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Filed: 27 January 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 HAVARD 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),
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
Expunging Papers
37 C. F.R. 41.7(a) and 41.104(a)

Before DEBORAH KATZ, Administrative Patent Judge.

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On 25 January 2016, Junior Party, The Broad Institute, Inc., Massachusetts

Institute of Technology, and President and Fellows of Harvard College (Broad),

filed several required papers, including notice of the real parties-in-interest and

copies of the involved claims. Broads papers are improper and will be expunged.

Specifically, Paper 4, entitled Broad Notice of Real Parties-in-Interest (SO

8.1), includes information beyond the notice of any and all right, title, or

interest in any application or patent involved in the contested case, as required in

Standing Order 8.1. Information provided beyond a mere listing of the real

parties-in-interest is inappropriate, unauthorized argument and will not be

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considered.
Papers 7 and 8, entitled Broad Clean Copy of Claims (Bd.R. 110(a)) -1 of

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2 and Broad Clean Copy of Claims (Bd.R. 110(a)) 2 of 2, are also

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inappropriate because they provide voluminous sequence listings beyond what is

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required in 37 C.F.R. 41.110(a). For example, the claims of involved patent

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8,697,359 do not recite any SEQ ID NOs, yet 42 pages of sequence listing were

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included for this patent alone. In total, 1,638 pages of the clean copy of claims

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were filed. Only the copy of the claims for each involved Broad patent and copies

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of the sequences specifically referenced in those claims may be included in the

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clean copy of the claims. In general, a clean copy of a partys claims should

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present the claims in their current form and in the most accessible manner possible,

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without the need to consult numerous papers or search through hundreds of pages

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or through prosecution papers.

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Furthermore, Broad filed a copy of a Request for a Certificate of Correction,

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apparently submitted on 19 January 2016 in the file of the application that became

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involved patent 8,697,359. As indicated in the Order of 22 January 2016 (Paper

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3), this request was filed without authorization from the Board and is improper.

Broads clean copy of its involved claims may not include these papers. Broad

may wish to consider seeking authorization to file a miscellaneous motion

requesting a Certificate of Correction as part of its listing of proposed motions due

3 March 2016.

It is noted that other listings of Broads claims appear to be incomplete.

Only 18 complete claims are provided for patent 8,771,945, even though 29 claims

of this patent are involved in the interference.

Other irregularities and unauthorized filings may be present in Broads

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papers. Counsel for Broad is encouraged to consult the record of previous

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interferences at https://acts.uspto.gov/ifiling/PublicView.jsp for examples of

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acceptable papers.

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It is ORDERED that Broad Papers 4, 7, and 8 be expunged. 37 C.F.R.

41.7(a).
It is further ORDERED that Broad file a replacement Notice of Real Partyin-Interest and a replacement Clean Copy of Claims by 1 February 2016.

cc (via e-mail):

Attorney for Junior Party Broad Institute:

Vedder Price P.C.
tkowalski@vedderprice.com
dlu@vedderprice.com

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Attorney for Senior Party University of California:

Buchanan, Ingersoll & Rooney PC
todd.walters@bipc.com
Goodwin Procter LLP
bfairchild@goodwinprocter.com

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