BoxInterferences@uspto.

gov
Tel: 571-272- 7822

Filed: 24 August 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 Additional Discovery Regarding Alleged Conflict Issue

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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Junior Party (Broad) was authorized to file a notice under 37 C.F.R.

41.120(a) stating the specific relief and the basis for its entitlement to that relief

regarding an allegation of a conflict of interest by counsel for Senior Party (UC).

(See Order, Paper 581.) Broad timely filed a notice. (See Paper 727 (Notice).)

UC was not authorized to file any papers regarding this alleged conflict issue.

In the notice, Broad requests authorization to file a motion seeking

additional discovery and the production of documents relating to the scope of the

current representation of the Regents of the University of California (The

Regents) by the law firm Fenwick & West (Fenwick). (Notice, Paper 727, at

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1:2-5.) Specifically, Broad will request: (1) re-deposition of UCs witnesses

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Carroll and Greider, (2) production of documents and communications from

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Fenwick that were provided by Broad; and (3) depositions of Fenwick attorneys

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who had access to Broads documents and Fenwick attorneys who worked on

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Broad matters. Broad indicated that it will later seek authorization to disqualify

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UC witnesses Dr. Dana Carroll and Dr. Carol Greider if the evidence obtained by

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this discovery indicates they were tainted by Fenwicks conflict. (Notice, Paper

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727, at 1:10-12.)

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A party requesting additional discovery must show that such additional

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discovery is in the interests of justice. 37C.F.R. 41.150(c)(1). The standard

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for granting such requests is high and requires specific bases for expecting that the

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discovery will be productive. Standing Order 150.2.

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According to Broad, in 2012 a Fenwick attorney represented Broad with

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regard to patent protection related to Dr. Feng Zhangs genome engineering

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inventions. (Notice, Paper 727, at 1:13-14.) Broad asserts that Fenwicks past

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representation of Broad is substantially related to Fenwicks current

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representation of The Regents because the Fenwick attorney advised Broad on

patent protection related to inventor Dr. Feng Zhangs genome engineering

inventions, including his inventions concerning TAL effectors. (Notice, Paper

727, at 2:14-17.)

Broad states that TAL effectors and the CRISPR technology at issue in the

interference are both genome engineering techniques. (Notice, Paper 727, at 3:8-

9.) According to Broad, Fenwicks representation of Broad in matters related to

TAL effectors is substantially related to Fenwicks current representation of The

Regents. Broad notes that in its substantive briefs in this interference UC argues

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the CRISPR-Cas system is similar enough to the TAL/TALENs system that the

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changes made in the CRISPR system would have been obvious. (Notice, Paper

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727, at 3:8-16.) Broad cites to the statements made by UC witness Dana Carroll

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that the CRISPR-Cas system was recognized as being analogous to the ZFNs and

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TALENs. (Notice, paper 727, at 3:12-13, citing Exh. 1024, 331.) Broad also

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relies on arguments made by UC that those of skill in the art would have

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understood that the CRISPR-Cas system might successfully replace the TALENs

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system. (Notice, Paper 727, at 3:14-16, citing UC Opp. 2, Paper 652, at 8, 15, 18,

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19; Exh. 1535 at 31, 34, 36, and 52.)

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Broad fails to provide a sufficient basis on which it will argue that additional

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discovery would be in the interests of justice. Broads asserted connection

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between the relationship of legal representation regarding the TAL system to legal

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representation regarding the CRISPER/Cas system is merely tenuous. Even if the

Broad cites to paragraph 29 of Exhibit 1024, but this appears to be an error.

Paragraph 33 appears to include the quoted text.
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TAL system is analogous to or renders the CRISPER/Cas system obvious, a point

that the parties dispute, that fact would not necessarily indicate anything about

Fenwicks representation of either party. Broad fails to give a specific and

persuasive reason to assert that Fenwicks representation of Broad actually impacts

its representation of The Regents. Instead, Broads specific requests seem to

indicate that it seeks discovery to see if there is any conflict. Broad has not shown

why it is expected that the requested discovery would show such a conflict.

Broads request amounts to merely a fishing expedition.

Broad also directs our attention to an e-mail reportedly sent by a rotation

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student visiting The Broad Institute from Peking University/Tsinghua University,

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which was cited in a UC opposition brief. (Notice, Paper 727, at 4:8-14.)

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Although Broad fails to identify this e-mail with an exhibit number, it appears to

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be Exhibit 1475, which is a copy of an e-mail apparently sent directly to UC

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inventor Dr. Doudna. Broad asserts that discovery is necessary to determine if

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Fenwicks past representation of Broad facilitated this potential improper

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disclosure of Broad confidential information. (Notice, Paper 727, at 4:12-14.)

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Broad has not asserted a reason to consider that an attorney was involved in this

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communication, which was apparently sent directly to an inventor of UCs

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involved application. Accordingly, this e-mail does not appear to be related to any

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conflict of interest by an attorney.

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Accordingly, it is ORDERED that Broad is NOT AUTHORIZED to file a

motion regarding this conflict issue.

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cc (via e-mail):

Attorneys for Junior Party Broad Institute:

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

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