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BoxInterferences@uspto.

gov
Tel: 571-272- 7822

Filed: August 9, 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 Authorization for Notice
37 C.F.R. 41.120(a)

Before DEBORAH KATZ, Administrative Patent Judge.

On 5 August 2016, Junior Party (Broad) contacted the Board by e-mail to

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request a conference call regarding a dispute over stipulations for an extension of

time.

On 8 August 2016, Broad again contacted the Board by e-mail, this time to

provide a reason why it seeks an extension of time. (See Exhibit.) According to

Broad, a conflict issue has arisen regarding counsel for Senior Party (UC).

Broad asserts that expert witnesses relied upon by UC in its briefs were retained by

Fenwick & West, LLP in this interference, but that Fenwick & West LLP had

previously represented Broad on matters alleged to be substantially related to the

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subject matter of this interference.


Broad requests an extension of time because it believes this issue should be
resolved before additional papers are filed in the interference.

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An extention of time is NOT AUTHORIZED. Broad presents allegations

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but it is not clear what, if any, relief Broad seeks or what, if any, relief should be

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granted. Therefore, at this time, there is no reason why the proceeding should not

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proceed as scheduled. The parties may agree to stipulated changes to the schedule

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that are no later than TIME PERIOD 7. (See Declaration, Paper 1, at 14:24-15:9.)

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Furthermore, it is ORDERED that Broad is AUTHORIZED to file a notice

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of no more than five pages by 16 August 2016, stating the specific relief it

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requests and the basis for its entitlement to that relief. 37 C.F.R. 41.120(a).

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Broad is NOT AUTHORIZED to file evidence with this notice, but should indicate

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the nature of the evidence, if any, it would rely upon if authorized to file a motion.

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Broad is NOT AUTHORIZED to file any other papers and UC is NOT

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AUTHORIZED to file any papers regarding the conflict issue at this time.

Attachment: Exhibit (e-mails of 5 August 2016 and 8 August 2016, with attached

letters dated 28 July 2016 and 5 August 2016)

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cc (via e-mail):

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Attorneys for Junior Party Broad Institute:


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

EXHIBIT

From: McDaniel, Tracie A. [mailto:TMcDaniel@jenner.com] On Behalf Of Trybus, Steven R.


Sent: Monday, August 08, 2016 9:37 AM
To: BOX INTERFERENCES <BoxInterferences@USPTO.GOV>
Cc: 'Walters, Todd' <todd.walters@bipc.com>; 'Bliss, Travis W.' <travis.bliss@bipc.com>; 'Dunston, Erin
M.' <erin.dunston@bipc.com>; 'lrinlaures@marshallip.com' <lrinlaures@marshallip.com>;
'gnoland@marshallip.com' <gnoland@marshallip.com>; 'Sandip H. Patel (spatel@marshallip.com)'
<spatel@marshallip.com>; Roper, Harry J. <HRoper@jenner.com>; Margolis, Paul D.
<PMargolis@jenner.com>
Subject: RE: Request for Teleconference with Judge Katz, Judge Schafer and/or Judge Lane - Interference
106,048
ATTENTION JUDGES KATZ, SCHAFER AND LANE
Your Honors:
On Friday, August 5, Junior Party wrote requesting a conference call to discuss an extension of time. In
that email, Junior Party indicated that it believed that the extension was appropriate for numerous
reasons. Junior Party did not set forth reasons for the extension in deference to Senior Partys
objection that certain aspects were premature for a ruling.
Junior Party can now report further regarding one reason for the extension, namely, a conflicts issue
that has arisen. Junior Party also writes to request guidance with regard to that conflicts issue and/or
authorization to file additional objections and/or motions based on the conflict.
Junior Party became aware of a conflict of interest regarding Senior Party during the July 20-22
depositions of Senior Partys experts Dana Carroll, Ph.D. and Carol Greider, Ph.D. During those
depositions, Junior Party learned for the first time that each of Senior Partys two experts were retained
by the law firm Fenwick & West, LLP (Fenwick). Neither Fenwick nor any Fenwick attorneys have
appeared in this Interference or revealed in any other way to Junior Party that they were involved in this
Interference.
The experts disclosure of Fenwicks involvement greatly concerned Junior Party because, in 2012,
Fenwick was retained by, and represented and advised, Junior Party Broad, and specifically Dr. Zhang, an
inventor on all of Junior Partys patents involved in this Interference, with regard to matters that Junior
Party believes are substantially related to the subject matter of this interference. As part of that
attorney-client relationship, Broad provided Fenwick with Broad confidential information, including
information related to CRISPR such as, for example, a copy of the Invention Disclosure Statement upon
which Junior Partys Priority Statement is based.
Counsel for Junior Party sent a letter to Fenwick on July 28, 2016 (with copies to the Counsels of record
for Senior Party) hoping to uncover the extent of Fenwicks involvement in this Interference and the

