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In re Application of Schlich

United States Court of Appeals, First Circuit

June 20, 2018

IN RE: APPLICATION OF GEORGE W. SCHLICH GEORGE W. SCHLICH, Petitioner, Appellant,
v.
THE BROAD INSTITUTE, INC., FENG ZHANG, NAOMI HABIB, and LE CONG, Respondents, Appellees.

          APPEAL 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 appellant.

          Raymond N. Nimrod, with whom William B. Adams, Matthew D. Robson and Quinn Emanuel Urquhart & Sullivan LLP were on brief, for appellees.

          Before Torruella, Lipez, and Kayatta, Circuit Judges.

          TORRUELLA, Circuit Judge.

         Petitioner-Appellant 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. [1] 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").[2] 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.

         I. Background

         A. Factual Background

         The 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.

         Intellia 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.

         The 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 dollars.

         Dr. 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[3] 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 (2012).

         On 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.

         Based 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[4] 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.

         Schlich 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.

         B. Procedural History

         In 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 ...


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