By Kevin E. Noonan —

On June 11th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Responsive Preliminary Motion No. 1 in Interference No. 106,127 to be accorded benefit of priority to U.S. Patent Application No. 13/842,859, filed March 15, 2013, or in the alternative U.S. Patent Application No. 14/685,504, filed April 7, 2015, or U.S. Patent Application No. 15/138,604, filed April 26, 2016, pursuant to 37 C.F.R. §§ 41.121(a)(2) and 41.208(a)(3) and Standing Order ¶ 208.4.1.  CVC filed this motion contingent on the Board granting Senior Party ToolGen's Substantive Preliminary Motion No. 2 to deny CVC priority benefit to U.S. Provisional Application No. 16/757,640, filed January 28, 2013 ("P3").

ToolGen's Substantive Preliminary Motion No. 2 challenged CVC's entitlement to priority benefit to the P3 provisional in this interference on the grounds that it did not disclose "successful cleavage of DNA within eukaryotic cells, nor does it otherwise show a constructive reduction to practice of an embodiment within Count 1."  In its Responsive Motion, CVC sought to establish its entitlement to later-filed applications, to retain its best priority position against ToolGen (CVC itself has filed its Preliminary Motion No. 2 to deny ToolGen of the priority benefit to its earliest application, U.S. Provisional Application No. 16/717,324, filed October 23, 2012).  In its Responsive Motion, CVC argued entitlement to the '859 application as a matter of law because it is the earliest application having an identical specification to CVC's applications-in-interference and CVC argues that it therefore is entitled to a presumption that this application provides a constructive reduction to practice thereby, citing Transco Prod. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556–57 (Fed. Cir. 1994).  CVC's alternative priority claims were based on the common specification shared by all these applications, comprising "a string of continuation applications [that] thus provide[s] the same disclosure as the involved applications."  CVC provided the following table of comparison evidence of what is disclosed in the specification of the '859 application with each element of the Count:

Specifically, CVC argued that Examples 4, 5, and 7 set forth a constructive reduction to practice of an embodiment falling within the scope of the Interference Count.

ToolGen disagrees, arguing in its Opposition that CVC failed to carry its burden of showing the constructive reduction to practice it alleged.  As an initial matter, ToolGen cites CVC's argument that the disclosure in the three non-provisional applications here has been continuously disclosed in earlier provisional applications (U.S. Provisional Application No. 61/652,086, filed May 25, 2012 ("P1"), U.S. Provisional Application No. 61/716,256, filed October 19, 2012, ("P2"), and U.S. Provisional Application No. 61/757,640, filed January 28, 2013 ("P3"), priority to which CVC asked the Board to accord benefit in its Substantive Preliminary Motion No. 1 (opposed by ToolGen separately).  ToolGen understandably repeats (in brief) its principal argument in that Opposition, that CVC has not shown that CRISPR-mediated DNA cleavage in eukaryotic cells would have been a matter of routine and predictable experimentation, based inter alia on the Board's decisions in Interference No 105,048 (and Federal Circuit affirmance thereof; Regents of Univ. of California v. Broad Inst., Inc., 903 F.3d 1286, 1291–92 (Fed. Cir. 2018)) and Interference No. 106,115 to the contrary.  And ToolGen here, as it has done in its own Preliminary Motion No. 2 to deny priority benefit, argues that the Board erred in granted CVC priority benefit to its P3 provisional application (U.S. Provisional Application No. 61/757,640, filed January 28, 2013) in the '115 Interference because it did not consider ToolGen's arguments that CVC had not satisfied the constructive reduction to practice requirement for this provisional (again, briefly recounting their earlier arguments here).  ToolGen thus makes its first argument on the backs of its earlier arguments with regard to the P1, P2, and P3 priority documents, because if CVC was not entitled to priority to them then the Board should not grant CVC priority benefit to the three non-provisional applications at issue here in the face of CVC's representations that the disclosure in Examples 4, 5 and 7 was the same in these non-provisional applications and the earlier-filed provisional applications.

