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UNITED STATES PATENT AND TRADEMARK OFFICE

_____________________

2
BEFORE THE PATENT TRIAL AND APPEAL BOARD
3
_____________________
4
5
6
7

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; and 8,999,641

8
Junior Party,
9
v.
10
11

THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,

UNIVERSITY OF VIENNA, AND EMMANUELLE CHARPENTIER,
Application 13/842,859,

12
Senior Party.
13
_____________________
14
15
16

Patent Interference No. 106,048(DK)

______________________

17
18

Initial Teleconference Call

March 10, 2016
1:04 p.m.
______________________

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20
21
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BEFORE:
23
24

Deborah Katz, Administrative Patent Judge,

Judge Lane and Judge Schafer

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APPEARANCES:
Counsel for Junior Party:
Jenner & Block
by Steven Trybus, Esquire
by Paul Margolis, Esquire
by Harold Roper, Esquire
353 N. Clark Street
Chicago, Illinois 60654-3456
(312) 923-8307
strybus@jenner.com
pmargolis@jenner.com
hroper@jenner.com

8
- and 9
10
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12
13
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15
16
17
18

Sunstein, Kann, Murphy & Timbers, LLP

by Lawrence M. Green, Esquire
by Elizabeth N. Spar, Ph.D., Esquire
by Timothy M. Murphy, Esquire
125 Summer Street
Boston, Massachusetts 02110-1618
(617) 443-9292
lgreen@sunsteinlaw.com
espar@sunsteinlaw.com
tmurphy@sunsteinlaw.com
- and Rothwell Figg
by R. Danny Huntington, Esquire
607 14th Street, N.W. Suite 800
Washington, District of Columbia 20005
(202) 783-6040
dhuntington@rfem.com

19
- and 20
21
22
23
24

Greenblum & Bernstein, P.L.C.

by Jill M. Browning, Esquire
1950 Roland Clarke Place
Reston, Virginia 20191-1411
(703) 716-1191
jbrowning@gbpatent.com
(continued)
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APPEARANCES (continued):
Counsel for Senior Party:
Buchanan, Ingersoll & Rooney, PC
by Todd R. Walters, Esquire
by Erin M. Dunston, Esquire
by Travis W. Bliss, Esquire
1737 King Street, Suite 500
Alexandria, VA 22314-2727
(703) 836-6620
todd.walters@bipc.com
erin.dunston@bipc.com
travis.bliss@bipc.com

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- and 9
10
11
12

Goodwin Procter, LLP

by Brian A. Fairchild, Ph.D., Esquire
Exchange Place
53 State Street
Boston, Massachusetts 02109
(617) 570-1000
bfairchild@goodwinprocter.com

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P R O C E E D I N G S

1:04 p.m.

3
4

(Conference call proceeded as follows:

THE COURT:

I have Judge Schafer and Judge Lane with me.

7
8

Hi, this is Deborah Katz, and

Who do I have on the call for Junior

Party, for Broad?

MR. TRYBUS:

Good afternoon, your Honors.

10

For the party Broad, you have lead counsel Steve

11

Trybus from Jenner & Block.

12

back-up counsel Harry Roper, also from Jenner &

13

Block; and with me here present is in addition from

14

Jenner & Block, a partner Paul Margolis, and also

15

present in the room with me is Danny Huntington from

16

the Rothwell Figg firm; Jill Browning, from

17

Greenblum & Bernstein; and from the Sunstein Law

18

Firm, Elizabeth Spar, Timothy Murphy, and Lawrence

19

Green.

20

THE COURT:

Okay.

21

lost you at Jill Browning.

22

spell the last name.

23

MR. TRYBUS:

24

THE COURT:

Also on the phone is

Let me get -- I think I

Elizabeth -- can you

Elizabeth Spar, S-P-A-R.

Okay.

And --

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MR. TRYBUS:

THE COURT:

MR. TRYBUS:

THE COURT:

MR. TRYBUS:

THE COURT:

MR. TRYBUS:

10

M-U-R-P-H-Y?

Yes.
And Lawrence Green you said?
Yes.

Correct.

