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 parties.  What follows is a description and analysis of the Board's reasoning.

The Board is direct in denying Broad's Motion No. 1, saying they have not been persuaded by Broad's arguments.  Because the Board dissolved the '048 interference because there was no interference-in-fact, that judgment "neither cancel[ed] nor finally refuse[d] either parties' claims," citing its Judgment.  Accordingly, in the Board's view, "the resolution at the end of the '048 interference was that interference between the claims presented at that time did not deprive either party of its claims."  Broad's estoppel arguments are based on CVC losing rights to claims directed to eukaryotic embodiments of CRISPR; in the Board's view, the basis for its decision in the '048 Interference is contrary to Broad's characterization.

Turning to specifics, the Board addressed Broad's contention that Rule 127(a)(1) mandated its request relief.  The Board disagreed, noting that "[t]he prior CVC claims did not interfere with Broad's claims, whereas Broad does not contest that the currently involved CVC claims do."  Accordingly, "it is not clear that the subject matter of the interference is the same, even if the subject matter of Broad's claims is the same."  Evidentiarily, the Board's decision states that "Broad fails to provide a sufficient comparison of the subject matter of the two interferences to persuade us that the current interference is, or will be, the same subject matter of the '048 interference and will raise the same issues."  Specifically, the Board notes that "Broad fails to compare the count in the current interference, or Broad's proposed counts, with either parties' claims in the prior interference" and that "the current count in the current interference recites a limitation on the RNA configuration that is not recited in the count of the '048 interference."  The Board finds further fault with the Broad's arguments in support of its motion in that "whether the prior count and the current count are drawn to the same subject matter is a disputed issue, which is not sufficiently addressed in Broad's Motion 1."

Turning to Broad's argument that CVC is estopped under Rule 127(a)(1) because Junior Party did not request authorization to file a motion to add eukaryotic CRISPR embodiment claims in the '048 Interference, the Board agreed with CVC's argument that the first sentence of Rule 127(a)(1) does not mention estoppel, and that sentence is limited to decisions "disposing all issues of the proceeding."  A holding of no interference-in-fact, according to the Board, disposes of no issues other than whether there is an interference-in-fact and thus Rule 127(a)(1) does not apply.  Indeed, such a finding precludes the Board from deciding any other issue, states the opinion, citing Berman v. Housey, 291 F.3d 1345, 1352 (Fed. Cir. 2002).  Similarly unpersuasive was Broad's citation of PTO comments during the Notice-and-Comment period related to adoption of the current interference rules, because those comments were directed to interferences directed to the same subject matter and "Broad fails to persuade us that the current interference is for the same subject matter as the prior '048 interference."  And while not expressly agreeing with CVC, the Board cites the MPEP consistent with CVC's argument that "there is no losing party" resulting from a determination of no interference-in-fact.

Interference estoppel by judgment, according to the Board's opinion, "rests on the principle that a 'judgment in an action precludes relitigation of claims or issues that were . . . raised in [the earlier] proceeding,'" citing  In re Deckler, 977 F.2d 1449, 1452 (Fed. Cir. 1992).  Stating the Board's basis for its decision most distinctly, the opinion states that "Broad has failed to persuade us that under 37 C.F.R. § 41.127(a)(1) CVC is estopped because Broad fails to persuade us that the subject matter of the current interference is the same as the subject matter of the prior '048 Interference."

The opinion further asserts that the Board's application of its rules here are consistent with its responsibility under 37 C.F.R. § 41.1 "to secure the just, speedy, and inexpensive resolution of every proceeding before the Board."

And with regard to CVC's putative obligation or responsibility to move to file a motion adding claims to eukaryotic CRISPR embodiments in the '048 Interference, the Board noted that CVC had no claims in condition for allowance during that interference.  "Because the patentability of such claims to CVC was not certain at the time of the '048 Interference, we agree with CVC that allowing ex parte examination to conclude was preferable" according to the Board, noting that Broad itself had "expressed this view" in response to CVC's request to file a preliminary motion to add a claim and substitute a count in the '048 interference.  "Under the facts and circumstances of this interference, where UC believes all of its current claims interfere with all of Broad's claims, there is no reason why UC should need to add a new claim.  If UC's claims in other applications are ultimately found to be allowable, UC may suggest additional interferences to the examiner" (emphasis in opinion).

Under this reasoning the Board denied Broad's Motion No. 1 and then turned to the other motions filed by the parties, which will be discussed in future posts.