ToolGen then sets forth for each of these Examples its arguments why they are defective in satisfying the disclosure requirements for entitlement to priority benefit.  For all these Examples ToolGen asserts that they lack "definitive evidence that CRISPR-Cas9 modulates transcription of at least one gene encoded by the target DNA molecule in eukaryotic cells" due to failure to include "proper experiments and controls" for human cells (which were included for examples using E. coli).  Regarding Example 4, ToolGen maintains that because the Example states that the results merely imply reduced target gene expression as a consequence of CRISPR cleavage, the Example leaves open the door for a skilled worker to entertain other explanations for the reported results and thus not be convinced that the inventors possessed the claimed invention.  ToolGen faults the Example for failing to show that the disabled Cas9 protein was expressed in a human cell and localized to the cell nucleus.  A "critical failure," according to ToolGen's Opposition, is that Example 4 provides no direct measurement of gene transcription in the cell, which is an affirmative limitation in the Count ("modulating transcription of at least one gene encoded by the target DNA molecule").  Without this direct measurement, ToolGen asserts the skilled worker "would not have concluded that Example 4 discloses the constructive reduction to practice of an embodiment of the Count."  Moreover, even assuming for argument that modulation of transcription had been demonstrated, what is disclosed (reduction in green fluorescence protein-catalyzed fluorescence) could be explained by many other mechanisms than CRISPR-specific ones, ToolGen contends.  In addition, ToolGen argues that there is no evidence for specific CRISPR-catalyzed gene-expression repression, i.e., non-targeting gene expression could also be being experienced in the cell (in another instance where the proper controls were performed in parallel experiments using E. coli but not in the human cell experiments according to ToolGen).  ToolGen also contends that Example 4 does not demonstrate gene expression modulation for endogenous cellular genes, or even more than the single GFP-encoding gene introduced exogenously.

Turning to Example 5, ToolGen argues that it is apparently a "follow-up experiment" from those disclosed in Example 4.  Accordingly, ToolGen asserts that this Example suffers from "all the same issues" as Example 4, i.e., (in summary) "absence of any evidence that a complex is indeed formed and then binds the target gene, the lack of proper controls to demonstrate specificity in modulating the target genes, the absence of studies on endogenous genes to dispel concerns arising from gene integration, and the absence of any measurements to detect gene transcription instead of just GFP fluorescence."  In addition, ToolGen contends that this Example reports only a low level of gene expression modulation with no explanation regarding its magnitude, or that the results were due to specific "RNA-mediated targeting" of the GFP target sequence.

Example 7 differs from the other two as being "strictly prophetic," being a "plan" to produce transgenic mice expressing Cas9.  However, ToolGen maintains that there is no guidance for making such mice nor any experimental results regarding performing CRISPR in transgenic mice or cells derived therefrom and thus this Example does not satisfy the requirements for CVC to receive benefit of priority thereto.

For all these reasons, ToolGen asks the Board to deny CVC's attempt to be according benefit of any of these three prior patents.

By Kevin E. Noonan —

On May 20th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Substantive Preliminary Motion No. 3 in Interference No. 106,127 (which names ToolGen as Senior Party), asking the Patent Trial and Appeal Board to add claims in ToolGen's U.S. Patent No. 10,851,380* to this interference, pursuant to 37 C.F.R. §§ 41.121(a)(1)(i) and 41.208(a)(2) and Standing Order ¶ 208.3.2.  On July 5th ToolGen filed its Opposition.

In its Motion No. 3, CVC argued that the only difference between the language of the Count and the claims in the '380 patent is that those claims require the addition of two guanine residues ("GG") positioned before the crRNA portion of the sgRNA sequence.  CVC argued that these species of sgRNA (the fusion of crRNA and tracrRNA) recited in the '380 patent claims are a consequence of using the T7 phage RNA polymerase to produce sgRNA and that in vitro RNA production using T7 RNAP promoters was well-known in the art ("for decades"; emphasis in brief) at the priority date of the '380 patent; these arguments are supported by testimony from CVC's expert, Dr. Scott Bailey.

