ISTOCK, MICHAEL CHODYRA
Lawyers for the Broad Institute of MIT and Harvard and the University of California, Berkeley, traded oral arguments in the US Court of Appeals for the Federal Circuit in Washington on Monday (April 30). It is the latest round litigation of an ongoing patent dispute. The Broad Institute holds patents on the gene editing technology known as CRISPR, and attorneys for UC Berkeley have been challenging the claim for more than a year.
“UC came into this argument from a tough spot, and I doubt that oral arguments from either side moved the needle much,” patent attorney Michael Stramiello tells STAT.
UC Berkeley filed a patent application based on its work with CRISPR in May 2012, and the Broad Institute followed suit in December of that year. In April 2014, the Broad Institute was granted the first of several patents for its use of CRISPR, and attorneys for UC Berkeley quickly contested it with the US Patent and Trademark Office. The Patent Trial and Appeal Board (PTAB) ruled in favor of the Broad Institute in February 2017, saying its patents present “no interference of fact,” meaning they are sufficiently distinct from those applied for by UC Berkeley that they should not be overturned.
On Monday, lawyers for UC Berkeley argued that the PTAB made a “legal error” in that ruling. They argued that the appeals court should either reverse the board’s decision or send it back to the PTAB for further consideration.
According to Reuters, one of the three judges hearing the case says she will probably side with the PTAB and uphold its ruling. The two others did not indicate how they would rule.
In a statement issued Monday, UC general counsel and vice president for legal affairs Charles Robinson says, “[w]e presented compelling arguments today that the PTAB committed several legal errors, including disregarding Supreme Court and Federal Circuit precedent. Based on the questioning today, we are optimistic that the court has serious doubts about several aspects of the PTAB’s decision.”
Jacob Sherkow, a visiting scholar at Stanford Law School in Palo Alto, California, who was not involved in the case, thought otherwise. He tells Science that “UC did the best they could with the cards they were dealt, but it’s still not looking great for [them].”