERS: One last issue, your Honor,

2 and that is on the schedule. The parties have

3 discussed the schedule and the complexities of this

4 particular interference, and we do want to be mindful

5 of your desire to complete the interference in a

6 timely fashion, but at least Senior Party and I

7 think Junior Party would agree, that this is a

8 complex case, and it would be, I think, helpful to

9 the parties and the Board if the parties had

10 sufficient time to prepare and file their papers, to

11 the extent that you can give us extra time in the

12 schedule.

13 THE COURT: Okay. Well, we will take that

14 into account.

15 Okay. I think -- is there anything else?

16 From Judge Lane?

17 All right. Thank you all very much. We

18 will have an order out shortly, and we will address

19 all the issues that you've mentioned.

20 MR. TRYBUS: Thank you, your Honors.

21 THE COURT: Thank you.

22 MR. WALTERS: Thank you, your Honors.

23 MR. ROPER: Thank you.

24 (Conference call concluded at 1:34 p.m.)

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1 C E R T I F I C A T E

2

3 I, Julie Thomson Riley, RDR, CRR, do

4 hereby certify that the foregoing transcript,

5 consisting of 26 pages inclusive, is a true and

6 accurate transcription of my stenographic notes in

7 the initial conference call regarding Patent

8 Interference No. 106,048 (DK), The Broad Institute,

9 Inc., et al. versus The Regents of the University of

10 California, et al., before Judge Deborah Katz, Judge

11 Schafer and Judge Lane, on March 10, 2016, to the

12 best of my skill, knowledge, and ability.

13

14

15 /s/ Julie Thomson Riley March 10, 2016

16 Julie Thomson Riley, RDR, CRR Date

17

18

19

20

21

22

23

24

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