This method of producing sgRNA and relevant prior art disclosing the use of T7 RNAP and promoters recognized by the polymerase was set forth in the brief as follows:

wherein the diagrams follow the source of the characteristic "extra" GG residues at the 5' end of crRNA and sgRNA produced thereby.  CVC also asserts as second reference, the Deltcheva reference, to illustrate the extent to which T7-catalyzed in vitro RNA production using a T7 promoter was well-known:

CVC argued that the distinction of including two guanine residues in crRNA and sgRNA comprised thereof is not enough to distinguish the claims of the '380 patent from the Count in this interference (to which CVC argues these claims correspond) because "including a 5'-GG would have been obvious over Count 1 in view of [CVC's] Jinek 2012" reference as illustrated above, which reliance is permitted under Desjardins v Wax, Interference No. 105,915, Paper 127, 17-20 (P.T.A.B. Jan. 21, 2014).  Regarding motivation to combine the teachings of the Jinek reference in this regard with the more general teachings of producing an sgRNA for eukaryotic CRISPR, CVC argued that such motivation is supported by the method's "low cost, efficiency, and accuracy," and because "Jinek 2012 had already used the method to generate RNAs that effectively cleave eukaryotic DNA sequences (e.g., GFP) in CRISPR-Cas9 systems (i.e., ToolGen knew the method would be successful in eukaryotic CRISPR).  This success also would have provided the requisite reasonable expectation of success to complete a prima facie case of obviousness and hence for the '380 claims to properly be determined to correspond to the Count in this interference.

ToolGen argues in its opposition that the claims of the '380 patent do not correspond to Count 1 of this interference and that CVC's motion does not comply with the requirements of 37 C.F.R. §§ 41.202 and 41.203.  With regard to the substantive question, ToolGen's brief focuses on whether the Count would render those claims obvious (because the lack of the two guanine residues positioned before the crRNA portion of the sgRNA sequence in the Count precludes anticipation, i.e., each and every limitation in the claim is not found therein).  And, ToolGen contends, Count 1 alone cannot render the '380 patent claims obvious (and CVC did not so argue).  Thus, the issue is whether the combination of the language of the Count and the disclosure of the Jinek 2012 reference raises a prima facie obviousness case, which ToolGen maintains it does not.  ToolGen's reasoning is that, at the priority date of the '380 patent (October 23, 2012), "(1) a POSA would not have been motivated to combine Count 1 and Jinek; (2) a POSA would not have had an expectation of success in implementing the CRISPR/Cas9 system of independent claim 1 in eukaryotic cells; and (3) the claims of the '380 patent exhibit superior properties and advantages that a POSA would have found surprising or unexpected."  ToolGen's reasoning reiterates in part the argument raised in its opposition to CVC's Preliminary Motion No.2, that Jinek describes use of prokaryotic CRISPR-Cas9 in a "non-cellular, experimental environment," citing the Board's decision in Interference No. 105,048 and the Federal Circuit's affirmance thereof.  Further, ToolGen argues that the Jinek 2012 reference does not describe any experiments using CRISPR in eukaryotic cells nor introduction of CRISPR complexes into such cells.  Finally, ToolGen cites the PTO's determination during prosecution of the '380 patent that Claim 1 of the '380 patent was non-obvious over the Jinek 2012 reference which is binding here, citing Harris Corp. v. Fed. Exp. Corp., 502 F. App'x 957, 968 (Fed. Cir. 2013), and Glaxo Grp. Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004).