And then?
And that's everyone on our

Honor.
THE COURT:

Right.

Thank you.

Green was

spelled how?

13

MR. TRYBUS:

14

THE COURT:

15

Okay.

side, and there is a court reporter also, your

11
12

And

Lawrence Green.

And Timothy Murphy.

G-R-E-E-N.
Okay.

And Browning was spelled

as it sounds, Browning?

16

MR. TRYBUS:

17

THE COURT:

Yes.
Okay.

All right.

And can

18

you -- and for the Senior Party, who's on the line,

19

please?

20

MR. WALTERS:

Your Honor, this is Todd

21

Walters.

I have on the phone my colleagues Erin

22

Dunston and Travis Bliss from the Buchanan Ingersoll

23

& Rooney firm, and we also have here with us Brian

24

Fairchild from the Goodwin Procter firm.

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THE COURT:

Okay.

Thank you.

And is that all on the call?

Is there

anybody else on the call who wants to identify

themselves?

MR. TRYBUS:

Not from our side.

THE COURT:

Okay.

All right.

So in terms of -- I'll just

Thank you.

because I always forget this at the end, the

transcript of the call, could that be filed by

10

Monday?

11

MR. TRYBUS:

12

THE COURT:

13

Hi.

Yes.
Okay.

Thank you very much.

So we have read -- we're here for the

14

initial conference call.

15

parties' proposed motions list, and we have reviewed

16

them, and we will take them under consideration.

17

We have received both

An order will go out with determinations

18

of which motions are authorized and other issues.

19

think this is -- our time is best used by getting to

20

some questions about the motions, which we will get

21

to in a moment.

22

I wanted to also put some things up front,

23

so that we don't forget about them later.

I would

24

like to have the statement of material facts in the

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brief; so that requirement is not waived.

that helpful.

also.

I find

They do count towards the page limit

Claim charts, where they are appropriate,

are also good if they don't count towards the page

limits.

And then just to put up front, we are not

going to generically extend the page limits this

time.

If you find when you are briefing that you

10

are having trouble meeting the page limit for a

11

specific reason, please feel free to come ask us for

12

an extension at that time and be able to support why

13

you need the extra pages.

14

Okay.

I may also to get through the

15

schedule, we did receive the order -- we did receive

16

your proposed schedule.

17

in the order authorizing the motions and setting the

18

times.

19

shorter, so that we can stay within the two-year

20

time.

21

if we do authorize a hearing, that may be in mid

22

November, are there any times that counsel has

23

trouble in mid November, wants to tell us up front

24

before we block out some dates?

A schedule will be put out

To be honest, it looks like it will be

So I just wanted to ask if a hearing is held,

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I guess, Junior Party, is there anything

that you know of at this time?

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MR. TRYBUS:

Let me look for one moment,

your Honor.

(Pause.)

MR. TRYBUS:

I have a commitment, your

Honor, on the 11th of November; but other than that,

it seems like I don't have any conflict for mid

November.

10

THE COURT:

Okay.

And for Senior Party,

11

and this is only that you know of right now.

12

know, if something ...

13

MR. WALTERS:

You

Your Honor, this is Todd

14

Walters.

15

moment, but certainly would want to talk with our

16

client and make sure that there's no problem there.

17

I don't know of an issue right at the

THE COURT:

Okay.

All right.

Once the

18

date and -- the call date, once those come out and

19

as soon as anybody knows of any problem, that would

20

be good.

21

Okay.

I also wanted to ask if there has

22

been any attempt at settlement at this point?

23

guess, Mr. Trybus, is there ...

24

MR. TRYBUS:

There has not been, your

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Honor.

We're under the understanding that Senior

Party would initiate such if they were interested in

it, but we have not had that opportunity one way or

the other to discuss settlement.

5
6

THE COURT:

Okay.

And, Mr. Walters, is

that ...

MR. WALTERS:

That's my understanding is

there has not been any formal discussions between

the parties.

10
11

THE COURT:

Okay.

All right.

And you

know that that's on the schedule too, so.

12

Okay.

All right.

So now if we turn to

13

the proposed motions list, would the Junior Party

14

first, the proposed Motion 47.

