The Patent Trial and Appeal Board (PTAB) entered an Order on Tuesday regarding the motion by Junior Party the University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (collectively, "CVC") in Interference No. 106,115, for leave to subpoena discovery from Luciano Marraffini and Shuailiang Lin, neither of whom is a party to this interference against Senior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology (collectively, "Broad").  Specifically, CVC asserted in its motion under 37 C.F.R. § 41.156(a) that these subpoenas were necessary because these witnesses each possessed knowledge from their work with Feng Zhang and their prior statements CVC characterized as being "material to Broad's priority proofs [and] that contradict its priority statement allegations."  This testimony, CVC asserted, was in the interest of justice because the Broad is likely not to proffer their testimony and without it "the PTAB's fair assessment of Broad's priority case will be frustrated."

Substantively, CVC asserted that Dr. Marraffini was expected to testify that Dr. Zhang did not conceive of an embodiment falling within the scope of the Count before publication of the Jinek 2012 reference (disclosing CVC's invention).  This testimony would be consistent with assertions CVC made in its priority motion, stating without alleging that Broad derived its invention from CVC's disclosures (formal and otherwise).  The motion further placed Dr. Marraffini in collaboration with Dr. Zhang from December 2011 as evidenced by publications and patent applications filed by research teams including Drs. Marraffini and Zhang.  The motion set out quotations from Dr. Marraffini attributing development of single-guide RNA embodiments of CRISPR to CVC's inventors, and characterized this testimony as contradicting Broad's assertion in its priority statement that Dr. Zhang conceived an invention within the scope of the Count prior to publication of the Jinek 2012 reference.  The motion identified four specific categories of testimony from Dr. Marraffini:

(1)     his knowledge of Zhang's work on CRISPR-Cas9 systems, particularly the status of that work before publication of Jinek 2012;

(2)     his knowledge of Zhang's failures to conceive and reduce to practice a single-guide RNA CRISPR-Cas9 system;

(3)     his communications with Zhang before the filing of [Application No. 61/736,527] about the use of single-guide RNA in a CRISPR-Cas9 system; and

(4)     related testimony that contradicts Broad's allegations of priority.

CVC supported its request for leave by recounting its unsuccessful attempts to obtain this testimony voluntarily, and contended that only by subpoena would the Junior Party be able to obtain the testimony.

Regarding Dr. Lin, CVC attested that, like Dr. Marraffini he was expected to testify that Dr. Zhang had not invented single-guide RNA species of CRISPR-Cas9 prior to publication of the Jinek 2012 reference.  This expectation was based on certain correspondence to this effect between Dr. Lin and Jennifer Doudna from 2015.  In addition, the motion contended that Dr. Jin prepared a laboratory presentation in June 2012 where he stated that "the lab had been unsuccessful in implementing a CRISPR-Cas9 system in eukaryotes."  CVC asserted that Dr. Lin was expected to testify regarding these topics (and that his deposition will be limited to them):

(1) his involvement with Zhang's experiments;

(2) the circumstances surrounding Zhang's first awareness of a single-guide RNA in a CRISPR-Cas9 system;

(3) Zhang's failures in reducing a CRISPR-Cas9 system to practice before learning of the CVC inventors' work; and

(4) related communications between Lin and Zhang concerning such issues.

As with Dr. Marraffini, CVC argued that the subpoena was necessary because Dr. Lin had refused to testify voluntarily.

The Broad opposed, arguing that granting leave to subpoena these witnesses and their purportedly expected testimony would not be in the interests of justice.  But in the event that the Board granted leave, Broad asked that it be awarded half of the maximum 7 hours for each deposition.