ToolGen also challenges CVC's contention that the skilled worker would have been motivated to combine the teachings of the Jinek 2012 reference with the subject matter of Count 1 in support of a prima facie obviousness case.  The basis for this argument is that "nothing in the prior art—cited by CVC or otherwise—'suggest[s] the desirability' of RNA transfection—a method necessitated by Jinek—as a method of introducing sgRNA (or 'guide RNA') into eukaryotic cells as of the priority date" (emphasis in brief), citing In re Fulton, 391 F.3d 1195, 1200 (Fed. 21 Cir. 2004), and Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 22 934 (Fed. Cir. 2019).  This argument is based on the limitation recited in Count 1 to a method for "introducing into [a] eukaryotic cell" a CRISPR-Cas9 complex comprising an sgRNA. Jinek's disclosure in limited to a method for preparing RNA by in vitro transcription (emphasis in brief) and this RNA would be understood by the skilled worker to be introduced into eukaryotic cells using RNA transfection techniques, ToolGen asserts, which were not routinely employed in the art.  And the Jinek 2012 reference provides no disclosure (being "entirely silent" on the question) regarding RNA transfection that would overcome these limitations in the prior art according to ToolGen (supported by copious citations to that art).

ToolGen also argues that the prior art, including the Jinek 2012 reference, did not disclose any reason to introduce two guanine residues before the crRNA portion of the sgRNA sequence, asserting that it was the '380 patent inventors who first discovered that doing so resulted in greater specificity.  Accordingly, ToolGen states, "as of the priority date, a POSA would have understood the Jinek method as having inherent limitations, i.e., the requirement of one or more guanines at the 5' end, without any known benefit."  Indeed, ToolGen makes the case that the state of the prior art would have preferred using eukaryotic promoters, such as the U6 promoter, as part of a DNA plasmid encoding sgRNA as the preferred method for producing (rather than introducing using RNA transfection methods fraught with known difficulties) sgRNA in a eukaryotic cell for achieving CRISPR in such a cell.  (After all, ToolGen notes that CVC's own application, filed three months after the '380 patent's priority date, utilized plasmids encoding sgRNA expressed using a eukaryotic promoter to produce RNA in a eukaryotic cell.)

ToolGen next turns to CVC's argument that the skilled worker would have had a reasonable expectation of success in combining the Jinek 2012 reference with the limitations of Count 1 to achieve  CRISPR in a eukaryotic cell.  ToolGen bluntly asserts such a POSA would not have had such a reasonable expectation of success because it had been established by the Board, and affirmed by the Federal Circuit, "that as of 5 December 2012—two months after the priority date—a POSA 'would not have reasonably expected success' in implementing CRISPR/Cas9 in eukaryotic cells" by any means.  ToolGen refers to "a similar argument" made by CVC in Interference No. 106,115 (against Broad) and CVC's reliance on the Board distinguishing its decision in the '048 interference as meaning that "[e]xpectation of success in eukaryotes would not be in doubt" as of the priority date.  CVC is incorrect, ToolGen argues, because it ignores the distinctions regarding the limitations in Count 1 (which under 37 C.F.R §41.207(b) is considered prior art) and the "problematic nature of RNA transfection as of the priority date" arising in the context of this interference.  Under the prior art presumption regarding the Count, ToolGen argues, "to interpret §41.207(b) as providing for an assumption of a reasonable expectation of success—as CVC suggests—would be inconsistent with the plain language of the rule and Board precedent" and "such an interpretation would effectively nullify the requisite obviousness analysis of §41.207(b)."  Nor does the routine nature of producing RNA in vitro using T7 promoter and polymerase support a reasonable expectation of using such RNA to achieve CRISPR in eukaryotic cells as CVC argues in its Motion No. 3, ToolGen asserts.

Finally, in this regard ToolGen contends that the invention claimed in Claim 1 of the '380 patent "exhibits superior properties and advantages that a POSA would have found surprising and unexpected as of the priority date."  Specifically, these include that having two guanine residues positioned before the crRNA portion of the sgRNA "discriminated off-target sites effectively," an improvement over a recognized drawback. CVC's arguments to the contrary, based on other sgRNA configurations lacking the double guanine motif also achieving eukaryotic CRISPR are unavailing to their position, according to ToolGen, because more than one feature of embodiments of an invention in an unpredictable art can have their own surprising and unexpected results indicating non-obviousness.

ToolGen relies on the non-obviousness of Claim 1 of the '380 patent in support of its contention that Claims 2-10 are also non-obvious when considered in view of the Jinek 2012 reference in combination with the limitations recited in Count 1 and thus the Board should deny CVC's motion to designate them as corresponding to the Count and including them in this interference.

