Knowledge Of A Goal Does Not Render Its Achievement Obvious

In Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, Nos. 12-1485, -1486, -1487 (Fed. Cir. Dec. 30, 2013), the Federal Circuit reversed the Board's decision that claims 10 and 12 of U.S. Patent No. 6,610,545 ("the '545 patent") were obvious; vacated and remanded the Board's decision that the claims of U.S. Patent No. 6,833,252 ("the '252 patent") were obvious; and dismissed as moot the Board's decision regarding U.S. Patent No. 7,309,605 ("the '605 patent").

Institut Pasteur and Universite Pierre et Marie Curie (collectively "Pasteur") own the '605, '545, and '252 patents, which claim methods and tools for inserting or deleting genes at targeted locations in the chromosomes of living cells ("gene targeting") using group I intron encoded endonucleases ("GIIE endonucleases"). Precision BioSciences, Inc. ("Precision") requested inter partes reexamination of each patent, and the examiner rejected a number of Pasteur's claims as obvious during reexamination. The Board affirmed the examiner's rejections, and Pasteur appealed. While the appeal was pending, the involved patents expired.

The Court dismissed as moot the appeal relating to the '605 patent, finding that Pasteur substantively narrowed the scope of claim 14 during reexamination by amending the claim to recite that the targeted DNA was "chromosomal." The Court rejected Pasteur's argument that the scope was unchanged because the claim was already limited to chromosomal DNA. Specifically, Pasteur argued that claim 14 was limited to "chromosomal DNA" even before the amendment because it recited that the targeted DNA undergoes homologous recombination with a newly introduced plasmid whose sequence is "homologous to the sequence of [a] chromosome." Slip op. at 13 (alteration in original) (citation omitted). The Court rejected this reasoning, finding that the newly introduced plasmid may be homologous to both chromosomal and nonchromosomal DNA, and, therefore, the original claim did not exclude homologous recombination in nonchromosomal DNA. Therefore, the Court found that the amendment limiting the claims to chromosomal DNA changed the scope of the claims. Because under 37 C.F.R. § 1.530(j) and (k), the PTO cannot issue an amended claim for an expired patent if the amendment substantively changes the claim's scope, the Court dismissed Pasteur's appeal relating to the '605 patent as moot.

The Federal Circuit next considered the Board's findings of obviousness with regard to...