REGENTS OF THE UNIVERSITY OF CALIFORNIA, UNIVERSITY OF VIENNA, EMMANUELLE CHARPENTIER, Appellants
BROAD INSTITUTE, INC., MASSACHUSETTS INSTITUTE OF TECHNOLOGY, PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Appellees
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 106, 048.
B. Verrilli, Jr., Munger, Tolles & Olson LLP, Washington,
DC, argued for appellants. Appellants Regents of the
University of California, University of Vienna also
represented by Ginger Anders; Edward George Dane, Adam R.
Lawton, Los Angeles, CA.
Raymond N. Nimrod, Quinn Emanuel Urquhart & Sullivan,
LLP, New York, NY, argued for appellees. Also represented by
Matthew D. Robson; Steven R. Trybus, Harry J. Roper, Jenner
& Block LLP, Chicago, IL.
Li-Hsien Rin-Laures, RinLaures LLC, Chicago, IL, for
appellant Emmanuelle Charpentier. Also represented by Sandip
Patel, Marshall, Gerstein & Borun LLP, Chicago, IL.
Prost, Chief Judge, Schall and Moore, Circuit Judges.
University of California, the University of Vienna, and
Emmanuelle Charpentier, (collectively "UC"), appeal
a decision of the Patent Trial and Appeal Board determining
there was no interference-in-fact between UC's
Application No. 13/842, 859, and the claims of twelve patents
and one application owned by the Broad Institute, Inc.,
Massachusetts Institute of Technology, and the President and
Fellows of Harvard College, (collectively "Broad").
Because the Board's underlying factual findings are
supported by substantial evidence and the Board did not err
in concluding that Broad's claims would not have been
obvious over UC's claims, we affirm.
involved claims relate to the use of a
CRISPR-Cas9 system for the targeted cutting of DNA
molecules. The system includes three components: (1) a
"crRNA"; (2) a "tracrRNA"; and (3) the
Cas9 protein. J.A. 4803. The crRNA is an RNA molecule with a
variable portion that targets a particular DNA sequence. J.A.
4799-803. The nucleotides that make up the variable portion
complement the target sequence in the DNA and hybridize with
the target DNA. J.A. 4801. Another portion of the crRNA
consists of nucleotides that complement and bind to a portion
of the tracrRNA. J.A. 4801. The Cas9 protein interacts with
the crRNA and tracrRNA and cuts both strands of DNA at the
target location. J.A. 4799.
August 2012, UC researchers published an article ("Jinek
2012") demonstrating that the isolated elements of the
CRISPR-Cas9 system could be used in vitro in a non-cellular
experimental environment. J.A. 4799-804. In February 2013,
Broad researchers published an article describing the use of
CRISPR-Cas9 in a human cell line. J.A. 4682-86. Both parties
sought patent protection. CRISPR-Cas systems occur naturally
in prokaryotes such as bacteria, J.A. 4799, but have not been
found to naturally exist in eukaryotes, such as plants and
animals, J.A. 5488; see also J.A. 5006, 5029. It is
undisputed that the Jinek 2012 article did not report the
results of experiments using CRISPR-Cas9 in a eukaryotic
cell, and the claims in UC's '859 application do not
refer to a particular cell type or environment. J.A. 13,
9665-66. Claim 165 of the '859 application is
165. A method of cleaving a nucleic acid comprising
contacting a target DNA molecule having a target sequence
with an engineered and/or non-naturally-occurring Type II
Clustered Regularly Interspaced Short Palindromic Repeats
(CRISPR)- CRISPR associated (Cas) (CRISPR-Cas) system
a) a Cas9 protein; and
b) a single molecule DNA-targeting RNA comprising
i) a targeter-RNA that hybridizes with the target sequence,
ii) an activator-RNA that hybridizes with the targeter-RNA to
form a double-stranded RNA duplex of a protein-binding
wherein the activator-RNA and the targeter-RNA are covalently
linked to one another with ...