BROAD Et Al. REPLY 2

Filed on behalf of: Junior Party, Broad
By: Steven R. Trybus

Harry J. Roper
Paul D. Margolis
Jenner & Block LLP
353 North Clark Street
Chicago, IL 60654
Telephone: 312-222-9350
Facsimile: 312-527-0484
strybus@jenner.com
By: Raymond N. Nimrod

Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue
New York, NY 10010
Telephone: 212-849-7000
Facsimile: 212-849-7100
raynimrod@quinnemanuel.com
UNITED STATES PATENT AND TRADEMARK OFFICE

____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
THE BROAD INSTITUTE, INC., MASSACHUSETTS INSTITUTE OF
TECHNOLOGY, and PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
(Patents 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308;
8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641; and Application 14/704,551),
Junior Party,
v.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, UNIVERSITY
OF VIENNA, and EMMANUELLE CHARPENTIER
Application 13/842,859,
Senior Party.
Patent Interference No. 106,048 (DK)
BROAD et al. REPLY 2
TABLE OF CONTENTS
Page
I.
INTRODUCTION AND SUMMARY ................................................................................1
II.
STATEMENT OF PRECISE RELIEF REQUESTED ........................................................2
III.
DESCRIPTION OF APPENDICES ....................................................................................3
IV.
ARGUMENT .......................................................................................................................3
V.
A.
Jinek 2012 Did Not Trigger Broads CRISPR Work In Eukaryotes, Nor
Did Broads Eukaryotic Success Depend On Jinek 2012s Disclosure ..................3
B.
UC Improperly Conflates Motivation And Expectation Of Success .......................5
C.
The Alleged Later Success Of Others In 2012 Does Not Show An

Expectation Of Success, Nor Is It Prior Art For The Interference-in-Fact
Inquiry ......................................................................................................................9
D.
UCs Prokaryotic Protein Examples Did Not Provide An Expectation Of

Success For CRISPR-Cas9 In Eukaryotic Cells ....................................................11
E.
UC Misconstrues And Takes Statements Of Broad Scientists Out Of

Context ...................................................................................................................14
CONCLUSION ..................................................................................................................15
TABLE OF AUTHORITIES
Page(s)
CASES
In re Cyclobenzaprine Hydrochloride,
676 F. 3d 1063 (Fed. Cir. 2012).................................................................................................6
Medichem v. Rolabo,
437 F.3d 1157 (Fed.Cir. 2006)...................................................................................................6
ii
1
2
I.
INTRODUCTION AND SUMMARY

Broads Motion 2 for judgment of no interference-in-fact should be granted; UCs
involved claims, if treated as prior art, do not anticipate or render obvious Broads involved
claims. UC does not dispute that its claims, which are unlimited as to environment, do not
anticipate Broads claims, which explicitly require operability in a eukaryotic cell. UC also fails
to rebut Broads evidence that the subject matter of Broads involved claims was not obvious, at
least because a person of ordinary skill had no reasonable expectation that the prokaryotic
CRIPSR-Cas9 system could be successfully applied to eukaryotic cells.
One of UCs principal arguments is that the Jinek 2012 publication was the trigger point
10
that led others to quickly adapt the Type-II CRISPR-Cas system to eukaryotic cells using
11
conventional techniques. UC Opp. 2 at 1. According to UC, Jinek 2012s disclosure of the
12
three necessary CRISPR components triggered the work of others, including the Broad
13
scientists, going so far as to argue that Broads invention depended entirely on Jinek 2012.
14
UC Opp. 2 at 14 (emphasis added). The evidence, however, shows that Broads eukaryotic work
15
began in 2011 and achieved success before Jinek 2012. UCs attempt to tie Broads eukaryotic
16
invention to Jinek 2012 is contrary to the evidence and not relevant to the issue at handthe
17
separate patentability of the use of CRISPR/Cas9 in eukaryotic cells.
18
UC also erroneously conflates motivation and expectation of success, asserting
19
expectation of success is shown by multiple groups attempting to adapt CRISPR to eukaryotes in
20
2012. The fact that groups were conducting experiments to adapt CRISPR to eukaryoteswhere
21
the potential reward was hugeshows motivation, not a reasonable expectation of success.
22
Similarly, statements that eukaryotic experiments were clearly worth a try and that CRISPR
23
might be repurposed for genome engineering do not indicate a reasonable expectation of
24
success; they reflect a possibility of success, however remote. UC Opp. 2 at 15.

1
UC also relies on the alleged actual successes of others in late 2012 as showing an
expectation of success. However, later success does not equate to or prove a reasonable
expectation of success prior to the success, i.e., at the time that Jinek 2012 published, no matter
how difficult or easy the task actually turned out to be in hindsight. UC also erroneously argues
that the later work, reflected in pending patent applications, constitutes prior art for purposes of
the analysis here. Broads work antedates the other work relied upon by UC and these patent
applications were not published or otherwise publically available as of December 12, 2012.
UC further asserts that the alleged prior success in using four prokaryotic proteins in
eukaryotic cells shows an expectation that most prokaryotic proteins of interest could be
10
routinely used in eukaryotic cells. However, there are thousands of different types of
11
prokaryotic proteins. Ex. 2013, Greider tr. at 208:1-3. Successful adaption of four proteins, out
12
of thousands, would not have provided a reasonable expectation of success for adapting other
13
prokaryotic proteins. Indeed, UCs expert disavowed such a position. Moreover, none of UCs
14
examples involved an RNA component, which, in the words of UCs experts, constitutes a
15
major difference. The prior history of failed attempts to adapt actual prokaryotic protein-
16
RNA complexes to eukaryotes would have added to the uncertainty of adapting CRISPR-Cas9.
17
UC failed to rebut the evidence that a person of ordinary skill in the art in 2012 simply
18
had no reasonable expectation of successfully adapting Type II CRISPR systems for use in
19
eukaryotes. Broads Motion 2 should be granted.
20
II.
21
STATEMENT OF PRECISE RELIEF REQUESTED

