Lack of Reasonable Expectation of Success Prohibits Finding of Interference-in-Fact

In University of California v. Broad Institute, Inc., the Federal Circuit affirmed the Board’s determination that there was no interference-in-fact between Univ. of Cal.’s (“UC”) pending patent application and several patents and applications owned by Broad.  Broad’s claims were directed to the use of a CRISPR-Cas9 system in eukaryotic cells, while UC’s claims did not refer to a particular cell type or environment.  The Board found no reasonable expectation of success in applying the CRISPR-Cas9 system in eukaryotic cells and therefore UC’s claims would not have rendered Broad’s claims obvious.  Because it found that Broad’s claims were separately patentable over UC’s claims it terminated the interference.

On appeal, UC argued that the Board adopted too “rigid” a test for obviousness, requiring that the prior art contain specific instructions.  The Court found that the Board had not required specific instructions in the prior art describing how to apply CRISPR-Cas9 in eukaryotic cells to support a reasonable expectation of success.  Rather, the Court found that the Board properly considered the lack of specific instructions in conjunction with additional evidence supporting the Board’s conclusion.