Federal Court hands broad institute victory in CRISPR patent fight against UC Berkeley

The United States Court of Appeals for the Federal Circuit issued a ruling upholding a judgement from the Patent Trial and Appeal Board (PTAB) which gave the Broad Institute and its partners control of key CRISPR genome editing patents and left the University of California and its co-litigants in the cold.

In January 2017, the US Patent and Trademark Office declared an interference proceeding to settle certain claims related to the CRISPR patent battle between parties led by the Broad and UC. In the interference proceedings, the USPTO said it would collect, consider, and compare historical documentary evidence to establish invention dates. Because the applications were filed before the US moved to a “first to file” patent system in 2013, the patent rights would be granted under the old “first to invent” system.

In February, however, the three-judge panel from the PTAB hearing the interference case issued a judgement of no interference-in-fact, stopping UC’s bid for the IP, and leaving the Broad to control the key IP estate for companies pursuing targeted genome editing applications in several areas, especially gene therapy, drug discovery and development, and ag-bio, which rely on editing in eukaryotic cells.

UC filed an appeal in April, asserting that the PTAB’s decision that the use of CRISPR-Cas9 in eukaryotes is separately patentable as alleged by the Broad was based on several errors; that the decision went against US Supreme Court precedent; that the PTAB applied “a narrow and restrictive approach that ignored certain key evidence;” and that correctly applying legal standards to the case would require a reversal of the PTAB’s decision.

The Broad filed its own brief in October in response to UC’s appeal, saying that it aimed to continue fighting, and further claiming that UC didn’t provide “substantial evidence” to support its findings that the PTAB had made a material legal error, or that the PTAB failed to consider certain evidence when it closed the interference case. The Broad’s brief also claimed that UC was incorrect in claiming that the PTAB had made three legal errors in its decision, and that in fact the PTAB had reviewed all evidence that UC claimed it ignored.