Broad requests that Motion 2 be granted with a judgment of no interference-in-fact.
22
III.
DESCRIPTION OF APPENDICES
Appendix 1 is a list of Exhibits cited in this motion. Appendix 2 is the Statement of
Material Facts, including Broads statement of facts, UCs statement of alleged facts and Broads
statement of facts in support of this Reply.
IV.
ARGUMENT
6
7
A.
As with its own Motion 4 (Paper 57 at 19-20), UCs opposition to Broads Motion 2
Jinek 2012 Did Not Trigger Broads CRISPR Work In Eukaryotes, Nor Did
Broads Eukaryotic Success Depend On Jinek 2012s Disclosure
argues that Jinek 2012 was the trigger point that led others to quickly adapt the Type-II
10
CRISPR-Cas system to eukaryotic cells using conventional techniques. UC Opp. 2 at 1; see
11
also UC Opp. 2 at 10-14. UC incorrectly asserts that this alleged rapid adaptation shows a
12
reasonable expectation of success once Jinek 2012 disclosed the three necessary CRISPR Type
13
II components (Cas9, tracrRNA and crRNA) and erroneously assumes that Jinek 2012 triggered
14
the work of others, including the Broad scientists. UC Opp. at 8, 12-13. For the Broad, UC
15
asserts that:
16
17
18
19
20
21
admissions by Zhang lab members show that the [eukaryotic] invention that
Broad argues is separately patentable from UCs claims depended entirely on
UCs disclosure [in Jinek 2012] of the necessary components of the Type-II
CRISPR-Cas system that are recited in UCs claims.
UC Opp. 2 at 13-14 (emphasis added).
As explained in more detail in Broads Opposition 4, Jinek 2012 did not trigger the
22
Broads CRISPR work in eukaryotic cells, nor did the Broads success depend at all on Jinek
23
2012. By early 2011, Junior Partys lead scientist Feng Zhang had already conceived of the idea
24
of, and began experiments, adapting CRISPR-Cas9 systems to function in eukaryotic cells. See
25
Fact 117; Ex. 2412; Paper 53; Ex. 2009, Simons.3d 11.102. Dr. Zhangs January 2012 grant
26
proposal to the NIH set forth the design of a mammalian CRISPR expression system using
3
four componentsCas9 protein, a pre-crRNA guide RNA array, tracrRNA, and RNase III. Ex.
2411 at 16 (caption for Figure 4). Cong 2013 reported Broads success with that four-component
CRISPR-Cas system, stating that Cotransfection of all four required CRISPR components
resulted in efficient cleavage in eukaryotic cells. Ex. 1055 at 820. Thus, UCs contention that
Broads eukaryotic invention depended entirely on Jinek 2012 is completely false. 1
Indeed, UCs own evidence shows that Broads scientists designed successful eukaryotic
experiments before Jinek 2012. UCs Exhibit 1475 includes a January 11, 2012, email from a
Zhang lab member proposing experiments in human cells using SpCas9 protein, tracrRNA and
the CRISPR array (pre-crRNA), and another proposed an experiment using mature crRNA
10
instead of the CRISPR array. In an earlier email exchange, dated October 24, 2011, Zhang lab
11
members discussed the use of tracrRNA even when transfecting mature crRNA instead of the
12
CRISPR array. In response to a proposal to try to transfect crRNA and Csn1 [Cas9] in human
13
cells, Dr. Zhang responded by stating that I dont think transfecting crRNA alone will work. It
14
is loaded onto csn-1 [Cas9] as duplex with the tracrRNA. Ex. 2312. Thus, Dr. Zhang
15
recognized in 2011 the need to use tracrRNA even when transfecting mature crRNA.
16
In fact, UCs expert concedes that, at least prior to the publication of Jinek 2012, there
17
was no expectation of success of adapting Type II CRISPR systems to eukaryotes. Ex. 2013,
18
Greider tr. at 59:1-60:5, 79:5-13. Broads work pre-dates Jinek 2012; thus, Broads scientists
19
made their invention at a time when UCs experts admit there was no expectation of success.
Dr. Zhangs group later conducted tests using a chimeric RNA disclosed in Jinek 2012.
As explained in detail in Broads Opposition 4, the Broad scientists needed special techniques to
adapt a modified Chimera A to function in eukaryotic cells. Paper 725, Broad Opp. 4 at 27-28.
4
The bottom line, however, is that Jinek 2012s disclosure of what UC characterizes as the
necessary and sufficient components was not needed, and therefore UCs arguments as to how
the disclosures in Jinek 2012 render the use of CRISPR in eukaryotic cells obvious fail.
B.
UC Improperly Conflates Motivation And Expectation Of Success
UCs opposition also erroneously conflates motivation and reasonable expectation of
success, while applying a legally incorrect test for expectation of success. First, UC relies on
statements regarding motivation to assert an expectation of success. For example, UC relies on
Dr. Carrolls statements that eukaryotic experiments were clearly worth a try and to stay
tuned as showing an expectation of success. Ex. 1152, Carroll at 1660. However, worth a try
10
merely shows motivation to try. And stay tuned does not indicate an expectation of success;
11
stay tuned indicates that eukaryotic experiments would be conducted and the reader should
12
stay tuned to find out the results because the results were unknown.
13
Neither Brouns 2012 commentary nor Golics 2013 commentary demonstrate a high
14
expectation of success as UC argues. UC Opp. 2 at 9, 15. Brouns states that Cas9 could
15
theoretically introduce breaks in eukaryotic cells, while Golic states the Type-II [CRISPR-
16
Cas] system might be repurposed for genome engineering, similar to ZFNs and TALENs. Ex.
17
1471, Brouns at 809; Ex. 1473, Golic at 304. But theoretically and might indicate a reason
18
to try, not an expectation of success. The word might reflects the possibility of success,
19
however remote, which always exists when a motivation exists (no motivation exists with no
20
chance of success). Similarly, Dr. Simons testimony that [o]ne never does an experiment
21
without the belief that it might work under certain circumstances (UC Opp. 2 at 30-31) likewise
22
reflects just that typically one has a non-zero chance of success when conducting an experiment.
UCs experts also applied a legally incorrect test for reasonable expectation of success,
namely, whether a person would continue doing research or undertake a research project. Ex.
2012, Carroll tr. at 157:15-17. However, that standard erroneously eliminates the need to show a
reasonable expectation that the experiment will succeed. See In re Cyclobenzaprine
Hydrochloride, 676 F. 3d 1063, 1070 (Fed. Cir. 2012) (must show a reasonable expectation that
such an experiment would succeed.). A huge reward can motivate persons to try an experiment,
even if the likelihood of success is very low.
Second, UC applies the wrong legal standard by failing to show that the alleged
expectation of success corresponded to the actual motivation identified by UC and its experts.
10
UCs Dr. Carroll testified that the motivation to use CRISPR was to replace existing gene editing
11
technologies such as zinc-fingers and TALENs. Ex. 1535, Carroll.2d 31; Ex. 2012, Carroll tr.
12
at 9:25-10:18. Similarly, UCs other expert Dr. Greider similarly stated that for CRISPR, [t]he
13
motivation is to do genome editing in a way thats more efficient than TALENs and zinc-
14
fingers. Ex. 2013, Greider tr. at 86:1-3. As explained by the Federal Circuit, obviousness
15
requires proof of not only the existence of a motivation to combine elements from different
16
prior art references, but also that a skilled artisan would have perceived a reasonable expectation
17
of success in making the invention via that combination. Medichem v. Rolabo, 437 F.3d 1157,
18
1165 (Fed.Cir. 2006) (emphasis added). Thus, UC was required to show that skilled artisans
19
would have perceived a reasonable expectation of success corresponding to the alleged
20
motivation, i.e., making a eukaryotic CRISPR invention as a TALEN or zinc-fingers
21
replacement. Instead of providing evidence on that issue, UC assumesbut does not prove
22
that skilled artisans expected that the prokaryotic-derived CRISPR might work in extreme or
23
unique circumstances unlike the applications where zinc fingers and TALENs were employed.
For example, on page 17, lines 13-16, of UCs Opposition 2, it argues that [d]irectly
injecting a pre-assembled prokaryotic protein/RNA complexes [sic] into eukaryotic cells, and
thereby avoiding the need to use expression vectors, had also been used to affect genetic
modification. On page 24 of its Opposition, UC cites the publication where a pre-assembled
Group II intron protein/RNA complex was injected into an embryonic frog cell. The response is
that, in 2012, ordinarily skilled persons would have recognized that, despite 16 years of efforts,