extent of any communications with Senior Partys experts and counsel. A copy of that letter is attached
to this email message.
On August 5, 2016, Fenwick responded. Their letter in response is also attached to this email.
In that response, Fenwick confirmed that:
1. Fenwick had an attorney-client relationship with Broad;
2. Fenwick received confidential information of Junior Party inventor, Dr. Zhang, in furtherance of
its representation of the Broad, included in the material that Broad provided to Fenwick was the
specific invention disclosure of Dr. Zhang that led to the CRISPR patents and application that are
in this Interference;
3. Fenwick advised Broad with respect to genome engineering inventions of Dr. Zhang, including
related to TAL effectors; and
4. Fenwick currently represents the Regents of the University of California in this matter.
Junior Party now requests that your Honors provide guidance on the proper way to
proceed. Specifically, Junior Party seeks guidance on the timing and method of addressing this issue
(such as if Junior Party should file one or more motions, whether now or during the period for motions
to exclude). Junior Party requests discovery regarding this conflicts issue, including, for example,
additional depositions of Senior Partys experts, and potentially depositions or other discovery of
counsel of record and others for the purpose of determining the scope of any conflict.
Independent of whether Your Honors elect to provide guidance on this conflicts issue, Junior Party
continues to request an extension of time for Time Period 3 to allow time to address this conflicts issue
prior to additional filings in this Interference. Until this conflict of interest is resolved, it seems prudent
that no additional papers be filed in the interference. If Senior Partys expert declarations are stricken as
a result of this conflict, Junior Party does not want any allegation that Senior Party is prejudiced because
Junior Party did not bring this issue to light in a timely manner or that Junior Party did not allow Senior
Party an opportunity to, for example, use non-conflicted experts in connection with its Oppositions.
Junior Party submits that its current requests for an extension and for guidance regarding the
appropriate procedure to resolve the conflicts issue serve the interests of the Board, the Parties and the
public. Further, Junior Party will work diligently on this issue to avoid unduly delaying the proceedings.
As noted in the prior email that was sent on Friday, counsel for Junior Party and counsel for Senior Party
are available for a call during the afternoons of Monday, August 8 and Tuesday, August 9.
Respectfully,
Steven Trybus
Lead Counsel for Junior Party
----------------------------------------------------------------------------From: Trybus, Steven R.
Sent: Friday, August 05, 2016 3:01 PM
To: BoxInterferences@uspto.gov

Cc: 'Walters, Todd' <todd.walters@bipc.com>; 'Bliss, Travis W.' <travis.bliss@bipc.com>; 'Dunston, Erin
M.' <erin.dunston@bipc.com>; 'lrinlaures@marshallip.com' <lrinlaures@marshallip.com>;
'gnoland@marshallip.com' <gnoland@marshallip.com>; 'Sandip H. Patel (spatel@marshallip.com)'
<spatel@marshallip.com>; Roper, Harry J. <HRoper@jenner.com>; Margolis, Paul D.
<PMargolis@jenner.com>
Subject: Request for Teleconference with Judge Katz, Judge Schafer and/or Judge Lane - Interference
106,048
ATTENTION JUDGES KATZ, SCHAFER AND LANE
Your Honors:
Junior Party writes to request a conference call with the Board with regard to an extension of time. For
numerous reasons, Junior Party believes it is most appropriate to extend the time period 3 from the
current date of August 12 to August 19. Senior Party has only agreed to an extension to August 15.
Junior Party requests a conference call to explain to the Board why an extension to August 19 is
appropriate. Counsel for Junior Party and counsel for Senior Party are available Monday and Tuesday
afternoons for such a call at the Boards convenience.