In the Board's Order, CVC was granted leave to subpoena Dr. Marraffini but not Dr. Lin, and Broad granted only one hour of cross-examination limited to the topics CVC raised in its deposition.  The Order sets forth the basis for the Board's decision, reminding the Parties that additional discovery is granted at the Board's discretion and only on a showing that such discovery is in the interests of justice.  Particularly prohibited are "[f]ishing expeditions" under Shiokawa v. Maienfisch, 56 U.S.P.Q.2d 1970 (BPAI 2000) (precedential).  With these principles in mind, the Board reviewed CVC's arguments in support of permitting deposition of Dr. Marraffini, and found persuasive the allegation that there were communications (including telephone conversations) between Dr. Marraffini and Dr. Zhang that were not of record or contained in any of the documentary evidence before the Board, suggested by e-mails that were in evidence (by Broad).  The Board asserted in this regard that "the evidence Broad presents indicates that Dr. Marraffini would likely be able to testify about other information the Board regarding Dr. Zhang's knowledge of the single-guide RNA."  But while granting leave the Board limited CVC's deposition questioning to the topic of "[Dr. Marraffini's] communications with Dr. Zhang about the use of single-guide RNA in a CRISPR-Cas9 system before the filing of the Zhang B1 provisional application."  The Board specifically denied CVC's request for "a broader range of testimony, including the status of Dr. Zhang's work before publication of Jinek 2012 and his knowledge of Dr. Zhang's failures to conceive and reduce to practice single-guide RNA CRISPR-Cas9 systems."  Denial was based on CVC not establishing for the Board why evidence of such failures would be relevant under circumstances where the inventor is ultimately successful, the Order stating that it is Broad's burden to justify its priority claim (presumably including explaining, inter alia, why such failures were not evidence of defective conception).  Thus CVC's requests for these other areas of Dr. Marraffini's testimony were denied by the Board.

CVC's arguments regarding the need for Dr. Lin's testimony was less persuasive overall.  After setting forth both Parties' arguments for and against the Board granting CVC leave, the Board held that "[b]ecause CVC does not direct us to specific evidence that Dr. Lin was present in the Zhang laboratory when Dr. Zhang allegedly learned of the 'single guide RNA'" there was insufficient basis for believing that "his testimony on the circumstances surrounding Zhang's first awareness of a single-guide RNA in a CRISPR-Cas9 system would be productive" (based on facts asserted by Broad in opposition to CVC's motion).  And as with the Board's treatment of Dr. Marraffini's putative testimony of Dr. Zhang's purported failures to reduce to practice single guide RNA mediated CRISPR in eukaryotic cells, the Board did not appreciate sufficient relevance in failure for it to grant the motion.  The Board's Order states that "CVC fails to direct us to a sufficient basis why Dr. Lin's testimony about his involvement with Zhang's experiments, the circumstances surrounding Dr. Zhang's first awareness of single-guide RNA, alleged failures in reducing a CRISPR-Cas9 system to practice before learning of the CVC inventors' work or communications between Drs. Lin and Zhang would be productive," particularly in view of the "delay and expense" involved in compelling Dr. Lin's testimony contrary to the Board's mandate to seek a "just, speedy, and inexpensive resolution" to matters before it.  Accordingly, CVC's request for leave to subpoena Dr. Lin was denied by the Board.

Regarding Broad's request in its motion for cross-examination, the Board found no justification for Broad's request for "equal time" with CVC, and thus granted CVC leave to depose Dr Marraffini for up to six hours and Broad one hour of cross-examination.

Finally, the Board granted an extension of the remaining schedule in the interference of one month to accommodate the parties in seeking and taking Dr. Marraffini's deposition.  The resulting schedule for the remainder of the interference was set forth as follows (Time Periods 11 and 12 having already expired):

TIME PERIOD 13 .........................................................26 March 2021
File oppositions to all motions

TIME PERIOD 14 .............................................................6 May 2021
File all replies

TIME PERIOD 15 ............................................................19 May 2021
File request for oral argument
File list of issues to be considered
File motions to exclude
File observations

TIME PERIOD 16 ............................................................31 May 2021
File oppositions to motions to exclude
File response to observations

TIME PERIOD 17 .............................................................7 June 2021
File replies to oppositions to motions to exclude

ORAL ARGUMENT DATE (if ordered) ...............................................TBD