Group II introns had only been shown to function in eukaryotic cells by microinjection into an
embryonic cell having its Mg level artificially increased. Fact 122; Ex. 2012, Carroll tr. at
141:22-25; see also Ex. 2010, Breaker 1.49-1.50. The literature in 2012 uniformly
10
characterized the eukaryotic Group II efforts, and that of other prokaryotic systems including
11
RNA, as a failure. Ex. 1276 at 13, 14; Ex. 2223 at 1189 (RNA is a fundamentally deficient
12
medium.). The further response is that UC provides no evidence of a motivation to replace
13
zinc fingers and TALENs with such a complicated systemnamely, a system that could only be
14
microinjected directly into the nucleus of a cell with artificially-elevated magnesium levels
15
because such a system would not have been able to replace zinc fingers and TALENs.
16
Given the effort required to achieve limited results in an artificially-altered eukaryotic
17
cell, persons skilled in the art would have been discouraged with respect to their expectation of
18
adapting the CRISPR-Cas system to function in eukaryotes, especially as a replacement for zinc
19
fingers and TALENs, which is where the motivation existed. Group II introns were so
20
inefficient that Dr. Carroll testified that persons of ordinary skill would not be motivated to use
21
Group II introns as a gene editing system to replace Zinc Fingers and TALENS. Ex. 2012,
22
Carroll tr. at 141:22-25; see also Ex. 2010, Breaker 1.49-1.50, 1.54-1.55.
On page 7 of its Opposition, UC relies on a prediction in Sontheimers 2009 patent
application that one could adapt Type III CRISPR systems to eukaryotes using Sontheimers
teachings and routine techniques. But, in 2012the relevant time hereskilled persons would
have recognized that three years had passed without any eukaryotic success for those systems,
despite the huge motivation, thereby decreasing a skilled artisans expectation of success.
UC argues on page 16, lines 15-17, that because all the techniques one might use to
practice the methods of UCs claims in eukaryotic cells were well-known and routinely used in
the art, there was a reasonable expectation of success. The routine techniques were known
for years, but practitioners could not develop eukaryotic CRISPR despite knowing all the
10
components of various types of CRISPR systems for years. In fact, in addition to Sontheimer,
11
Barrangou filed a patent application in 2008 (Ex. 1162), stating that CRISPR could be used in
12
eukaryotic cells. Despite the availability of the routine techniques that UC identifies, Barrangou
13
and Sontheimer each apparently failed to adapt CRISPR systems to function in eukaryotic cells.
14
Applying its flawed legal standards, UC argues at page 27-28 that it is irrelevant that its
15
lead inventor admitted that, even after Jinek 2012, there was a problem knowing whether
16
eukaryotic CRISPR would work and at best reflect[s] that the confirmatory experimental results
17
[that CRISPR would work in a eukaryotic cell] had not yet been reported. However, Dr.
18
Doudna admitted that Jinek 2012 was a big success, but there was a problem. Ex. 2207 at 3.
19
And the problem was that even the UC scientists werent sure if CRISPR/Cas9 would work in
20
eukaryotes. Id. If UC was correct and it was obvious to those of ordinary skill in the art after
21
Jinek 2012 that CRISPR/Cas9 would work in eukaryotes, there would not have been a
22
problem. Dr. Doudnas statement is a contemporaneous admission that adapting CRISPR to
23
function in eukaryotic cells was not merely routine and expected.
UC hardly acknowledges Dr. Doudnas admission that she experienced many
frustrations trying to get CRISPR to work in human cells and her belief that if the system
could be made to work in human cells, it would be a really profound discovery. Ex. 2230,
Pandika at 2. UC argues that the article published after use of CRISPR in eukaryotes had been
reported could not have affected the understanding of a person of ordinary skill in the art at the
relevant time. UC Opp. 2 at 30. However, Dr. Doudnas statements recounted her thoughts in
2012 after Jinek 2012 published. Her pre-interference statements are completely contrary to, and
show the lack of credibility of, UCs current positions that adaption of CRISPR systems for
eukaryotes required only conventional techniques (contrary to the many frustrations) and
10
involved only routine work (contrary to being a profound discovery).
11
12
C.
The Alleged Later Success Of Others In 2012 Does Not Show An Expectation
Of Success, Nor Is It Prior Art For The Interference-in-Fact Inquiry
13
UC argues page 10, lines 15, through page 12, line 12, that patent applications and
14
unpublished manuscripts submitted prior to Broads filing date demonstrate that skilled persons
15
reasonably expected CRISPR as disclosed in Jinek 2012 (and UCs involved claims) to work in
16
eukaryotes. The response is that later success does not equate to an expectation of success prior
17
to the conducting of the experiment. Further, the persons UC points to who published papers and
18
filed patent applications on eukaryotic CRISPR systems were not persons of ordinary skillthey
19
were extraordinarily skilled. Broad Opp. 4 at 25:21-26:3. Each lead scientist that UC
20
identifiesDrs. Zhang, Church, Hwang and Kimwere already named inventors for TALEN-
21
based systems by 2012. Ex. 2309, 273 Publication; Ex. 2310, 131 Publication; Ex. 2311.
22
UC further conflates expectation of success and actual success by arguing, at page 20,
23
line 19-page 22, line 13, that, in hindsight, the differences between the eukaryotic and
24
prokaryotic cells did not actually turn out to prevent the use of CRISPR/Cas9 in eukaryotic cells.
9
UCs hindsight analysis is wrong as a matter of lawthe question is whether, looking forward,
without knowledge of the results, a person of skill in the art would have had a reasonable
expectation of success.
UC also erroneously argues that the Kim provisional application filed on October 23,
2012 (Ex. 1545) and the later Kim patent application constitute prior art under 102(e) for
purposes of determining whether an interference-in-fact exists between Broads eukaryotic
claims and UCs involved claims. However, the Broad has provided, as part of prosecution,
declarations showing the October 5, 2012, submission of its manuscript to Science, which
disclosed the same eukaryotic experiments published as Cong 2013, thereby establishing that
10
Broads work antedates Kims October 23, 2012, filing date. See Fact 119; Ex. 2009, Simons.3d
11
11.113; Ex. 1055 at 823. Moreover, UCs attempted use of the antedated Kim application as a
12
secondary obviousness reference (UC Opp. 2 at 6) makes no sense given UCs assertion that
13
Kim supposedly discloses a Type II CRISPR system functioning in eukaryotic cells, which
14
would make the scope of UCs involved claims completely irrelevant to the obviousness
15
analysis.
16
UC also argues that Dr. Simons failed to consider another application not available to
17
persons skilled in the art in December 2012, UCs involved 859 Application, asserting that its
18
application carried forward from UCs provisional application filed May 25, 2012. However,
19
Dr. Simons has opined that UCs 2012 provisional applications did not provide a reasonable
20
expectation of success in eukaryotes. See, e.g., Ex. 2009; Simons 11.35.
10
UC also relies on submission dates for publications from other groups that supposedly
followed Jinek 2012 to adapt CRISPR Type II systems to eukaryotes. 2 The response is that
none of those articles published before December 2012, and all of the submission dates are after
Broads October 5, 2012, submission date for its publication in Science. Accordingly, none of
these publications were available as prior art, or indicate what was known to a person of ordinary
skill in the art at the time of the invention. In any event, even if other scientistswho UC fails
to show are persons of ordinary skillcould implement the single guide RNA of UCs involved
claims in a eukaryotic cell, that does not translate into a conclusion that a person of ordinary skill
in the art had a reasonable expectation of success that the prokaryotic CRISPR-Cas9 system
10
would be successfully implemented in eukaryotic cells, based on the components set forth in
11
UCs claims. In fact, Drs. Kim and Church each sought patent protection for their work,
12
indicating that each of them thought this work was not routine and not obvious, but inventive.
13
14
D.
UCs Prokaryotic Protein Examples Did Not Provide An Expectation Of