Finally, ToolGen sets forth its procedural argument that CVC's motion fails to comply with the requirements of 37 C.F.R. §§ 41.202 and 41.203.  The reason is simple: the rule requires a party asking the Board for this remedy to "[e]xplain in detail why the applicant will prevail on priority[.]"  ToolGen argues that CVC made no such showing, and the Board has denied similar motions for this failure, citing Australia v. Leiden, Interference 2 No. 106,007 (RES), 2016 WL 1752729, at *24 (P.T.A.B. Apr. 29, 2016).

For all these reasons, ToolGen asks the Board to deny CVC's Preliminary Motion No. 3.

* '830 Patent Claims CVC Asserts Correspond to the Count in the '127 Interference

1.  A method of introducing a site-specific, double-stranded break at a target nucleic acid sequence in a eukaryotic cell, the method comprising introducing into the eukaryotic cell a Type II Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR)/Cas system, wherein the CRISPR/Cas system comprises: a) a nucleic acid encoding a Cas9 polypeptide comprising a nuclear localization signal, wherein the nucleic acid is codon-optimized for expression in eukaryotic cells, and b) a guide RNA that hybridizes to the target nucleic acid, wherein the guide RNA is a chimeric guide RNA comprising a CRISPR RNA (crRNA) portion fused to a trans activating crRNA (tracrRNA) portion, wherein the guide RNA comprises two guanines at its 5' end, and there are no additional nucleic acid residues between the two guanines at the 5' end and the crRNA portion of the guide RNA; whereby a site-specific, double stranded break at the target nucleic acid sequence is introduced.

2. The method of claim 1, wherein the nuclear localization signal is located at the C terminus of the Cas9 polypeptide.

3. The method of claim 1, wherein the eukaryotic cell is a mammalian cell.

4. The method of claim 3, wherein the mammalian cell is a human cell.

5. The method of claim 1, wherein the nucleic acid encoding the Cas 9 polypeptide is codon-optimized for expression in mammalian cells.

6. The method of claim 1, wherein the target nucleic acid sequence is a genomic sequence located at its endogenous site in the genome of the eukaryotic cell.

7. The method of claim 1, wherein the nucleic acid encoding the Cas9 polypeptide is a vector.

8. The method of claim 1, wherein the Cas9 polypeptide is a Streptococcus pyogenes Cas9 polypeptide.

9. The method of claim 1, wherein the nucleic acid encoding the Cas9 polypeptide is introduced into the eukaryotic cell before introducing the guide RNA into the eukaryotic cell.

10. The method of claim 1, wherein the Cas9 polypeptide is a Streptococcus Cas9 polypeptide.

By Kevin E. Noonan —

On May 20th, Junior Party the University of California, Berkeley; the University of Vienna; and Emmanuelle Charpentier (collectively, "CVC") filed its Substantive Preliminary Motion No. 2 in Interference No. 106,127 (which names ToolGen as Senior Party), asking the Patent Trial and Appeal Board to deny ToolGen benefit of priority to U.S. Provisional Application No. 16/717,324, filed October 23, 2012, pursuant to 37 C.F.R. §§ 41.121(a)(1)(ii) and 41.208(a)(3) and Standing Order ¶ 208.4.1.  The significance of the Board granting this motion would be that CVC would be Senior Party, with all the presumptions benefiting from Senior Party status.  On July 5th, ToolGen filed is opposition to this Motion.

In its Motion No. 2, CVC argued that the Board should deny ToolGen priority benefit to the '324 application because this application does not disclose an operative embodiment falling within the scope of the interference Count, based on party admissions.  Specifically, CVC argued that in the prosecution of the '324 patent application leading to allowance (and declaration of this interference), ToolGen had argued to the Patent Examiner (and PTAB) that "a codon-optimized Cas9 nucleic acid is required for CRISPR-Cas9 to function in eukaryotic cells" and that "a skilled artisan would have no idea what the outcome may be if one were to codon optimize a Cas9 nucleic acid."  This position was consistent with the prokaryotic source of Cas9, and the Board and Examiner relied upon these arguments to find allowable claims in the '324 application (now claims designated as corresponding to the Count in this interference) according to CVC.  All such claims require use of a Cas9-encoding nucleic acid that is codon-optimized for expression in eukaryotic cells, and CVC asserted that ToolGen added this limitation to the claims to overcome anticipation and obviousness rejections based on the prior art.