15

authorization for motion to argue that there's lack

16

of written description.

17

So this is the

Is this -- Mr. Trybus, is this a

18

thresh -- you've characterized this as a threshold

19

motion or.

20

MR. TRYBUS:

Yes, your Honor.

We believe

21

that this is a threshold motion.

It goes to all

22

of the claims that Senior Party has in the

23

interference; and, therefore, we believe it qualifies

24

on that basis.

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THE COURT:

Okay.

Mr. Walters, do you

agree that that would be a threshold issue?

MR. WALTERS:

Your Honor, I don't think it

would resolve all of the issues because if there is

something that the Junior Party would identify in

terms of 112 issues, we certainly would request the

filing of a responsive motion.

THE COURT:

And does that -- is

that defining a threshold motion?

10

MR. WALTERS:

11

THE COURT:

12

Okay.

Pardon?
If you file a responsive motion,

does that mean whether it's threshold or not?

13

MR. WALTERS:

Well, in my mind, if a

14

motion is filed that wouldn't ultimately resolve all

15

of the issues in the interference, then it would not

16

be a threshold motion.

17

responsive motion to an attack of patentability,

18

then that attack of patentability wouldn't resolve

19

all the issues, if, for example, we presented a

20

claim that would address the patentability attack.

21

THE COURT:

In here if we would file a

But ultimately if that claim

22

is found to not have any description support, then

23

would that resolve all of the issues?

24

what's that to -- I mean, in that same proceeding,

I guess

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the responsive motion's just part of the threshold

issue?

MR. WALTERS:

I think the way that it

would work would be that the motion was filed, and

then a responsive motion would be filed in response

to the motion.

the patentability attack wouldn't be threshold,

because it would not resolve all of the issues.

So the first motion that is filed on

But, I guess, your Honor, you could say if

10

you dealt with all of the motions together, that all

11

of the motions together could decide ultimately the

12

outcome of the interference.

13

THE COURT:

Okay.

All right.

14

I think that gives us some sense.

15

under consideration.

16

All right.

All right.

We'll take that

So, Mr. Trybus, for your

17

proposed Motion 48, are the limitations that you are

18

arguing a motion for lack of enablement, are those

19

limitations in -- we didn't know which claims are

20

they in?

21

Senior Party's independent claims or just the

22

dependent claims?

23
24

Are those in the independent claims,

MR. TRYBUS:

They are in the independent

claims, your Honor, and more specifically, I could

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say that the limitations that we set forth in

subparagraph A of 48 go to all of the involved

claims.

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5

THE COURT:

Okay.

All right.

Mr. Walters,

do you agree with that?

MR. WALTERS:

Well, we don't agree with

any of the suggestions that there was a lack of

enablement.

THE COURT:

Right.

Right.

But do you

10

agree that the limitations are in the independent

11

claims?

12

MR. WALTERS:

I'm not exactly sure what

13

exactly they're going to argue, your Honor; so I

14

don't want to say anything in a blanket way, but

15

some of these limitations are in independent claims.

16
17

THE COURT:

Okay.

All right.

Thank you for the assistance.

18
19

Okay.

All right.
and 56.

Moving on to proposed Motion 51

This is Senior Party's designated --

20

THE COURT REPORTER:

Excuse me.

I'm

21

sorry.

Your Honor, I'm having a hard time hearing

22

you.

23

you can push your phone a little closer, if that's

24

possible.

This is the court reporter.

I don't know if

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THE COURT:

I'll try to move

closer.

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4

Okay.

THE COURT REPORTER:

That's perfect.

Thank you.

THE COURT:

Okay.

Sorry.

All right.

So

now we're moving on to proposed Motion 51 and 56,

which is for a designation that some of the claims

do not correspond to Count 1.

Mr. Walters, are there any claims that you

10

agree -- any of Broad's claims that you agree do not

11

correspond to Count 1?

12

MR. WALTERS:

13

THE COURT:

14

right.

15

that?

No, your Honor.

Okay.

Okay.

All right.

All

I think -- are there any other questions on

16

All right.