Success For CRISPR-Cas9 In Eukaryotic Cells
15
UC further argues that, based on the alleged success of four prokaryotic proteins in
16
eukaryotic cells prior to 2012, a person of ordinary skill in the art would have expected that
17
most prokaryotic proteins of interest could be routinely used in eukaryotic cells and that any
UC argues that the Broad has failed to show that any of its involved claims are entitled
to an effective filing date of December 12, 2012. UC Opp. 2 at 4:23-5:1. However, UC does not
dispute, nor could they, that Broads December 2012 provisional application discloses the
successful use of CRISPR in a eukaryotic cell. See Ex. 2001, Simons 5.1-5.61; Ex. 2101, pp.
260-261. In any event, UC does not rely on prior art dated after December 12, 2012.
11
doubt that a prokaryotic DNA-targeting protein could work in a chromatin context was laid to
rest by a publication in 1987. UC Opp. 2 at 18-19. However, there are thousands of different
types of prokaryotic proteins. Ex. 2013, Greider tr. at 208:1-3. The successful eukaryotic
adaption of four proteins would not provide an expectation of success for all other prokaryotic
proteins; as UCs expert testified, one would merely expect that the next prokaryotic protein
tested might or might not work in a eukaryotic cell. Ex. 2012, Carroll tr. at 27:12-15.
UCs reliance on its four exemplary prokaryotic proteins fails for several other reasons.
First, the prokaryotic proteins upon which UC relies were almost all so small they would have
no trouble passing through the nuclear membrane of a eukaryotic cell. Three of the four proteins
10
are smaller than about 40 kilodaltons (kD) and can easily diffuse through the nuclear membrane.
11
Fact 120; Ex. 2305 at 6491; Ex. 2304 at 99; Ex. 2315; Ex. 2012, Carroll tr. at 54:3-6. On the
12
other hand, Cas9 proteins are much larger than those proteins. See Ex. 2012, Carroll tr. at 32:9-
13
15, 167:2-19, 172:4-7. The one exception on UCs list, C31 integrase, was taught in the prior
14
art to have relatively low efficiency. Fact 121; Ex. 1594 at 720. C31 integrase has about
15
370 potential target sites in the eukaryotic genome, but still only achieves a very low cutting
16
efficiency increase of only 40%. Fact 121; Ex. 2013, Greider tr. at 328:12-329:6, 331:2-332:6.
17
If anything, that poor efficiency would have tended to discourage the adaption of the CRISPR-
18
Cas9 system, which would typically have one unique target sequence in the eukaryotic genome
19
per DNA-targeting sequence. Ex. 2013, Greider tr. at 324:1-2.
20
In fact, the low efficiency of UCs small-protein exemplars would have discouraged
21
skilled persons from having any expectation of success for CRISPR-Cas9. EcoRI, one such
22
small protein, was reported to have problems accessing sites through the eukaryotic genomes
23
chromatin structure (Ex. 1302 at 4208), even though it has hundreds of thousands of target sites
12
in the eukaryotic genome. Ex. 2013, Greider tr. at 323:8-324:2. EcoRIs ability to access one of
those many cleavage sites before being destroyed by cellular proteases would not suggest that the
CRISPR system with a unique DNA target site would work. The CRISPR complex looks for a
short PAM sequence, which would occur millions of times in the human genome. Ex. 2314,
Sanders at 2. When it encounters a PAM sequence, the CRISPR complex must determine
whether a match exists between the guide sequence and the DNA adjacent to the PAM. As
stated in a news post coming from Dr. Doudnas lab, [i]ts crazy that the Cas9 complex
manages to scan the vast space of eukaryotic genomes to find its target site. Id.
Second, all of UCs exemplary prokaryotic proteins were just thatbare proteins. For
10
CRISPR to function, the Cas9 protein must complex with one or more RNA strands. This
11
complexity is not addressed by any of UCs prior art examples and, as UCs experts candidly
12
acknowledge, a major difference between the targeting of Cas9 and [prokaryotic enzyme]
13
EcoRI is Cas9s use of a DNA-targeting RNA. Ex. 1534, Greider 81; Ex. 1535, Carroll 81.
14
Third, while UC argues any doubt that a prokaryotic DNA-targeting protein could work
15
in a chromatin context was laid to rest by a publication in 1987 (UC Opp. 2 at 18-19), UCs
16
expert disavowed such a position at his deposition, stating that one would merely expect that
17
another prokaryotic protein might or might not work in a chromatin context. Ex. 2012, Carroll
18
tr. at 25:8-12, 27:12-15. Accordingly, in his 2012 article, UCs expert Dr. Carroll stated a
19
concern that CRISPR might not work effectively on a chromatin target, and contrasted
20
CRISPR with both zinc fingers and TALENs that come from natural transcription factors that
21
bind their targets in a chromatin context. Ex. 1152, Carroll at 1660. At page 20 of its
22
Opposition, UC argues that persons skilled in the art would not have considered the eukaryotic-
13
derived portions of zinc finger and TALENs to distinguish CRISPR from those systems. The
response is that Dr. Carroll made that precise distinction in his 2012 article. Ex. 1152 at 1660.
Fourth, UC argues that Broads RNA examples (group II introns, ribozymes and
riboswitches) are not relevant because they involve catalytic RNA, which is sensitive to
problems associated with RNA folding, while the CRISPR system involves RNA which relies on
Watson-Crick base pairing. UC Opp. at 25; Ex. 1535 at 88. However, UCs Dr. Carroll
admitted that the binding between the tracrRNA/crRNA duplex is critical in the CRISPR-Cas
system, is not governed by Watson-Crick base pairing and would have been expected in 2012 to
be sensitive to changes in the secondary or tertiary structure of the RNA making the folding of
10
the CRISPR complex crucial to successful functionality. Ex. 2012, Carroll tr. at 163:14-164:16.
11
E.
UC Misconstrues And Takes Statements Of Broad Scientists Out Of Context
12
At page 14 of its Opposition, UC states that the contemporaneous quotations cited by
13
Broad further evidence obviousness when placed in context. The response is that no
14
contemporaneous article expressed an expectation of success. Instead, they only express
15
concerns and doubts. The further response is that UC resorts to misdirection and cropped quotes
16
in its attempt to establish an interference in fact. For example, UC quotes Dr. Ran of the Broad
17
lab as follows: We built upon these exciting discoveries. . . . UC Opp. 2 at 13:5-17 (citing Ex.
18
1561). However, UC leaves off the remainder of Dr. Rans sentence, which states: but at the
19
same time, nobody knew if this was going to work in mammalian cells. Ex. 1561 at 73.
20
UC also misuses, and takes out of context, an email from a UC job applicant, a former
21
Zhang lab member, to support its erroneous argument that the Broad scientists needed the
22
disclosure of Jineks June 2012 publication. UC Opp. 2 at 12:15-13:4 (citing Ex. 1475). UC, in
23
making this argument, ignores the documentary evidence UC has, such as the January 2012 NIH
14
application. The screenshot attached to the email contradicts the argument UC is making: it
shows that by January 2012, Zhang lab members were designing the four-component CRISPR
experiment that succeeded in eukaryotic cells as shown in Cong 2013. UCs reliance on this
type of irrelevant evidence demonstrates the weakness of UCs position.
V.
6
7
CONCLUSION
For the reasons set forth herein, Broads Motion 2 should be granted.
Dated: September 28, 2016
Respectfully submitted,
8
9
10
11
12
13
14
15
16
/Steven R. Trybus/
Steven R. Trybus
Reg. No. 32,760
Lead Counsel for Broad
Jenner & Block LLP
Chicago, IL 60654
Telephone: (312) 222-9350
Facsimile: (312) 527-0484
strybus@jenner.com
15
APPENDIX 1: LIST OF EXHIBITS

