Morrison Foerster Wins Precedential CRISPR Patent Appeal for SNIPR

On Friday, July 14, 2023, the U.S. Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) decision to invalidate five patents related to gene-editing technology owned by SNIPR Biome (SNIPR), noting that the patents were covered by the interference-free America Invents Act (AIA).

The precedential opinion restores Morrison Foerster client SNIPR’s patents stating, “Because pure AIA patents may not be part of the interferences, the director erred by subjecting the SNIPR patents to an interference.”

SNIPR is a pioneering early-stage biotechnology company that uses gene-editing technology (also known as CRISPR) to create medicines. After the United States Patent and Trademark Office (USPTO) recognized SNIPR’s major contributions to this field with five U.S. patents, the Rockefeller University (Rockefeller) sought to use an arcane pre-AIA interference proceeding to challenge SNIPR’s patents’ validity. The USTPTO’s PTAB agreed with Rockefeller that SNIPR’s post-AIA patents could be challenged in a pre-AIA interference because Rockefeller alleged that its application predated the AIA. In 2021, the PTAB ordered SNIPR’s patent claims cancelled, based on Rockefeller’s challenge.

The Federal Circuit reversed the PTAB, agreeing with SNIPR’s interpretation of the AIA. The Court held that the AIA replaced the statutory provisions authorizing interference proceedings from the Patent Act and eliminated invention priority, the core issue in an interference, as a requirement for patentability. Instead, the AIA requires that the patent applicant be the first inventor to file. Because the text, structure, and history made clear that Congress intended those changes to be comprehensive for post-AIA patents like SNIPR’s, the USPTO lacked statutory authority to declare an interference with SNIPR’s patents.

The Morrison Foerster team representing SNIPR was led by Washington, D.C. appellate attorneys Brian Matsui and Seth Lloyd, with patent prosecution partner Janet Xiao (Palo Alto), patent litigation of counsel Parisa Jorjani (San Francisco), and patent litigation senior counsel Matthew Kreeger (San Francisco).