Institut Pasteur v. Focarino

The board must give full consideration to resources which teach away from claimed inventions outcome.

Opinion (Taranto): Precision BioSciences (“Precision”) requested inter partes reexamination of Institut Pasteur’s (“Pasteur”) patents describing methods and tools for site specific gene insertion into eukaryotic chromosome. The Patent Trial Board of Appeals (“Board”) affirmed rejection of the claims as obvious extensions of prior art. Pasteur appealed the Board’s holding that prior art made its claims that endonuclease could produce targeted gene transfer into chromosomal DNA in eukaryotic cells obvious. The Court of Appeals for the Federal Circuit determined that the Board did not give proper consideration to prior art which taught that targeting chromosomal DNA was toxic to the cells, nor did it consider high industry praise for Pasteur’s technique. The Board relied solely on an abstract (“Dujon”) which taught that targeted gene transfer was successful in yeast cells outside yeast cells. Furthermore, the board failed to consider more substantial prior art which showed that such cell cleavages in eukaryotic cells was highly toxic. As a result of its misreading of Dujon, the Board gave inadequate consideration to industry praise for Pasteur’s method and its use in several published articles. The Court dismissed other claims related to claim amendments affecting scope because reissuance did not occur prior to the expiration of the challenged patent rendering the issue moot. The Court DISMISSED the moot issues, and REVERSED the claim of non-obviousness.