Exhibit
Number
Description
2009
Third Declaration of Dr. Paul Simons, executed August 15, 2016.
2010
Declaration of Dr. Ronald Breaker, executed August 15, 2016.
2012
Second Deposition Transcript of Dr. Dana Carroll, September 13,

2016.
2013
Second Deposition Transcript of Dr. Carol Greider, September 16,

2016.
2207
College of Chemistry, University of California, Berkeley, 9 Catalyst

1-32 (Spring/Summer 2014).
2223
Link et al., Engineering ligand-responsive gene-control elements:

lessons learned from natural riboswitches, 16 Gene Therapy 11891201 (2009).
2230
Pandika, Rising Stars: Jennifer Doudna, CRISPR Code Killer, OZY

(Jan. 7, 2014), http://www.ozy.com/rising-stars/jennifer-doudnacrispr-code-killer/4690.
2304
Nagy, Cre Recombinase: The Universal Reagent for Genome

Tailoring, 26 Genesis 99-109 (2000).
2305
Orillard et al., Biochemical and Cellular Characterization of

Helicobacter pylori RecA, a Protein with High-Level Constitutive
Expression, 193 J. Bacteriology 6490-6497 (2011).
2309
U.S. Patent Application No. 13/353,662, filed January 19, 2012.
2310
Kim et al., U.S. Patent Application No. 13/768,798, filed February

15, 2013.
2311
Reyon et al., Current Protocols in molecular Biology Engineering

Designer Transcription Activator-Like Effector Nucleases
(TALENs), Current Protocols in Molecular Biology 1-17.
2312
Email from Feng Zhang to Shuailiang Lin dated October 24, 2011.
2314
Sanders, CRISPR-Cas9 gene editing: check three times, cut once,

Berkeley News (November 12, 2015).
2315
UniProtKB of Type-2 restriction enzyme EcoRI.

A1-1
2411
SN 14/704,551 Excerpt, NIH grant application.
2412
SN 14/054,414 Excerpt, Cong notebook.
1055
Cong et al., Multiplex Genome Engineering Using CRISPR/Cas

Systems, 339(6121) SCIENCE 819-823 (2013) with Supplemental
Material.
1152
Carroll, A CRISPR approach to gene targeting, 20(9) MOLECULAR

THERAPY 1658-60 (2012).
1162
U.S. Patent Publication No. 2010/0093617, published on April 15,

2010 to Barrangou et al.
1276
Lambowitz and Zimmerly, Group II introns: mobile ribozymes that

invade DNA, 3(8) COLD SPRING HARB PERSPECT BIOL. a003616
(2011).
1302
Morgan et al., Inducible Expression and Cytogenetic Effects of the

EcoRI Restriction Endonuclease in Chinese Hamster Ovary Cells,
8(10) MOL. CELL. BIOL. 4204-4211 (1988).
1471
Brouns, A Swiss Army Knife of Immunity, 337 SCIENCE 808-809

(2012).
1473
Golic, RNA-Guided Nucleases: A New Era for Engineering the

Genomes of Model and Nonmodel Organisms, 195 GENETICS 303308 (2013).
1475
[REDACTED] Email from Shuailiang Lin to Jennifer Doudna, dated

February 28, 2015, with attachments.
1534
Second Declaration of Carol Greider, Ph.D.
1535
Second Declaration of Dana Carroll, Ph.D.
1545
U.S. Provisional Application No. 61/717,324, filed October 23,

2012 to Seung Woo Kim et al.
1561
Ran, F. A. CRISPR/Cas9: Tools and Applications for Eukaryotic

Genome Editing, 26 NORTH AMERICAN AGRICULTURAL
BIOTECHNOLOGY COUNCIL REPORT 69-81 (2014).
1594
Maury et al., Technical advances to genetically engineering human

embryonic stem cells, 3 INTEGR. BIOL. 717-723 (2011).
1
A1-2
APPENDIX 2: STATEMENT OF MATERIAL FACTS

Broads Facts with UCs Responses
1.
Clustered Regularly Interspaced Short Palindromic Repeats or CRISPR refers
to several different microbial systems that were discovered to be involved in a bacterial immune
response to invading phages and plasmids. Ex. 2001, Simons 2.1. Response: Admitted
2.
All of Broads involved claims recite language that explicitly requires operability
of the CRISPR-Cas9 system in a eukaryotic cell. Ex. 2001, Simons 6.1; Paper 43, Broad Clean
Claims. Response: Admitted.
3.
Claim 1 of the Broad 359 patent is directed to A method of altering expression
of at least one gene product comprising introducing into a eukaryotic cell containing and
expressing a DNA molecule having a target sequence and encoding the gene product an
engineered, non-naturally occurring Clustered Regularly Interspaced Short Palindromic Repeats
(CRISPR)--CRISPR associated (Cas) (CRISPR-Cas) system comprising one or more vectors
comprising: a) a first regulatory element operable in a eukaryotic cell operably linked to at least
one nucleotide sequence encoding a CRISPR-Cas system guide RNA that hybridizes with the
target sequence, and b) a second regulatory element operable in a eukaryotic cell operably linked
to a nucleotide sequence encoding a Type-II Cas9 protein, wherein components (a) and (b) are
located on same or different vectors of the system, whereby the guide RNA targets the target
sequence and the Cas9 protein cleaves the DNA molecule, whereby expression of the at least one
gene product is altered; and, wherein the Cas9 protein and the guide RNA do not naturally occur
together. Paper 43, Broad Clean Claims at p. 3, ll. 215. Response: Admitted.
4.
UCs involved claims do not recite or require that the CRISPR-Cas 9 system
operate within a eukaryotic cell. Ex. 2001, Simons 6.1; Paper 12, Senior Partys Clean Claims.
A2-1
Response: Admitted.
5.
UCs involved claims are directed to contacting certain components of a
CRISPR-Cas9 system and a target DNA molecule. Id. Response: Denied.

6.
UC admits, none of [its] claims require performance of the claimed method or
application of the claimed system in a eukaryotic cell. Paper 27, UC Proposed Motions List at
p. 7, line 25-p. 8, line 1. Response: Admitted.
7.
UCs involved claims, if treated as prior art, do not anticipate Broads involved
claims. Ex 2001, Simons 6.16.2. Response: Admitted.

8.
Application 61/736,527, Exhibit 2101, Zhang B1, was filed on December 12,
2012. Ex. 1007, B1 (Cover Page Certificate). Response: Admitted.

9.
During the relevant time period, a person of ordinary skill in the art would have a
broad background that includes a strong understanding of the molecular biology and
biochemistry techniques needed to clone, express, isolate, purify, and manipulate proteins and
nucleic acids in the context of both in vitro and in vivo experiments in both prokaryotes and
eukaryotes; a Ph.D. degree in a life sciences discipline, e. g., chemistry, biochemistry,
neurobiology; and at least one year of relevant post-doctoral experience. Ex. 2001, Simons 4.1.
Response: Denied.
10.
Prokaryotic proteins, like Cas9, have evolved in the context of prokaryotic cells.
Ex. 2001, Simons 6.33. Response: Insufficient information, therefore unable to admit or
deny.
11.
There is no corollary to the natural, bacterial Cas9 or the CRISPR-Cas9 system in
eukaryotic cells. Ex. 2001, Simons 6.13. Response: Insufficient information, therefore
unable to admit or deny.
A2-2
12.
The folding of a Cas9 protein in a eukaryotic cell is unpredictable. Ex. 2001,
Simons 6.66.9. Response: Denied.

