U.S. appellate judges seem divided on gene editing patents decision

(Reuters) - U.S. appeals court judges appear divided over whether to allow a research center affiliated with MIT and Harvard to keep patents potentially worth billions of dollars on a groundbreaking gene editing technology known as CRISPR.

Patents on the technology that could revolutionize treatment of genetic diseases and crop engineering are held by the Broad Institute, which was challenged in court by a rival team associated with the University of California at Berkeley and University of Vienna in Austria.

Their lawyers argued at a hearing on Monday in the U.S. Court of Appeals for the Federal Circuit in Washington that the Broad Institute’s contributions were obvious and that an administrative court decision allowing Broad’s patents to stand should be reversed.

One of the three judges hearing the case said she will likely side with Broad and affirm the administrative court, the Patent Trial and Appeal Board (PTAB). The two others judges did not say how they would rule.

The court did not say when it would publish a decision.

“Based on the oral arguments today, we are even more confident the Federal Circuit will affirm the PTAB’s judgment and recognize the contribution of Broad, MIT and Harvard in developing this transformative technology,” Broad said in a statement.

Berkeley said in a statement that “based on the questioning today, we are optimistic that the court has serious doubts about several aspects of the PTAB’s decision.”

In 2012, researchers at Berkeley and Vienna jointly applied for the first CRISPR patent.

A team at Broad applied for a patent months later, opting for a fast-track review process. It became the first to obtain a CRISPR patent in 2014, and has since obtained additional patents.

In 2015, Berkeley and Vienna petitioned PTAB to launch a so-called interference proceeding, claiming the Broad patents covered the same invention as their earlier application.

Broad countered that its patent represented the real breakthrough because it described the use of CRISPR in so-called eukaryotic cells, which include plant and animal cells.

PTAB said in a February 2017 decision that there was “no interference” between Berkeley and Vienna’s application and Broad’s patents, meaning both can be granted.

That decision has created confusion over which institutions are entitled to royalties for commercial applications of CRISPR in the biotechnology and agriculture industries.

Donald Verrilli, a lawyer for Berkeley, said at Monday’s hearing that Broad simply used conventional techniques to build upon on Berkeley’s research in obvious ways.

Raymond Nimrod, a lawyer for Broad, said statements by Berkeley’s own researchers contradict that argument.

Reporting by Jan Wolfe; editing by Grant McCool