Steven R. Trybus
Jenner & Block LLP
353 N. Clark Street, Chicago, IL 60654-3456 | jenner.com
+1 312 923 8307 | TEL
STrybus@jenner.com
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CONFIDENTIALITY WARNING: This email may contain privileged or confidential information and is for the sole use of the intended
recipient(s). Any unauthorized use or disclosure of this communication is prohibited. If you believe that you have received this email in error,
please notify the sender immediately and delete it from your system.

August 5, 2016

VIRGINIA K. DEMARCHI

EMAIL VDEMARCHI@FENWICK.COM
Direct Dial (650) 335-7967

VIA EMAIL (aray@jenner.com)


Anne P. Ray
Jenner & Block LLP
353 North Clark Street
Chicago, IL 60654-3456
Re:

Patent Interference No. 106,048

Dear Ms. Ray:


This letter responds to your July 28, 2016, letter addressed to Lynn Pasahow, Melanie
Mayer and Michael Shuster of my firm. I am Fenwick & West LLPs general counsel and am
responding on behalf of the firm. We disagree with your characterization of our prior
representation of the Broad Institute and with your assertion that that prior representation
precludes our representation of The Regents in this matter. We do not believe that Fenwick has a
disqualifying conflict and therefore will not agree to cease the firms representation of The
Regents in this matter.
First, Fenwicks prior representation of the Broad Institute was not substantially related
to this matter in which Fenwick currently represents The Regents. Contrary to the assertions in
your letter, Fenwicks representation of the Broad Institute was very limited, both with respect to
the scope of the representation and its duration.
Dr. Shuster was retained by Ellen Law, Licensing Manager, Strategic Alliances and
Partnering, for the Broad Institute, on May 15, 2012, and his engagement was terminated by
Ms. Law a month and a half later on June 25, 2012. During the engagement, Dr. Shusters work
was limited to advising the Broad Institute on the prosecution of certain inventions of Dr. Zhang
relating exclusively to TAL effectors. Fenwicks engagement agreement with the Broad
Institute, together with the Task Initiation Forms the Broad Institute required and the specific
instructions provided by Ms. Law, make clear that Dr. Shuster was asked to advise the Broad
Institute on the following cases: (i) BI-2011/018 - Single Tube Assembly of Designer TALEs;
(ii) BI-2011/021 - Novel DNA-recognition code for Designer TALEs; and (iii) BI-2011/020 Light Responsive Transcription Activator Like Effectors. Dr. Shuster was not asked to advise,
and did not advise, the Broad Institute on any matters involving CRISPR technology (including
the matter you refer to in your letter as Case BI-2011/080)let alone the CRISPR/Cas9
inventions at issue in this matter.
Second, Fenwick does not otherwise have any confidential information of the Broad
Institute in its possession that would warrant disqualification of the firm in this matter. While

