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Filed: May 11, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
THE BROAD INSTITUTE, INC., MASSACHUSETTS INSTITUTE
OF TECHNOLOGY, and PRESIDENT AND FELLOWS
OF HARVARD COLLEGE,
(Patents 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356;
8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641
and Application 14/704,551),
Junior Party,
v.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, UNIVERSITY
OF VIENNA, AND EMMANUELLE CHARPENTIER
(Application 13/842,859),
Senior Party.
Patent Interference No. 106,048 (DK)

ORDER
37 C.F.R. 41.104(a)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and

DEBORAH KATZ, Administrative Patent Judges.
Per curiam.
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A conference call was held on 6 May 2016 at approximately 10:30 a.m. at

the parties request. Steven Trybus and Paul Margolis, represented Junior Party

Broad Institute, Inc., Massachusetts Institute of Technology, and President and

Fellows of Harvard College (Broad). Todd Walters, Erin Dunston, Travis Bill,

Li-Hsien Rin-Laures, and Sandip Patel represented Senior Party the Regents of the

University of California, University of Vienna, and Emmanuelle Charpentier

(UC). Administrative Patent Judges Richard Schafer and Deborah Katz were

present for the Board. A court reported transcribed the conference. (See

Transcript, Paper 45.)

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Junior Party Broad requested that the requirements of Standing Order

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(SO) 154.2.1 be waived so that the parties may file exhibits numbered in

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groups by type (patent specification, prior application specifications, etc.), rather

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than numbered consecutively as they are cited in a brief. Broads request is

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granted and it is ORDERED that the parties may number their exhibits in the

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manner that is the most practical and most logical, subject to the requirement that

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Broad will use exhibit numbers 1001-1999 and UC will use 2001-2999.

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Broad also requested that any requirement to file exhibits directly through

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the Interference Web Portal be waived because there will likely be several exhibits

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larger than 25 MB. It is ORDERED that the requirements for initial filing through

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the portal are waived. The parties should contact the Board administration to

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arrange for alternative means of timely filing papers. (See Order Authorizing

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Motions, Paper 33, at 17:6-10.) To be considered, all papers relied upon must be

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available on the Interference Web Portal.

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Broad also requested that because of the large number of claims involved in
the interference, the requirement for claim charts in its motions be waived. It is
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ORDERED that the requirement of claim charts, for example in 37 C.F.R.

41.121(e), is waived. Where necessary, the parties may provide claim charts for

representative claims and refer to other claims in the argument section of a brief.

Claim charts do not count towards page limits, but any argument presented only in

a claim chart will not be considered.

Both parties requested an extension of the page limits for their briefs

because they have not been able to draft briefs within 25 pages. Broad requested

five extra pages each for its Substantive Motion 2, to argue for no interference-in-

fact, its Substantive Motion 4, to argue that UCs claims are unpatentable under

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35 U.S.C. 112, first paragraph, and its Substantive Motion 5 to argue that some

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of its involved claims do not correspond to the count. Broad requests 10 extra

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pages for its Substantive Motion 3, to argue for the benefit of its prior applications

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as constructive reductions to practice of the count.

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UC requests 95 extra pages for its Substantive Motion 1, to argue for

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substitution of the count. UC explained that it will argue for the substitution of

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Count 1 with two counts and for the addition of a claim from its application

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14/685,502 to the interference as corresponding to one of these proposed counts.

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According to UC, arguments for the patentability of this new claim, plus a proffer

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of new proofs to the proposed counts will make the number of extra pages

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necessary.

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UC was previously authorized to file one motion proposing that Count 1 be

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substituted with one count believed to best describe the parties interfering subject

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matter and set the scope of admissible proofs in a way that is just to both parties.

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(Order Authorizing Motions and Setting Times, Paper 33, at 10:15-19.) UC was

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authorized, alternatively, to propose two counts if both are necessary to describe

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the interfering subject matter of two separately patentable inventions. (Id. at

10:17-19.)

UC has never been authorized in this interference to file a motion seeking to

add a claim. Instead, UC was denied authorization for its Proposed Motion 5,

seeking to cancel its claims and add a claim that corresponds to the Count. (See

Senior Party Miscellaneous Motion 2, Paper 39, 13:8-10.) Authorization was

expressly denied on rehearing because it was not clear why such a motion was

necessary. (See Decision on Request for Rehearing of Order Authorizing Motions,

Paper 42, at 7:7-8.)

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During the conference, UC also argued that it had proposed a motion

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seeking to add a claim to the interference when it requested authorization for

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motions to change the count. (Senior Party List of Proposed Motions, Paper 27, at

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11:7-9: Should Senior Party be permitted to file proposed Motion 3, Senior Party

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intends to request the addition of a claim that would correspond to Proposed

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Count 3. See Standing Order, 208.2..) UC was not authorized to file its

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Proposed Motion 3, but instead to file one motion to substitute the count.

