Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

The Regents of the University of California v. The Broad Institute, Inc., Appeal Nos. 2022-1594, -1653 (Fed. Cir. May 12, 2025)

Must an inventor know their invention will work to demonstrate that they “conceived” of it?  In this week’s Case of the Week, the Federal Circuit says no—conception does not require that an inventor know with certainty their idea will work.  This appeal considers the PTAB’s conclusions of Interference No. 106,115 over claim 18 of U.S. Patent No. 8,697,359 (corresponding to U.S. Patent Application No. 15/981,807).  After the PTAB concluded The Broad Institute et al. (Broad) won priority to the invention at hand, Regents of the University of California et al. (Regents) appealed.  (Broad) cross-appealed.  In a very fact-heavy opinion, the Federal Circuit ultimately remanded the case to the PTAB in favor of Regents, and dismissed Broad’s cross-appeal.

The main question in the relevant interference proceeding was which party first invented the use of single-guide RNA in the CRISPR-Cas9 system to genetically edit eukaryotic cells.  The use of the single-guide RNA simplified the gene editing system, which previously required two different RNA pieces.  And, while CRISPR-Cas9 had been used in prokaryotes (e.g., bacterial cells) prior to the filing of the patent applications at hand, the application of the gene editing in eukaryotic cells (e.g., mammalian cells) had not.

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder

Contributors:

Ann Bernert, Associate