Anne P. Ray
August 5, 2016
Page 2
Ms. Law did indeed upload to Fenwicks document shareroom three documents that relate to
CRISPR technology, none of these documents contains confidential information of the Broad
Institute, nor is the information they contain material to this matter. Two of the documents are
published patent applications belonging to third parties (not the Broad Institute). These
applications have been publicly available since 2010, and their existence was well known to
those researchers and prospective patentees that were following developments in the field.
The third document is an invention disclosure form in Case BI-2011/008the same
invention disclosure form that the Broad Institute has already filed publicly in this matter and
disclosed to The Regents. Your letter does not identify what, if anything, the Broad Institute
considers confidential about this invention disclosure form. On its face, the document contains
very little substance. For example, in response to the questions, What is the key concept on
which the invention is based? and What are the distinguishing novel features of the
invention?, only a generic description of the existing CRISPR technology (not even specific to
CRISPR/Cas9) is provided, together with a remark on the known ways in which that technology
is superior to the prior art:
The key concept of this invention is based on the CRISPR (Clustered Regularly
lnterspaced Short Palindromic Repeats) found in many microbial organisms.
Enzymes associated with the CRISPR complex use short RNA sequences to
recognize specific target sites on the host genome and performs site-specific
cleavage. The key novel feature of this invention is that it does not rely on the
design of site-specific DNA binding proteins (i.e. zinc finger or TAL effector) and
can be easily targeted to multiple sites through the use of multiple sequencespecific CRISPR spacer elements.
Invention Disclosure Form, Question 6(b). The invention disclosure form does not describe any
actual invention (let alone the inventions that are described by Count 1 or Proposed Count 2 of
the interference), but rather includes the observation that, Currently research is being conducted
in [Dr. Zhangs] laboratory to rapidly test the efficiency of CRISPR system for sequence-specific
genome modification. We anticipate to obtain proof of concept in 2 to 3 weeks. Invention
Disclosure Form, Question 9 (emphasis added). Dr. Zhang has also previously explained the
timing of his alleged conception of his CRISPR-related inventions in a declaration filed in
various prosecutions, including in November 2014 in connection with prosecution of Application
No. 14/226,274. That declaration states in relevant part:
[I]n January 2011, I established my Broad laboratory and shortly thereafter
appreciated CRISPR subject matter, including modifying the RNA-guided
nuclease CRISPR prokaryotic system for use in genome editing in eukaryotic
cells. From that point, I worked diligently on CRISPR subject matter, in the
United States, at my Broad laboratory . . . .
Declaration of Feng Zhang, dated November 21, 2014 (emphasis added).

Anne P. Ray
August 5, 2016
Page 3
We have determined that no Fenwick attorneys, including Dr. Shuster, ever reviewed the
invention disclosure form for Case BI-2011/008 or the two published patent applications that
Ms. Law uploaded to the Fenwick document shareroom. It is not surprising that Dr. Shuster
never reviewed these materials, as they did not relate to the matters on which he advised the
Broad Institute. More importantly, no Fenwick personnel involved in representing The Regents
in this matter had access to the Fenwick document shareroom containing any Broad Institute
materials, nor did any of them ever review these materials or discuss with Dr. Shuster any aspect
of his prior representation of the Broad Institute. Mr. Pasahow and Dr. Mayer were not involved
in any aspect of Fenwicks prior representation of the Broad Institute, and Dr. Shuster is not
involved in any way in Fenwicks current representation of The Regents in this matter.
In short, not only was Fenwicks prior representation of the Broad Institute unrelated to
its current representation of The Regents, but also none of the information provided by the Broad
Institute to Fenwick has been disclosed to The Regents or its counsel or otherwise compromised
or taken advantage of by The Regents or its counsel.
Your letter requests information from Fenwick and its client, much of which is obviously
privileged. We will not provide any confidential or privileged information in response to your
requests, including with respect to your request for communications between Fenwick and its
client and other counsel representing The Regents. The nonprivileged information you have
requested is provided as part of the discussion above.
As this letter includes details of Dr. Shusters prior representation of the Broad Institute
that the Broad Institute may regard as confidential, I have not yet shared a copy of this letter with
Mr. Pasahow or Dr. Mayer, nor have I shared it with The Regents or their other counsel in this
matter. Please let me know by close of business on Monday, August 9, which portions of this
letter the Broad Institute wishes to have redacted before it is shared with The Regents and their
counsel.
Sincerely,
FENWICK & WEST LLP
s/ Virginia K. DeMarchi
Virginia K. DeMarchi
VKD:bjw
cc: Steven Trybus (via email, strybus@jenner.com)