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ARTICLE · 07 FEBRUARY 2014

Knowledge Of A Goal Does Not Render Its Achievement Obvious

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, Nos., the Federal Circuit reversed the Board’s decision that claims 10 and 12 of U.S. Patent No. 6,610,545 were obvious; vacated and remanded the Board’s decision that the claims of U.S. Patent No. 6,833,252 were obvious; and dismissed as moot the Board’s decision regarding U.S. Patent No. 7,309,605.

United StatesIntellectual Property
Amelia Baur
Amelia Baur
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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

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