13.
The unpredictability is due at least to the different protein folding environment in
a eukaryotic cell compared to a prokaryotic cell. Ex. 2001, Simons 6.9, 6.13. Response:
Denied.
14.
As of December 2012, a person of ordinary skill in this art would have considered
the use of a CRISPR-Cas9 system in eukaryotic systems to be unpredictable at least because of

the many differences between the cellular environment of a prokaryotic or bacterial cell and the
cellular environment of a eukaryotic cell. Ex. 2001, Simons 6.14-6.47. Response: Denied.
15.
Differences between prokaryotic systems and eukaryotic systems include gene
expression, cellular compartmentalization, cellular nucleases, intracellular ion concentrations,

intracellular pH, different types of molecules present in eukaryotic cells that are not native to
bacterial cells, and different interactions of the CRISPR-Cas9 complex and components thereof
with proteins or nucleic acids that are present in eukaryotic cells and not native to bacterial cells.
Ex. 2001, Simons 6.28. Response: Denied.
16.
Engineering a delivery system for proper expression or presence of the CRISPR-
Cas9 system would involve temporal and spatial requirements, i.e., the components must be
together at the same time and in the same place as each other and the target for the system to
work successfully. Ex. 2001, Simons 6.32. Response: Insufficient information, therefore
unable to admit or deny.
17.
In a eukaryotic cell, translation of the Cas9 protein takes place in the cytoplasm,
whereas transcription of the RNA component of the CRISPR-Cas9 complex takes place in the
nucleus. Ex. 2001, Simons 6.68. Response: Denied.
A2-3
18.
As of 2012, one of ordinary skill in the art could not have predicted whether
intracellular degradation pathways, for both protein and / or RNA components would degrade the
molecules or otherwise inhibit complexing of the components. Ex. 2001, Simons 6.30.
Response: Denied.
19.
Eukaryotic chromosomes are composed of chromatin. Ex. 2001, Simons 6.29.
Response: Denied.
20.
Chromatin is a complex and tightly-packed structure composed of genomic DNA
complexed with proteins (primarily histones). Ex. 2001, Simons 6.29. Response: Denied.
21.
Prokaryotic cells do not have a nucleus and generally have a single chromosome
that is not complexed with histones to form chromatin. Ex. 2001, Simons 6.29. Response:
Denied.
22.
A skilled person in this art on December 12, 2012, would have recognized that
components unique to bacterial cells may not function in a eukaryotic cell and could be
deleterious to a eukaryotic cell. Ex. 2001, Simons 6.35. Response: Denied.
23.
The known disclosures as of December 12, 2012, did not provide sufficient
information for one of skill in this art to engineer a CRISPR-Cas9 system for use in eukaryotic
cells with any reasonable expectation of success. Ex. 2001, Simons 2.11. Response: Denied.
24.
The 2012 published experiments of UCs inventors, Doudna et al, as set forth in
the Jinek 2012 reference and included in the priority applications of UCs 859 application filed
in 2012, only contacted isolated components of a CRISPR-Cas9 system with a naked DNA target
in a cell-free environment in in vitro experiments. Ex. 2001, Simons 6.1-6.4, 6.29. Response:
Denied.
25.
Even after UCs in vitro experiments in 2012, Dr. Doudna experienced many
A2-4
frustrations getting CRISPR to work in human cells and believed that development of a
CRISPR system for use in eukaryotic cells would be a profound discovery Ex. 2230, Pandika
at 3; Ex. 2001, Simons 6.50. Response: Denied.
26.
Dr. Dana Carrolls contemporaneous expression of doubt about the operability of
the CRISPR-Cas9 system in eukaryotic cells from the experiments of Jinek 2012 (Ex. 1152,
Carroll 2012) recognizes that one of skill in this art could not have had any reasonable
expectation of success in adapting CRISPR-Cas9 to function eukaryotic cells. Ex. 1152, Carroll
2012 at 1660; Ex. 2001, Simons 6.4. Response: Denied.
27.
Neither UC nor Dr. Carroll points to any methods and materials that would
have made it routine to apply a CRISPR-Cas system in a eukaryotic cell. Ex. 2001, Simons
6.57-6.72. Response: Denied.
28.
In the suggestion of interference (Ex. 1529, Suggestion filed April 13, 2015 at 27,
ll. 22-23), the arguments and examples relied upon by UC fail to support UCs conclusion that
introduction of the Type-II CRISPR-Cas System in eukaryotic cells would have been routine or
that one of ordinary skill in the art would have had a reasonable expectation of success. Ex.
2001, Simons 6.57. Response: Denied.
29.
The Cre, RecA, EcoRI, C31, TALEN, and ZFN systems cited by UC in its
suggestion of interference are far less complicated than the Type-II CRISPR-Cas system at issue
in the instant matter; in each example cited by UC, the proteins are not required to form a
complex with a DNA-targeting RNA to function successfully. Ex. 2001, Simons 6.67.
Response: Denied.
30.
None of the prior systems cited by Dr. Carroll or relied upon by UC in its
suggestion of interference involve a bacterial protein that is RNA-guided and hence involved
A2-5
protein and RNA components. Ex. 2001, Simons 6.68. Response: Denied.
31.
The bacterial protein and the RNA can present issues of cellular toxicity in the
eukaryotic environment, and when expressed in vivo in the eukaryotic cell, the protein is
expressed in the cytoplasm and the RNA is in the nucleusaspects of the bacterial CRISPRCas9 system that made modifying it for functioning in the environment of a eukaryotic cell
wholly unpredictable at the December 12, 2012 filing date of Zhang B1, Ex. 2101. Ex. 2001,
Simons 6.68. Response: Denied.
32.
Ex. 1335, Sauer 1987 and Ex. 1336, Sauer 1988 teach that prokaryotic systems
cannot be presumed to be able to be effectively transferred to eukaryotes, stating that the ability
of the Cre protein to access a lox site placed on a chromosome and then to perform site specific
synapsis of DNA and reciprocal recombination may be highly dependent on surrounding
chromatin structure and on the particular location within the genome of the lox site; some
regions of the genome may be inaccessible to a bacterial recombinase, for example. Ex. 1336,
Sauer 1988 at 5170. Response: Denied.
33.
It was known in the prior art as of 2012, that RNA-based, self-splicing Group II
introns are found in prokaryotic organisms and even in the mitochondria and chloroplasts of
lower eukaryotes, but that obstacles include nuclear accessibility of RNPs and suboptimal Mg2+
concentrations. Ex. 2001, Simons 6.376.38; Ex. 1276, Lambowitz et al. 2011 at 14; Romani
et al., (2002); Ex. 2261, Mastroianni et al., (2008). Response: Insufficient information,
therefore unable to admit or deny.
34.
While the authors of the Reiss et al. publication (Ex. 1329, Reiss) were able to
successfully use a prokaryotic protein (RecA) in eukaryotic cells (tobacco plant cells) (Ex. 1529,
Suggestion filed April 13, 2015 at 28, ll. 17-22), their success was unpredictable and the authors
A2-6
were awarded a patent for their accomplishment (US Patent No. 6,583,336) (Ex. 2104).
Response: Denied.
35.
A person of skill in the art would understand that RecA has a corresponding
homologous protein present in eukaryotic cells, while Cas9 has no equivalent in a eukaryotic cell
and, the work of Reiss et al. with RecA would not provide any basis for a reasonable expectation
of success with respect to adaptation a CRISPR-Cas9 system for eukaryotes. Ex. 2001, Simons
6.65. Response: Denied.
36.
The success with ZFNs and TALENs in eukaryotes would not provide any basis
for a reasonable expectation of success with respect to adaptation of a CRISPR-Cas9 system for
eukaryotes because, unlike CRISPR-Cas9, ZFNs and TALENs are not purely prokaryotic in
nature (the eukaryote-derived portion of ZFNs comprise DNA-binding domains critical to the
proteins function in a eukaryote. while the equivalently critical DNA binding domains of
TALENs originate in bacteria, the TALE proteins from which they are derived have their
function in plants, i.e. eukaryotes). Ex. 2001, Simons 6.696.70. Response: Denied.
37.
ZFN and TALEN systems are very different from CRISPR-Cas, which includes
an RNA-guided protein that had never been previously known to express or function in a
eukaryotic cell. Ex. 2001, Simons 6.67-6.70. Response: Denied.
38.
As Dr. Carroll noted in 2012 that zinc fingers and TALE modules come from
natural transcription factors that bind their targets in a chromatin context. This is not true of the
CRISPR components. Ex. 1152, Carroll 2012 at 1660. Response: Insufficient information,
therefore unable to admit or deny.
39.
Prior to the Broads publication of the work reflected in its first two provisional
applications in Ex. 1055, Cong, no group had shown that the RNA constructs and Cas9 protein
A2-7
of the CRISPR-Cas system could function in a eukaryotic cell. Ex. 2001, Simons 2.10.
Response: Denied.
40.
Dr. Feng Zhang and his colleagues invented engineered CRISPR-Cas9 systems
that function in eukaryotic cells. Ex. 2001, Simons 2.13. Response: Denied.
41.
The invention of CRISPR-Cas systems for eukaryotic cells, as in Ex. 2101, Zhang
B1; Ex. 1055, Cong, and the eukaryotic subject matter claims of the Broad patents was
recognized as a pioneering. Ex. 2001, Simons 2.13-2.15. Response: Denied.
42.
Google provides real-time data on internet searches, known as Google Trends,
and that such a search as to CRISPR or Cas9 is available from the following link:
https://www.google.com/trends/explore#q=CRISPR%2C%20Cas9&cmpt=q&tz=Etc%2FGMT%
2B4. Ex. 2403. Response: Insufficient information, therefore unable to admit or deny.
43.
This real-time data, as shown by the following Google Trends graph understood
to reflect inclusion of search terms CRISPR or Cas9 over time, demonstrates that January
2013 coinciding with the publications on work in eukaryotic cells, (Exs. 1055 and 2258)
appears as the beginning of significant interest in the CRISPR field. Ex. 2403.
Response: Denied.
44.
As of May 2016, the Zhang laboratory, including through Addgene, has
distributed more than 30,000 CRISPR-Cas9 reagents, stemming from the eukaryotic work of the
A2-8
the most highly cited CRISPR publication. Ex. 2001, Simons 2.14. Response: Insufficient
information, therefore unable to admit or deny.
45.
In 1999, Koseki et al. reported that the efficacy of RNA ribozymes molecules in
vitro is not predictive of functional activity in vivo, for a variety of reasons, including
degradation of the ribozyme in the eukaryotic cell and inability to colocalize with its target in the
eukaryotic cell. Ex. 2221, Koseki at 187576. Response: Denied.
46.
Despite great interest in the use of riboswitches as a means of controlling gene
expression in other contexts, the creation of riboswitches that function as desired in mammalian
systems has proved intractable to date. Ex. 2223, Link. Response: Denied.
47.
Link et al. (Ex. 2223, Link at 1192) note, a few TPP riboswitches are the only
validated metabolite-binding riboswitches in eukaryotes and many of the engineered

