May 24, 2023
On May 17, 2023, Weil won a major victory for Synthego when the Patent Trial and Appeal Board (PTAB) decisively invalidated two Agilent patents (including all 63 claims in those patents) that were asserted against Synthego and the CRISPR community more broadly. The decision, which is the first by the PTAB to address CRISPR technology, is broadly significant because it frees CRISPR research and related pharmaceutical development from Agilent’s effort to impede that critical work.
CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) is the Nobel-prize winning innovation that allows relatively easy editing of DNA, and offers huge promise to fight diseases such as sickle cell anemia and many others. Unfortunately, road blocks in the CRISPR field have the potential to stymie tremendous advances in human health.
Weil helped Synthego execute a proactive litigation strategy in which we filed a declaratory judgment action in the Northern District of California in the face of Agilent’s threatened patent infringement claims, and then followed that with a thoughtfully documented challenge to the validity of Agilent’s patents before the PTAB. In reaction, Agilent filed a preliminary injunction motion, which Weil fended off on behalf of Synthego on an expedited timeframe.
The two PTAB decisions invalidating the Agilent patents spanned more than one hundred pages of analysis that closely tracked Weil’s arguments for Synthego.
Weil Patent Litigation partner Derek Walter led the impressive effort in crafting and arguing Synthego’s PTAB challenges in the complex area of CRISPR guide RNA. He was supported by Patent Litigation partner Adrian Percer and associate Shawn Chi, as well as two associates who are presently clerking, Concord Cheung and Ernie Fok. Patent Litigation and Life Sciences Co-Head Edward Reines also advised on the matter.