But, CVC argued, ToolGen's '324 application does not disclose a codon-optimized Cas9 nucleic acid, nor (by ToolGen's own argument according to CVC) would the skilled worker be able to discern such a nucleic acid with any reasonable basis for expecting such an embodiment could be produced using the disclosure in the '324 application.  Accordingly, CVC argued in its motion, ToolGen cannot in this interference renounce these arguments and rely on the priority date of the '324 patent to constitute a constructive reduction to practice for eukaryotic CRISPR-Cas9 embodiments falling within the scope of the interference Count.  Thus, according to CVC, the Board should deny ToolGen priority benefit to the '324 application (and redeclare the interference naming CVC as Senior Party).  The brief contained examples from the '324 prosecution history and at oral argument before the Board in support of its allegations.

ToolGen, characterizing CVC's arguments (as did CVC, citing Zedner v. United States, 547 U.S. 489 (2006), and Springs Window Fashions LP v. Novo Industries, L.P., 323 F.3d 989, 995 (Fed. Cir. 2003)) as sounding in judicial estoppel, argues this is a "misrepresentation of the prosecution history" and that the '324 application provides a constructive reduction to practice of eukaryotic CRISPR as defined under CVC's portion of the Count in this interference (and that CVC does not effectively challenge this disclosure) but not ToolGen's portion of the Count.  ToolGen affirmatively argues that the '324 application "describes a successful experiment using a codon-optimized nucleic acid encoding Cas9 to yield a Cas9 protein complex that functions in eukaryotes to cleave DNA" in support of this assertion.  But more fundamentally, ToolGen argues, Count 1 in the interference does not require codon-optimized Cas9 as part of a eukaryotic CRISPR complex and thus CVC's argument (and Motion) should fail.

ToolGen sets forth the legal basis for denying a party accorded benefit, when the priority document "does not provide a constructive reduction to practice of an embodiment within the count," under 37 CFR §41.208(b); and S.O. ¶¶ 121.3 and 208.4.2 and citing Hunt v. Treppschuh, 523 F.2d 1386, 1389 (CCPA 1975).  Regardless of the distinction between the CVC and ToolGen portions of the Count, ToolGen argues it does not matter because the '324 application "expressly describes the use of a codon-optimized nucleic acid encoding Cas9 to achieve DNA cleavage in a eukaryotic cell, satisfying both halves of Count 1."  And, according to ToolGen, CVC does not dispute (indeed, admits) that the '324 application disclosure satisfies CVC's portion of the Count.  Rather, ToolGen contends, CVC tries to rewrite the Count to include a limitation to codon-optimized Cas9 protein without requesting leave to revise the Count in this manner, providing another reason why its Motion should be denied.

ToolGen distinguishes the circumstances here with the legal requirements for judicial estoppel based on its version of the prosecution history.  According to ToolGen, its argument to the Examiner and the Board was that its claims to eukaryotic CRISPR embodiments were not obvious because the skilled worker would not have had a reasonable expectation of success in view of the cited prior art and hence were non-obvious.  In ToolGen's view, codon-optimization and conjugation with a nuclear localization signals were elements of their claims that overcame "the then-prevailing unpredictability and pessimism" regarding eukaryotic embodiments of CRISPR.  ToolGen's point is that their claims were not enabled by comprising codon-optimized and NLS conjugated Cas9 species, but that such embodiments rendered eukaryotic CRISPR non-obvious.  Nevertheless, ToolGen argues (and explicates in its brief) that its '324 application disclosed three CRISPR embodiments functional in eukaryotic cells and thus is entitled to priority benefit.  It was the Examiner who focused on codon optimization (mistakenly, according to ToolGen) and that error was the basis for its successful appeal to the Board.