riboswitches that function well in vitro fail to provide useful function when translated to
eukaryotic cells. Ex. 2001, Simons 6.47. Response: Denied.
48.
It was uncertain whether a Cas protein could access target DNA in a eukaryotic
cell. Ex. 2001, Simons 6.29. Response: Insufficient information, therefore unable to admit
or deny.
49.
Different cellular conditions can impact protein folding, which is of particular
importance given that CRISPR-Cas9 systems must undergo significant conformational changes
both when binding the guide RNA, and when binding and cleaving the target DNA. Ex. 2001,
Simons 6.13, 6.33. Response: Denied.
50.
A person of ordinary skill in the art during the relevant time period could not have
predicted whether eukaryotic enzymes would cleave the RNA molecules critical for the
functioning of the CRISPR-Cas9 system. Ex. 2001, Simons 6.15. Response: Denied.
A2-9
51.
The CRISPR-Cas9 systems requirement for magnesium would have suggested to
a skilled person that the prokaryotic environment, which includes a high concentration of
magnesium, might be essential for the operation of CRISPR systems in vivo. Ex. 2001, Simons
6.13, 6.38-6.39. Response: Denied.
52.
The contemporaneous evidence confirms that, given the nature of the bacterial-
derived CRISPR system and the substantial differences between the prokaryotic and eukaryotic
environments, skilled artisans would not have reasonably predicted that CRISPR systems would
function in eukaryotes, even after successful in vitro DNA cleavage experiments such as reported
in Jinek 2012. Ex. 2001, Simons 6.48-6.51. Response: Denied.
53.
Dr. Doudna stated that [w]e werent sure if CRISPR/Cas9 would work in
eukaryotesplant and animal cells. Ex. 2207 at 3. Response: Admitted.

54.
Another scientist in the field noted, [i]ts not trivial to make CRISPR/Cas
systems work in eukaryotic cells One thing is to have them in silico and have a sequence
and another thing is to do the experiments and make it work. Ex. 2213, Grens at 2 (quoting
Luciano Marraffini). Response: Insufficient information, therefore unable to admit or deny.
A2-10
UCs Alleged Facts with Broads Responses

55.
The eukaryotic cell limitation is the only difference between the claims of the
Parties that is substantively addressed in Broad Motion 2. Ex. 1534, 19; Ex. 1535, 19.
Response: Admitted.
56.
Dr. Simons acknowledged that in 2012 there would have been motivation to use
the Type-II CRISPR-Cas system in a eukaryotic cell. Ex. 1555, at p. 100, l. 17 - p. 102, l. 6.
Response: Admitted.
57.
U.S. Patent Application Publication No. 20150322457 (Ex. 1599) (the Kim
Application) discloses and claims a Type-II CRISPR-Cas composition for cleaving a target
nucleic acid sequence in a eukaryotic cell. Ex. 1599, [0013], Claim 58.
Response: Denied.
58.
The Kim Provisional cites UCs Jinek et al., SCIENCE 2012; 337:816821
(Jinek 2012) (Ex. 1155), stating:

Recently, Jinek et al. (2) elegantly demonstrated that a single-chain chimeric RNA
produced by fusing an essential portion of crRNA and tracrRNA could replace the two
RNAs in the Cas9 /RNA complex to form a functional endonuclease, raising the
possibility of using this system for genome editing in cells and organisms.
Ex. 1545, at 7 (p. 1 of the specification).
Response: Admitted, to the extent Fact 58 intended to cite Ex. 1545, at 8 (p. 2 of the
specification) instead of Ex. 1545, at 7 (p. 1 of the specification).
59.
U.S. Patent Application No. 61/717,324 (Ex. 1545) (the Kim Provisional), filed
October 23, 2012, describes an experiment that is summarized as follows:

We co-transfected the Cas9-encoding plasmid, the guide RNA, and the RFP -GFP
reporter plasmid into human embryonic kidney (HEK) 293T cells, and found that GFPexpressing cells were obtained only when the cells were co-transfected with the Cas9
plasmid and the guide RNA (Fig. 2), demonstrating that [RNA -guided endonucleases]
could recognize and cleave the target DNA sequence in cultured human cells.
A2-11
Ex. 1545, at 9 (p. 3 of the specification).

