The University of California, Berkeley alleged in documents submitted Tuesday to the US Patent and Trademark Office that the Broad Institute of Harvard and MIT employed “deceit” to win patent rights to CRISPR-Cas9 in eukaryotic cells.
The documents were filed as part of UC Berkeley's motions list, which represents the first step in proceedings initiated by the USPTO in June to settle priority issues between 10 patent applications filed by UC Berkeley in 2018 and 13 patents previously awarded to the Broad Institute.
The dispute originated in 2011 and 2012, when Jennifer A. Doudna of UC Berkeley and Emmanuelle M. Charpentier of Umeå University in Sweden were researching CRISPR-Cas9. Simultaneously, Feng Zhang ’04 of the Broad Institute was working on the same problem, albeit separately.
CRISPR is a gene-editing technology that scientists say has revolutionary potential applications in the biomedical sphere, including helping to cure genetic diseases such as Huntington’s disease, sickle cell anemia, and cystic fibrosis.
Though Doudna published her findings and applied for a patent before Zhang did, her work focused on CRISPR-Cas 9 in test tubes whereas Zhang’s research focused on its usage in human and mouse cells. The USPTO awarded the Broad Institute rights to use CRISPR-Cas9 for eukaryotic cell-editing methods in 2014.
Most of CRISPR’s potential industrial and commercial applications concern its use in higher order, eukaryotic cells.
The documents filed Tuesday by UC Berkeley claim that — “in pattern of deception” — Zhang and other Broad scientists presented “cherry-picked data” and “materially misstated facts” in order to prove an earlier date of invention.
“Broad withheld or misrepresented material information with the intent to deceive the Office, in order to secure allowance of the involved patents,” the UC Berkeley lawyers stated in their list of intended motions.
The documents cited a 2015 email sent to Doudna from Shuailiang Lin, one of Zhang’s former lab members.
“My lab notebooks, emails and other files like dropbox or gel pictures recorded every step of the lab's failure process. I am willing to give more details and records if you are interested or whoever is interested to clear the truth,” Lin wrote, according to the document.
The Broad Institute wrote in a statement on its website that UC Berkeley’s claims are “baseless” and do not supplant the lack of “any actual evidence of UC’s work in eukaryotic cells.”
“The UC repeats its previous false claim around an email from a student with an expiring visa who emailed Dr. Doudna seeking a job and promising information. The student was hired by the UC system within days. The email was inaccurate and contrary to all records,” the statement read.
The Broad added that UC Berkeley’s choice of tactics was “deeply unfortunate.”
“It is time for all institutions to move beyond litigation and instead work together to ensure wide, open access to this transformative technology,” the statement concluded.
Both the Broad Institute and UC Berkeley have licensed CRISPR-related patents to for-profit companies. After the patent office’s 2017 decision, Editas — the Broad Institute’s commercial surrogate and primary licensee of CRISPR — went up in value from $765 million to $1 billion, according to Forbes. A patent for CRISPR-Cas9 is valued at approximately $265 million.
This round of litigation will continue in a conference call between the two parties on August 5, according to legal documents.
—Staff writer Juliet E. Isselbacher can be reached at [email protected] Follow her on Twitter @julietissel.