IN RE: APPLICATION OF GEORGE W. SCHLICH GEORGE W. SCHLICH, Petitioner, Appellant,
THE BROAD INSTITUTE, INC., FENG ZHANG, NAOMI HABIB, and LE CONG, Respondents, Appellees.
FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF
MASSCHUSETTS [Hon. F. Dennis Saylor IV, U.S. District Judge]
Melissa Arbus Sherry, with whom Michael A. Morin, Ryan C.
Grover and Latham & Watkins LLP were on brief, for
Raymond N. Nimrod, with whom William B. Adams, Matthew D.
Robson and Quinn Emanuel Urquhart & Sullivan LLP were on
brief, for appellees.
Torruella, Lipez, and Kayatta, Circuit Judges.
TORRUELLA, Circuit Judge.
George W. Schlich, a patent agent for Intellia Therapeutics,
Inc., appeals from the district court's denial of a
petition for discovery under 28 U.S.C. § 1782. That
statute allows a party to file a petition in district court
to obtain discovery for use in a foreign proceeding.
Here, Schlich sought discovery from Respondents-Appellees The
Broad Institute, Inc., Dr. Feng Zhang, Dr. Naomi Habib, and
Dr. Le Cong (collectively, "Broad") in relation to
opposition proceedings currently before the European Patent
Office ("EPO"). In the opposition proceedings, Schlich
challenges the validity of several of Broad's European
patents involving CRISPR-Cas9 technology used in the
programmable genome editing of mammalian cells. Schlich
contends that the district court erred in requiring him to
prove the EPO's receptivity to the district court's
assistance in providing the requested discovery, and in
denying the request for discovery under § 1782 for lack
of relevance to the foreign proceeding. After careful
consideration, we affirm.
Broad Institute, Inc. is a nonprofit medical research
organization founded in 2003 by Eli and Edythe Broad,
alongside Harvard University, Harvard-affiliated hospitals,
and the Massachusetts Institute of Technology. The nonprofit
launched in 2004, focusing on the development of genomic
research for the advancement of medical science. Dr. Feng
Zhang is a member of the Broad Institute, and both Dr. Naomi
Habib and Dr. Le Cong are Postdoctoral Associates who worked
with Dr. Zhang. Dr. Zhang dedicates part of his research to
the CRISPR-Cas9 system for genome editing.
is a "genome editing company" whose primary focus
is the development of "potentially curative
therapeutics" using the CRISPR-Cas9 system. Schlich is a
European patent attorney providing legal services to Intellia
in the EPO opposition proceedings against four of Broad's
patents related to CRISPR-Cas9. Dr. Jennifer Doudna is a
founding member of Intellia, and the company holds an
exclusive license to Dr. Doudna's intellectual property
in the CRISPR-Cas9 therapeutics field.
CRISPR-Cas9 system emerged from research on certain bacteria
that can precisely target and "carve up" genetic
material. When applied to human DNA, the potential curative
value of this technology is allegedly tremendous, and its
potential worth is estimated to be in the billions of
Doudna and Dr. Emmanuelle Charpentier led a team working on
the bacteria associated with the CRISPR-Cas9 technology and,
on May 25, 2012, filed a provisional patent
application at the United States Patent and Trademark
Office ("U.S.P.T.O.") for certain "methods and
compositions" for "DNA modification."
Additionally, they published an article describing their
findings in June 2012. See Martin Jinek et al.,
A Programmable Dual-RNA-Guided DNA Endonuclease in
Adaptive Bacterial Immunity, 337(6096) Science 816
October 5, 2012, Dr. Zhang and other members of the Broad
team, including Dr. Habib and Dr. Le Cong, submitted a
manuscript that "reported the first successful
programmable genome editing of mammalian cells using
CRISPR-Cas9." On December 12, 2012, Broad filed its
first provisional patent application with the U.S.P.T.O.
relating to genomic sequence manipulation, and subsequently
filed several other related provisional patent applications
in the following months.
on two provisional patent applications filed by Broad in
December 2012 and January 2013, Thomas Kowalski, a U.S.
Patent Attorney, filed a Patent Cooperation Treaty
("PCT") application on behalf of Broad. Since
Broad's provisional patent applications included various
inventions, Kowalski and Dr. Smitha Uthaman conducted an
inventorship study to determine the different inventions and
the corresponding contributions from each inventor.
Subsequently, Broad filed ten separate PCT applications. The
subject matter of the initial provisional patent applications
was divided among these PCT applications listing different
inventors and a "divided priority" based on the
findings of the inventorship study. Eventually, the PCT
applications resulted in several European patents, which
Intellia now challenges at the EPO.
filed oppositions with the EPO seeking the revocation of four
of Broad's European patents. At the opposition
proceedings, Schlich argued, among other things, that
Broad's European patents cannot claim right of priority
to Broad's provisional patent applications filed with the
U.S.P.T.O. because the applicants listed in the latter are
not the same as those listed in the subsequent PCT
applications, as is required by European patent law. In
response, Broad argued that United States law, and not
European law, should determine whether its European patents
can claim priority to the provisional applications because
those provisional patent applications were filed in the
United States. According to Broad, United States law allows
multiple inventions to be disclosed and multiple inventors to
be listed in a provisional application without requiring that
every inventor have contributed to every invention. The right
of priority from that provisional application could then be
severed into different PCT applications without requiring
complete identity between the inventors listed in both
applications, as long as the applicant "claim[s]
priority in [the PCT] application with regard to an invention
to which [he or she] contributed." In support of its
contention that the proper procedure was followed here, Broad
submitted a declaration from Kowalski describing the process
he followed and the findings of his inventorship study.
September 2016, Schlich filed an application for discovery
under 28 U.S.C. § 1782 in the United States District
Court for the District of Massachusetts. Schlich sought
documents and testimony from Broad. The discovery sought
focused on the inventorship study conducted by Kowalski and
Dr. Uthaman, as well as the assignment of the relevant rights
over the corresponding inventions. Broad opposed discovery
and a hearing was held on October 24, 2016. At the hearing,
the parties disputed, among other things, whether the
discovery sought was relevant to the EPO proceedings and
whether the EPO would be receptive to the requested
discovery. Broad informed Schlich and the ...