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We did not authorize a motion for UC to add a claim because UC suggested

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this proceeding based on its assertion that its current claims interfere with all of the

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claims of Broads involved patents. UC apparently still considers its claims to

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interfere with Broads claims because it indicated it will oppose Broads motion

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for no interference-in-fact. We understand that UC believes the interference was

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declared with an improper count. (See Senior Party Miscellaneous Motion 2,

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Paper 39, at 13:12-14.) Accordingly, UC is authorized to argue for substitution of

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the current count in its Substantive Motion 1. UC is free to argue that the count it

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originally proposed, or any other count, consistent with the claims of the involved
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applications and patents, is the correct count. Because UC considers all of the

parties current claims to interfere, it is not clear why UCs definition of the

interfering subject matter for a priority determination requires the addition of any

new claims.

UC notes that the Standing Order contemplates moving to add a claim as

contingent on a motion to substitute a count where none of the parties claims

correspond to the proposed count. (See SO 208.2.) But UC was not authorized

to file such a motion. Under the facts and circumstances of this interference,

where UC believes all of its current claims interfere with all of Broads claims,

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there is no reason why UC should need to add a new claim. If UCs claims in

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other applications are ultimately found to be allowable, UC may suggest additional

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interferences to the examiner. At this point in the proceeding, though, a

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determination of priority may proceed on the subject matter commonly and

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currently claimed by the parties. A priority determination does not require the

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addition of any other claims.

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Furthermore, it is unclear why it would be fair to Broad to allow UC to add a

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claim. The claim UC seeks to add is currently being examined.1 Thus, allowing

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UC to move to add a claim would effectively subject Broad to the burden of

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completing examination of that claim as well.2

During the conference call counsel for UC indicated that application 14/685,502
had not been examined. On the same day, 6 May 2016, a non-final office action
was entered rejecting all of the pending claims.
2

We note that UC has not indicated to the Board what claim it would add to the
interference and whether this claim is broader or narrower than UCs current
claims.
5

We emphasize again, that UC is not authorized to request the addition of a

claim to its involved application. UC is only authorized, in its Substantive

Motion 1, for the substitution of the current Count 1 with one count that UC will

argue best describes the interfering subject matter and sets the scope of admissible

proofs in a way that is just to both parties. If UC believes two counts are necessary

to describe the interfering subject matter of two separately patentable inventions

currently claimed by both parties in the currently involved patents and

applications, UC may propose two separately patentable counts. UC may not

propose two counts that are alternate to each other.

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Because UC is not authorized to argue to add a claim to the interference, we

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are not persuaded that UC requires 95 extra pages as it requested for this argument.

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UC also requests 75 extra pages for its Substantive Motion 2 to argue for the

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benefit of the filing date of a prior application as a constructive reduction to

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practice of the count. During the conference, UC indicated it would argue in this

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motion for the benefit of three provisional applications as to the current Count 1

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and also as to each of its two proposed counts. Arguments for the benefit of prior

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applications in regard to a proposed substitute count should be addressed in the

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motion proposing the substitute count, that is, UCs Substantive Motion 1. (See

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SO 208.2.) The proposed counts need not be addressed in UCs Substantive

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Motion 2. Accordingly, we are not persuaded that UC requires 75 extra pages for

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is Substantive Motion 2.

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In light of the parties requests in general, we extend the page limits for the

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briefs currently authorized in this phase of the interference. It is ORDERED that

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the requirements of SO 121.2, 122.2.1, and 122.2.2 are waived and the

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following total page limits are set:

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Motions 40 pages

Oppositions 40 pages

Replies 16 pages.

No other pages limits are changed at this time and no additional motions are

authorized.

In addition, due to the delay in scheduling the conference call regarding

these issues, it is ORDERED that the schedule is changed according to the attached

Appendix.3 Specifically, TIME PERIOD 7 is extended to 28 October 2016. No

other due dates are changed at this time.

The Appendix reflects the Stipulation to Extend tiem Periods 1-4, filed
9 May 2016 (Paper 46).
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Attorneys for Junior Party Broad Institute:

Steven R. Trybus
Harry J. Roper
JENNER & BLOCK LLP
strybus@jenner.com
hroper@jenner.com

Attorneys for Senior Party University of California, et al.:

Todd R. Walters
Erin M. Dunston
Travis W. Bliss
BUCHANAN, INGERSOLL & ROONEY PC
todd.walters@bipc.com
erin.dunston@bipc.com
travis.bliss@bipc.com
Li-Hsien Rin-Laures
Sandip H. Patel
Greta Noland
MARSHALL GERSTEIN & BORUN LLP
lrinlaures@marshallip.com
spatel@marshallip.com
gnoland@marshallip.com

APPENDIX--ORDER - RULE 123(a)

(Times for substantive motions; priority deferred)
Interference 106,048

TIME PERIOD 1 ................................................................................. 18 May 2016

File motions
File (but serve one business day later) priority statements
TIME PERIOD 2 ................................................................................. 8 June 2016
File responsive motions to motions filed in TIME PERIOD 1
TIME PERIOD 3 .................................................................................. 20 July 2016
File oppositions to all motions
TIME PERIOD 4 ............................................................................. 31 August 2016
File all replies
TIME PERIOD 5 ....................................................................... 16 September 2016
File request for oral argument
File motions to exclude
File observations
TIME PERIOD 6 ........................................................................... 7 October 2016
File oppositions to motions to exclude
File response to observations
TIME PERIOD 7 ........................................................................... 28 October 2016
File replies to oppositions to motions to exclude
DEFAULT ORAL ARGUMENT DATE .......................................................... TBD
Default oral argument date (if ordered)