Then if we move on to UC's

17

proposed list, Mr. Walters, do you -- you

18

characterized your proposed Motion 2 as a threshold

19

defense.

20

patentability over the prior art.

21

threshold motion?

22

It looks like it's a motion for

MR. WALTERS:

Why is this a

So, your Honor, unlike the

23

written description motion that we talked about

24

earlier, the motion that we have proposed here is

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based upon the way the interference is set up, and

the interference was set up such that the Junior

Party was not given benefit to an application prior

to March 16 of 2013, and all of its claims are

designated to correspond to the count in the

interference.

Senior Party's application was given the

benefit of -- or there is an application filed prior

to March 16 of 2013; so the way this interference is

10

set up right now, there's a presumption that all of

11

Junior Party's claims are unpatentable over Senior

12

Party's application, and Senior Party should not be

13

entitled to swear behind -- I'm sorry -- the Junior

14

Party should not be entitled to swear behind the

15

Senior Party's application, because in each of the

16

patents, each of Junior Party's patents involved in

17

this interference, they have a claim that was in

18

their application; and many of the claims have ended

19

up in the issued patents that do not have support to

20

an application pre-March 16, 2013.

21

Because they have these claims, and we've

22

identified several dozen limitations throughout the

23

12 patents, we believe that each of their claims are

24

presumptively unpatentable because they would not be

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able to swear behind our application.

Each of their claims are designated to

correspond to the count, and this is an issue that

you cannot fix once you have presented that claim in

your application.

That's why we consider this a threshold

issue.

cannot be fixed by an amendment to the patent,

because once you taint the application that results

10

It's based on written description.

It

in the patent, you are stuck in AIA prior art world.

11

THE COURT:

So, well, first of all, the

12

declaration of the interference is a beginning of

13

the interference; so I'm not exactly sure why what

14

you're saying is the presumption creates anything

15

more than what would have to be proven during the

16

interference.

17

So the fact that there was or was not

18

benefit afforded, how does that create a threshold

19

motion?

20

I'm -- I'm ...

MR. WALTERS:

I'm just pointing out, your

21

Honor, that as of right now where the interference

22

sits, they, Junior Party has not been afforded the

23

benefit of anything prior to March 16 of 2013.

24

We also believe that each of their

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applications that resulted in those patents is

subject to AIA prior art provisions, which means they

cannot swear behind the Senior Party's application.

THE COURT:

Right.

Okay.

So but if in

the end, this comes down to whether the claims are

patentable over the prior art, is that a threshold

issue?

8
9

MR. WALTERS:

In this particular case,

yes, because all of their claims are unpatentable,

10

and patentability is something that you should have

11

in order to proceed with the interference.

12

have no patentable claim, they shouldn't be allowed

13

to proceed forward with the interference.

14

THE COURT:

But -- okay.

If they

Could there

15

still be a question of priority even if the other

16

party, whether the other party invented first,

17

whether or not the first party has a patentable

18

claim or the other -- the one party has patentable

19

claims or not?

20

MR. WALTERS:

Your Honor, in order to move

21

forward with the interference, we believe that they

22

need to have a patentable claim.

23

prerequisite to get into the interference in the

24

first place, but we don't believe that they should

Patentability is a

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have been allowed to indicate to the Patent Office

that they were a pre-AIA application when, in fact,

when they filed the majority of their ADS sheets

with the Patent Office, they specifically indicated

that they were a transitional application subject to

AIA provisions.

For this reason, it would be really unfair

to not allow us to file that particular motion when

it was Junior Party who indicated to the Patent

10

Office that initially they were a post-AIA

11

application, meaning subject to AIA provisions, but

12

then subsequently changed their position on that

13

before they then did a swear-behind declaration to

14

get in front of our filing date.

15

clear interference issue dealing with patentability,

16

no different than written description.

17
18

THE COURT:

Okay.

This seems like a

I guess, Mr. Trybus, do

you want to ...

19

MR. TRYBUS:

Yes, your Honor.

We do not

20

believe that this is a threshold issue.

We believe

21

that this is patentability over prior art motion

22

pure and simple and does not need to be taken up

23

now.