ToolGen contends that CVC cites to the prosecution history "selectively and inaccurately," in a rare rhetorical flourish arguing that "[i]ts Motion relies on contextual fragments of arguments, statements with omitted words, and disparate questions and answers, all stitched together like Frankenstein's monster, to assemble a false narrative that ToolGen achieved patentability by focusing on codon optimization, not the unpredictability in prokaryote-to-eukaryote translation."  Interestingly, ToolGen argues that the portion of the Board's interrogation of their representative cited in CVC's Motion No. 2:

*  *  *

and

is misleading because the purported answer above is to a different question.  Properly understood the colloquy reads as follows:

And, according to ToolGen, its answer regarding codon optimization was to a question by another judge on the ex parte panel to a different question ("whether one of ToolGen's pending claims contained limitations as to 'amounts or levels of different things' that would distinguish ToolGen's claims from prior art"):

ToolGen asserts these answers are consistent with its disclosure of codon-optimized Cas9 protein being used to achieve eukaryotic CRISPR conjugated to an NLS.

In addition, ToolGen rebuts CVC's argument that it told the PTO during ex parte prosecution that codon optimization was itself unpredictable.  According to ToolGen, prior to its achievement of using CRISPR in eukaryotic cells "there were multiple reasons . . . why an ordinary artisan would have had no reasonable expectation of successfully transitioning prokaryotic CRISPR/Cas9 to eukaryotic cells" of which codon optimization was but one.  This argument is consistent with what Broad has argued in Interference Nos. 105,048 and 106,115 regarding the unpredictability of adapting CRISPR to the eukaryotic environment and with ToolGen's own expert (who testified during ex parte prosecution that codon optimization might cause unpredictable effects on Cas9 folding and hence operability in a eukaryotic cell).

Turning to the question of judicial estoppel, ToolGen argues that it took no position during ex parte prosecution that is contrary to its position in this interference and hence there is no factual or legal basis for CVC's judicial estoppel argument.  Moreover, ToolGen argues, there is no basis for believing that the Board during ex parte prosecution reversed the Examiner and held ToolGen's claims to be non-obvious based on unpredictability of codon optimization.  Nor according to ToolGen does prosecution history estoppel cure these purported deficiencies in CVC's argument, because it is inapplicable to the priority question before the Board.

ToolGen's primary affirmative argument in rebutting CVC's challenge to its priority claim is that CVC did not dispute or establish that the '324 application failed to satisfy the disclosure requirements for priority benefit in an interference.  ToolGen maintains that CVC's expert erred (and was coached to err, based on the expert's declaration evidence) by not considering the disclosure question properly from the point of view of the ordinarily skilled worker.  This prejudice renders his evidence "both irrelevant and unreliable" according to ToolGen and should be disregarded, citing AAT Bioquest, Inc. v. Texas Fluorescence Laboratories, Inc., 2015 WL 1738402, *5-*7 (N.D. Cal. 2015), for this principle.  ToolGen also rebuts CVC's argument that the '324 specification did not disclose human codon-optimized Cas9, stating that the passage below from the '324 specification makes this disclosure (albeit "just not in CVC's quoted words") that would be understood by the skilled artisan, something both sides' experts agreed with (with emphasis in brief):

The Cas9-coding sequence (4,104 bp), derived from Streptococcus pyogenes strain M1 GAS (NC_002737.1), was reconstituted using the human codon usage table and synthesized using oligonucleotides.

ToolGen completes its rebuttal of CVC's arguments by asserting that an ordinary artisan would not have required a sequence listing to appreciate that the '324 specification disclosed codon-optimized Cas9, citing Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1368 (Fed. Cir. 2006), and that a nucleic acid construct encoding such a codon-optimized Cas9 would not need "enhanced" expression to display the CRISPR phenotype.

For all these reasons ToolGen asks the Board to deny CVC's Preliminary Motion No. 2.