T

he fight over who deserves key patents on the CRISPR-Cas9 genome-editing technology will have slightly less celebrity wattage than one side hoped: The three judges hearing the dispute at the US Patent and Trademark Office denied a request by the University of California to subpoena Harvard biologist George Church and UC student Shuailiang Lin, who formerly worked at the Broad Institute, which was awarded the fundamental CRISPR patent in 2014.

“UC has not explained why there would be a sufficient basis for a motion for additional testimony or for subpoena,” the judges ruled in an order published late Wednesday night.

UC wanted to depose Lin because he has made claims that seemed to weaken the case that Broad bioengineer Feng Zhang, in whose lab Lin worked from late 2011 to early 2012, deserved the key CRISPR patent. Zhang, Lin said in a 2015 email asking UC Berkeley biochemist Jennifer Doudna for a job, failed to make CRISPR work during that time. The Broad group succeeded, Lin alleged, only after Zhang and his colleagues read a seminal 2012 paper by Doudna and her team in which they constructed a CRISPR system that succeeded in cutting DNA in test tubes, the first step toward precise genome-editing.

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As for Church, UC argued that he could testify to two points it considers pivotal to its case. One is that Church (and perhaps Zhang) was inspired by Doudna’s paper, making the CRISPR breakthroughs they independently reported in 2013 (editing genomes in human and mouse cells) an obvious extension of her work not deserving of the patent awarded to the Broad based on Zhang’s breakthrough.

The second point would have involved whether that achievement could have been made by any POSITA, as patent lawyers say — a “person of ordinary skill in the art” of genetics. UC might have hoped that Church would call his work, and perhaps Zhang’s, just straightforward extensions of Doudna’s achievement and, by implication, not deserving of the patent.

The patent judges didn’t buy it.

“The standard for granting requests” for additional testimony, with or without a subpoena, “is high and requires specific bases for expecting that the discovery will be productive,” the judges wrote. “UC fails to explain why testimony from either Dr. Lin or Dr. Church regarding the timing of actual work done by Broad scientists would be productive.”

That suggests that the patent decision will turn on something other than the timing of discoveries — or at least that timing isn’t currently a focus. “Priority is not yet at issue,” the judges added. 

While the patent proceeding sometimes feels as if it has been going on since Crick and Watson discovered the structure of DNA, it’s just getting started. The judges haven’t even ruled on what the proper counts — the claims on which their decision will turn — will be.

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