24

Party with regard to the underlying facts, but we'll

Say, obviously we disagree with the Senior

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not argue those; but we do believe that the statute

would provide as, I think one of your Honor's

questions got to, that even if -- and we don't

believe our claims are unpatentable, but even if the

claims were unpatentable as set forth here, that

there would still be, under the statutory provisions,

the ability for the interference or even the

requirement that the interference go forward with

our ability to show priority.

10

THE COURT:

Okay.

All right.

I think we

11

see what the issues are in authorizing or not the

12

motion.

13

All right.

I think the third -- all

14

right.

I think those were the questions that we had

15

about the proposed motions list.

16

I guess I'd ask Junior Party if there's

17

anything other than the specific, you know, what

18

you've written in the proposed motions list -- we

19

don't want to go through each one -- but are there

20

other things that you want to bring up at this

21

initial conference?

22

MR. TRYBUS:

Yes, your Honor, I do have

23

one thing that I do want to bring up, and it concerns

24

Senior Party's motion with regard -- Motion 11 with

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regard to inequitable conduct.

We strenuously deny all of the underlying

allegations; but more than that, your Honors, we

believe that the allegations made, they're unfounded

and that they also do not provide adequate basis for

the motion.

not comply with paragraph 208.7 of the standing

order, and we believe and request that the Board

strike that from the record, and/or require the

We believe that this allegation does

10

Senior Party to file a proper list that does not

11

include these allegations.

12

been picked up in the press to the harm of Junior

13

Party, and because these allegations not only have

14

no basis, but we believe are contrary to the Board's

15

rules and standing order, we would ask for that

16

relief.

17
18

THE COURT:

Okay.

These allegations have

All right.

We will

look at that.

19

MR. WALTERS:

20

THE COURT:

21

MR. WALTERS:

Your Honor, may I respond?

Very briefly.
I just -- first of all, the

22

motion that we're referring to is a motion addressing

23

inequitable conduct, and I want to let your Honors

24

know that we're certainly loath to put this on our

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motions list.

We recognize that your Honors may defer

such an issue to later in the interference.

an issue that I personally don't believe I've ever

put on a motions list before.

reviewing the evidence in this particular case and

consulting with the clients in this particular case,

we felt it necessary to put it in the motions list,

so that we could preserve our ability to file that

10

This is

However, after

motion and preserve the record.

11

We believe that the standing order indicates

12

that you have to put your proofs in with your motion,

13

not your motions list; and it's unfortunate that

14

this is an issue that is in a motions list, but we

15

felt we had to -- we had to preserve our rights

16

here.

17

THE COURT:

18

MR. TRYBUS:

19

Okay.
And, your Honor, if I could

briefly just make one last comment.

20

THE COURT:

21

MR. TRYBUS:

Go ahead.
We believe that, at least in

22

part, one of the things that is wrong with the list,

23

as filed, is that there's no even proper allegation

24

with regard to intent, and there's also not an

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allegation on but-for materiality as well.

Thank you.

THE COURT:

MR. WALTERS:

have to respond again.

THE COURT:

MR. WALTERS:

Okay.
Your Honor, I feel like I

Go ahead.
As Therasense indicates, the

En Banc decision, intent can come from circumstantial

evidence, and in situations where a party has

10

misrepresented facts to the Patent Office, the

11

but-for-materiality test is accepted in those

12

situations, as we understand the reading of

13

Therasense.

14

Your Honor, we also had a couple of

15

miscellaneous issues in our motions list that we'd

16

like to touch upon briefly.

17

THE COURT:

All right.

Well, Junior --

18

Mr. Trybus, are you -- is that the only thing that

19

you wanted to bring up?

20
21

MR. TRYBUS:

I don't

think we have anything else.

22

THE COURT:

23

MR. WALTERS:

24

Yes, your Honor.

Okay.

Mr. Walters, go ahead.

Your Honor, as you know,

Junior Party has had a number of patents issue

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already.

interference.

Many of those patents are in this

Junior Party is continuing to prosecute

additional applications, some of which we requested

to be part of the interference but ultimately were

not pulled into the interference.

We are assuming that those additional

applications were not put into the interference

because the subject matter of the claims had not

10

been yet indicated as allowable but for the

11

interference.

