BoxInterferences@uspto.

gov
Tel: 571-272-7822

Filed: November 5, 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 Oral Argument
37 C.F.R. 41.124 and Standing Order 124
Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.
Per curiam.
1
2

Both parties requested oral argument in this interference. (See Papers 877
and 881.) Previously, the parties requested and received authorization to file

certain motions regarding issues that will impact a priority contest, should one be

necessary. (See Papers 33 and 42.) The parties now request authorization to

present oral arguments regarding these non-priority issues.

Each party bears the burden of presenting persuasive arguments and

evidence in the motions it files to establish that it is entitled to relief requested in

that motion. See 37 C.F.R. 41.121(b) and 208(b). Thus, the written motions

and supporting evidence filed by the parties, as well as the corresponding

oppositions, replies, and supporting evidence, constitute the trial of an

interference proceeding. To that end, trial testimony of witnesses is presented in

10

the proceeding through written declarations and transcripts of cross-examination

11

depositions submitted with the parties briefs. Oral argument in an interference

12

serves as means for the Board to question the parties on issues presented in their

13

briefs and for the parties to summarize their arguments and the supporting

14

evidence. Neither the oral argument nor demonstrative exhibits used during the

15

oral argument will fulfill the requirement that each party must meet its burden in

16

the briefs previously filed.

17
18

Further information concerning oral argument can be found at 37 C.F.R.

41.124 and Standing Order 124.

19
20

It is Ordered that the parties requests for oral argument are GRANTED.

21

Oral argument on the parties preliminary motions is set for

22

6 December 2016 at 10:00 a.m., in Hearing Room A on the ninth floor of

23

Madison Building East, 600 Dulany Street, Alexandria, Virginia.

It is further Ordered that the requirement to provide three working copies of

motions, oppositions, replies, and exhibits in 37 C.F.R. 41.124(b) is waived for

this proceeding.

The parties should be prepared to address the issues presented in their

motions. Each party will have 20 minutes for argument, with the option of

reserving up to five minutes for rebuttal to the other partys arguments.

Junior Party will present their arguments first, followed by Senior Party.

Any demonstrative exhibits must be served at least five business days before

the oral argument and e-mailed to the Board at Trials@uspto.gov. The parties

10

shall not file their demonstrative exhibits in the record of the proceedings without

11

prior authorization from the Board. Each party shall provide a hard copy of their

12

demonstratives to each administrative patent judge and to the court reporter at the

13

oral argument. The Board will provide a court reporter for the oral argument.

14

Neither the oral argument nor demonstrative exhibits constitute evidence

15

(other than possible admissions). The demonstratives may not introduce new

16

evidence or argument. Demonstrative exhibits must cite to the location of the

17

evidence in the record.

18

Any special requests for audio visual equipment should be directed to

19

Trials@uspto.gov at least five business days in advance of the oral argument. If

20

the request is not timely received, equipment may not be available. The parties are

21

reminded that the presenter must identify clearly and specifically each

22

demonstrative exhibit (e.g., by slide or screen number) referenced during the oral

23

argument to ensure the clarity and accuracy of the reporters transcript.

24
25

The oral argument will be open to the public. Attendance will be

accommodated on a first-come, first-served basis.
3

cc (via e-mail):

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
34
35
36

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
Raymond N. Nimrod
QUINN EMANUEL URQUHART & SULLIVAN, LLP
raynimrod@quinnemanuel.com

Attorneys for Senior Party University of California, et al.:

Todd R. Walters
Erin M. Dunston
Travis W. Bliss
Christopher L. North
BUCHANAN, INGERSOLL & ROONEY PC
todd.walters@bipc.com
erin.dunston@bipc.com
travis.bliss@bipc.com
Christopher.north@bipc.com
Li-Hsien Rin-Laures
Sandip H. Patel
Greta Noland
MARSHALL GERSTEIN & BORUN LLP
lrinlaures@marshallip.com
spatel@marshallip.com
gnoland@marshallip.com
4