Case of the Day: In re Schlich
Posted on December 23, 2016
The case of the day is In re Schlich (D. Mass. 2016). It arises out of competing claims to invention of CRISPR/Cas9, a new gene editing technology that has gotten a lot of attention in the popular press. Jennifer Doudna of UC Berkeley and her collaborator, Emmanuelle Charpentier, claimed to be the inventors, and Doudna’s company, Intellia Therapeutics, brought an opposition proceeding in Europe seeking to invalidate patents obtained there by the Broad Institute, listing another group of putative inventors, Feng Zhang, Le Cong, Patrick Hsu, and Fei Ran.
Intellia’s European counsel, George Schlich, brought a § 1782 application in Boston, seeking discovery from the Broad Institute and some of its scientists regarding inventorship. The statutory factors were satisfied, and the court found that there was no attempt at circumvention of foreign proof-gathering restrictions and that the request was not unduly burdensome. The key issues were receptivity and whether the respondent was a party to the foreign proceeding.
The Broad Institute was a party to the European case, but Schlich argued that the test under this factor is not whether the party from whom discovery is sought is a party, but rather whether there is a mechanism for discovering the information in the foreign case. This is an incorrect extrapolation from cases where the issue was that discovery could be obtained in the foreign case from an entity closely related to a party to the foreign case. The court correctly rejected Schlich’s argument.
On receptivity, the issue was that the discovery related to an issue—inventorship—that is not litigated in EPO opposition proceedings. Schlich had a somewhat complex argument that I won’t cover here, but at the end the court determined that the EPO would not determine the inventorship question and thus that receptivity weighed against the application. This is less clearly correct, because it comes close to the position that you have to show the evidence would be admissible in the foreign proceeding to prevail, which is incorrect. Would it not be better to let the EPO say whether the evidence of inventorship is useful to it?