12

More recently, one of Junior Party's

13

applications, which is mentioned in Senior Party's

14

motions list is -- has been indicated to have

15

allowable subject matter, and a notice of allowance

16

was issued in that case.

17

We're trying to get some guidance from you

18

on how we deal with any additional applications like

19

this particular application that has been allowed

20

because we would treat that application like we

21

would treat all of the other patents that are

22

currently in the interference itself.

23
24

THE COURT:

Let me ask one thing.

Are the

issues of the -- there are already 12 patents in the

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interference.

particular application is bringing up?

Are there other issues that this

MR. WALTERS:

Well, our concern, your

Honor, is that if additional cases are being allowed,

and they'll go to issue, and we don't treat them in

this interference, then that could ultimately be

problematic, and then we have to bring about

separate proceedings on any newly issued cases;

and we want to just make sure -- we understand that

10

there's already 12 patents.

11

either, but we want to make sure that we're not

12

foreclosing any opportunity of addressing those

13

cases as if and when they issue, and we honestly

14

don't think they should have issued -- any of them

15

should issue in the first place.

16

THE COURT:

Right.

We don't like that

All right.

We will

17

take a look at the circumstances of where the

18

application is, and we will put out some guidance in

19

the orders.

20

MR. WALTERS:

All right.

I have another

21

issue, your Honor, and that is dealing with

22

responsive motions.

23

appropriate call for dealing with responsive motions

24

because we don't know what motions you're going to

And maybe this is not the

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allow the respective parties to file.

THE COURT:

MR. WALTERS:

Right.
But I want to make sure that

we reserve at least some point in time for us to

address responsive motions because the Senior Party

certainly would want an opportunity to address a no

interference in fact motion, any unpatentability

attack, or any assertion that claims should be

undesignated because any of the categories of

10

undesignation we certainly have support for

11

interfering claims, should the Junior Party convince

12

you that any of that subject matter is separately

13

patentable.

14
15

We just want to make sure we can address

all of the issues with the parties.

16

THE COURT:

All right.

Well, I think

17

there is a time for filing of responsive motions, but

18

I believe you would have to request authorization

19

before that time period.

20

MR. WALTERS:

Right?
That is correct, your Honor.

21

I just want to make sure that we put that on your

22

radar.

23
24

THE COURT:

Okay.

All right.

Okay.

Is

there anything else from either of the parties?

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MR. WALTERS:

One last issue, your Honor,

and that is on the schedule.

The parties have

discussed the schedule and the complexities of this

particular interference, and we do want to be mindful

of your desire to complete the interference in a

timely fashion, but at least Senior Party and I

think Junior Party would agree, that this is a

complex case, and it would be, I think, helpful to

the parties and the Board if the parties had

10

sufficient time to prepare and file their papers, to

11

the extent that you can give us extra time in the

12

schedule.

13
14

THE COURT:

Well, we will take that

into account.

15
16

Okay.

Okay.

I think -- is there anything else?

From Judge Lane?

17

All right.

Thank you all very much.

We

18

will have an order out shortly, and we will address

19

all the issues that you've mentioned.

20

MR. TRYBUS:

Thank you, your Honors.

21

THE COURT:

22

MR. WALTERS:

23

MR. ROPER:

24

(Conference call concluded at 1:34 p.m.)

Thank you.
Thank you, your Honors.
Thank you.

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C E R T I F I C A T E

2
3

I, Julie Thomson Riley, RDR, CRR, do

hereby certify that the foregoing transcript,

consisting of 26 pages inclusive, is a true and

accurate transcription of my stenographic notes in

the initial conference call regarding Patent

Interference No. 106,048 (DK), The Broad Institute,

Inc., et al. versus The Regents of the University of

10

California, et al., before Judge Deborah Katz, Judge

11

Schafer and Judge Lane, on March 10, 2016, to the

12

best of my skill, knowledge, and ability.

13
14
15

/s/ Julie Thomson Riley

March 10, 2016

16

Julie Thomson Riley, RDR, CRR

Date

17
18
19
20
21
22
23
24

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