Holding

In yet another round of the ever-expanding disputes surrounding CRISPR technology, the Patent Trial and Appeal Board (PTAB) recently denied priority to patentee SNIPR Technologies in its interference fight with Rockefeller University. SNIPR Technologies Ltd. v. Rockefeller University, Patent Interference No. 106,123 (Nov. 19, 2021). The PTAB determined that Rockefeller University was the first to invent the claimed methods of using CRISPR technology to kill or modify specific bacteria. As a result of the determination, the PTAB canceled five SNIPR patents: U.S. Patent Nos. 10,463,049; 10,506,812; 10,561,148; 10,524,477; 10,582,712.

The claims at issue were directed to “methods of killing or modifying specific bacteria within a mixed population of bacteria” using CRISPR systems to alter the relative ratio of bacteria within the mixed population. Decision on Motions at 2. This invention was claimed by Rockefeller in a pending patent application, and by SNIPR in various patents. The SNIPR patents were afforded an earliest possible priority date of May 3, 2016, and thus were governed by the AIA. On the other hand, Rockefeller’s patent application claimed an earliest priority date of February 7, 2013, and was subject to pre-AIA law.

SNIPR filed several Motions, including one which argued that the interference should be terminated as contrary to the AIA. SNIPR argued that based on the AIA’s change to 35 U.S.C. § 135 and elimination of 35 U.S.C. § 102(g), Congress eliminated interferences for patents filed after the effective filing date of the AIA - March 16, 2013.

The PTAB turned to the Leahy-Smith America Invents Act § 3(n)(2), which provides specific timing provisions related to the changes involving interfering patents. Pub. L. No. 112-29, 125 Stat. 284 (2011). The Board determined that this section demonstrated Congress’ express choice to continue interferences under certain circumstances. In particular, the PTAB concluded that § 3(n)(2) of the AIA provides that 35 U.S.C. §§ 102(g) and 135 shall apply to pre-AIA claims, and because Rockefeller’s application was subject to pre-AIA law, an interference was needed to complete the examination. SNIPR attempted to address this by arguing that § 3(n)(1) prohibited the PTAB from subjecting its patents to an interference under the AIA regardless of how the section applied to Rockefeller’s application. In SNIPR’s view, § 3(n) required the applications, or the application and patent, to both be subject to pre-AIA law. Ultimately, the Board was unpersuaded, and instead determined that Congress’ choice to continue interferences under § 3(n)(2) indicated that interferences could occur when there was either a pre-AIA patent or application at issue.

SNIPR also argued that the PTAB should exercise its discretion to terminate the interference based on a “lack of statutory authority, the undue costs and prejudice to SNIPR after filing applications that SNIPR expressly chose to subject only to the AIA’s terms, the inability of the Board actually to resolve invention priority, and more.” See SNIPR Motion 1, Paper 26, 12:18-14:5). The Board, however, emphasized the language of § 135 that it “shall determine questions of priority of the inventions and may determine questions of patentability” to support finding that the Board lacked discretion in this instance. Decision on Motions at 8-9.

Finally, SNIPR argued that certain claimed methods that recited the limitation of “reduc[ing] the growth of the host cells by at least 5-fold,” should be designated as not corresponding to Count 1 because that Count did not recite the 5-fold reduction in growth requirement. Id. at 11. According to SNIPR, that feature rendered the claims separately patentable over the count and thus not appropriate for the interference. The Board was unpersuaded by this argument and determined that SNIPR failed to meet its burden of explaining why the claims were not obvious given that Count 1 recited a method in which the “growth of the host cells is reduced.” Accordingly, the Board denied SNIPR’s requested relief. Id at 14.

Ultimately, the Board denied SNIPR’s attempt to terminate the interference. Because SNIPR did not file a priority statement, thereby “indicating that it [did not] contest priority against Rockefeller,” the Board concluded that SNIPR lacked priority. Id. at 15. The lack of priority led the PTAB to issue a judgment against SNIPR and to cancel its patent claims.