Response: Denied.
60.
The Kim Provisional and the Kim Application each disclosed the use of a Type-II
CRISPR-Cas system in eukaryotic cells prior to the filing of Broads first application. Ex. 1534,
23-25; Ex. 1535, 23-25.
Response: Denied.
61.
UCs 859 Application (Ex. 1001) with an effective date of UCs first provisional
application, U.S. Patent Application No. 61/652,086, filed May 25, 2012 (Ex. 1003) is prior art
to Broad under 35 U.S.C. 102(e).
Response: Denied.
62.
UCs first provisional application disclosed expression of a Type-II CRISPR-Cas
system in eukaryotic cells (Ex. 1003, 124-129; Ex. 1001; 25, 103-105; 119-120; 244-251;
277-282), or supplying a Cas9 site-directed modifying polypeptide to eukaryotic cells as RNA or
protein (Ex. 1003, 177-179; Ex. 1001; 287-289), for purposes of targeting DNA contained
therein (Ex. 1003, 165-177; 186-188, 216; Ex. 1001; 274-275). See also Ex. 1003; Figs. 14; Ex. 1001; Figs. 1-3, 9.
Response: Denied.
63.
U.S. Patent Publication No. 2010/0076057, filed September 23, 2009 by
Sontheimer et al. (Ex. 1161) (Sontheimer) suggested that CRISPR systems could be used in
eukaryotic cells. Ex. 1534, 22; Ex. 1535, 22; Ex. 1161, at 0007.
Response: Denied.
64.
Sontheimer disclosed conventional techniques available to adapt CRISPR systems
to eukaryotic cells, including expression vectors, nuclear localization signals, and codon
A2-12
optimization. Ex. 1534, 22; Ex. 1535, 22; Ex. 1161, at 0009, 0042, 0054, 0058, 0060.
Response: Denied.
65.
Jinek 2012 disclosed the potential to exploit the [Type-II CRISPR-Cas] system
for RNA-programmable genome editing months before Broad filed its first provisional
application. Ex. 1155, Abstract; Ex. 1534, 30; Ex. 1535, 30.
Response: Denied.
66.
Jinek 2012 disclosed the exciting possibility of developing a simple and versatile
RNA-directed system to generate dsDNA breaks for genome targeting and editing. Ex. 1155, at
816, col. 2-3; Ex. 1534, 30; Ex. 1535, 30.
Response: Admitted.
67.
Jinek 2012 stated:
Zinc-finger nucleases and transcription-activatorlike effector nucleases have attracted

considerable interest as artificial enzymes engineered to manipulate
genomes (3538).We propose an alternative methodology based on RNA- programmed
Cas9 that could offer considerable potential for gene-targeting and genome-editing
applications.
Ex. 1155, at 820, col. 3.
Response: Admitted.
68.
Zinc-finger nucleases (ZFNs) and transcription-activatorlike effector nucleases
(TALENs) were, at the time of Jinek 2012, the state of the art for DNA cleavage and editing in
eukaryotic cells. Ex. 1534, 30; Ex. 1535, 30.
Response: Insufficient information, therefore unable to admit or deny.
69.
A person of ordinary skill in the art would have understood the proposal in Jinek
2012 to replace ZFNs and TALENS with the programmable Type-II CRISPR-Cas system to be a
proposal to use the Type-II CRISPR-Cas system for eukaryotic gene editing. Ex. 1534, 31; Ex.
A2-13
1535, 31.
70.
In commentary that accompanied the publication of Jinek 2012, Stan Brouns of
Wageningen University wrote

Jinek et al. realized that a highly specific, customizable RNA-directed DNA nuclease
could be useful to edit whole genomes. Based on the 20-nucleotide guide section of the
crRNA, the enzyme could theoretically introduce breaks at unique sites in any eukaryotic
genome. . . . Introducing DNA breaks at desired loci using just Cas9 and a chimeric
crRNA would be a substantial improvement over existing gene-targeting technologies,
such as zinc finger nucleases and transcription activatorlike effector nucleases, as these
require protein engineering for every new target locus (10). Efficient gene repair
strategies in cells from patients, and the reintroduction of repaired cells, could become
increasingly important for treating many genetic disorders.
Ex. 1471; Ex. 1534, 32; Ex. 1535, 32.
Response: Admitted.
71.
Before December 12, 2012, at least two independent groups had submitted
manuscripts for publication that demonstrated use of the Type-II CRISPR-Cas system in
eukaryotic cells. Ex. 1534, 63; Ex. 1535, 63.
72.
Manuscripts by Mali et al. (Ex. 1056), Cho et al, (Ex. 1059), Jinek et al. (Ex.
1057), and Hwang et al. (Exs. 1058, 1554) were submitted between October 2012 and December
18, 2012 and demonstrated use of the Type-II CRISPR-Cas system in eukaryotic cells. Ex. 1534,
63-68; Ex. 1535, 63-68.
73.
Mali et al., Cho et al., Jinek et al., and Hwang et al. were published in January
2013. Ex. 1534, 63-68; Ex. 1535, 63-68.

Response: Denied.
A2-14
74.
Mali et al., Cho et al, Jinek et al., and Hwang et al. specifically cited Jinek 2012
as a basis of their work. Ex. 1534, 72; Ex. 1535, 72.

Response: Denied.
75.
Each of Mali et al., Cho et al., Jinek et al., and Hwang et al. was submitted by a
different independent research group. Ex. 1534, 63-68 and 72; Ex. 1535, 63-68 and 72.
76.
George Church and Jin Soo Kim, lead investigators on the Mali and Cho papers,
respectively, each independently contacted Drs. Doudna and Charpentier prior to December 12,
2012 and stated that Jinek 2012 had motivated their work. See Exs. 1557-1560.
77.
George Church has publicly stated that the work of Mali et al. was independent of
the Zhang lab of Broad. Ex. 1534, 67; Ex. 1535, 67.
78.
Research published within a year of Jinek 2012 used Type II CRISPR-Cas
systems in a variety of eukaryotic cells: human (Cho et al., Mali et al., Jinek et al.), zebrafish
(Hwang et al.; Shen et al.), mouse (Shen et al.), and yeast (DiCarlo et al.) cells. Ex. 1534, 6368 and Appendix; Ex. 1535, 63-68 and Appendix; Exs. 1056-1060, 1372.
Response: Denied.
79.
Research published within a year of Jinek 2012 applying the Type-II CRISPR-
Cas system in eukaryotic cells used conventional techniques and reagents. Ex. 1534, 75; Ex.
1535, 75; Ex. 1055, at Fig. 1B; Ex. 1056, at Fig. 1A; Ex. 1059 at Supplementary Methods 2;
Ex. 1058, at Methods; Ex. 1060, at 720.
Response: Denied.
A2-15
80.
Shuailiang Lin, a former Zhang laboratory member and a listed co-inventor on
Broads priority patent applications, admitted to Dr. Doudna on February 28, 2015, that the
Zhang laboratory did not work [the use of the Type-II CRISPR-Cas system in eukaryotes] out
before seeing [the Jinek 2012] paper. Ex. 1475.
Response: Denied.
81.
Shuailiang Lin admitted that Feng Zhang and Le Cong quickly jumped to the
project to use the Type-II CRISPR-Cas system in eukaryotic cells after seeing UCs paper in
June of 2012.
Response: Denied.
82.
Fei-Ann Ran, a co-author of the Cong publication and one of Broads named
inventors, wrote:
When we started working on this, the tracrRNA hadnt been discovered yet. . . . At that
time, two other developments also emerged (1) you can fuse the spacer and the repeat
and the tracrRNA into a single chimeric RNA; and (2) you can use a single chimeric
RNA and Cas9 to program the cleavage of DNA targets in an in vitro cell-free lysis
reaction. We built upon these exciting discoveries.
Ex. 1561, at pp. 71-73.
Response: Denied.
83.
Fei-Ann Ran wrote:
obviously, bacteria dont have nuclei, whereas mammalian and other eukaryotic cells do,
and so we tagged NLS (nuclear localization signal) sequences to Cas9 and also codonoptimized it for better eukaryotic expression. By doing this, we were successful in
moving the Cas9 enzyme into mammalian nuclei.
Ex. 1561, at p. 73.
Response: Admitted.
84.
Dr. Carroll wrote:
A2-16
The authors [of Jinek 2012] make the bold prediction that this system can potentially be
used in place of ZFNs or TALENs for targeted genomic cleavage in higher organisms.
Lets think about how this might work.
Ex. 1152, at 1659; Ex. 1534, 31; Ex. 1535, 31.
Response: Admitted.
85.
With regard to using a Type-II CRISPR-Cas system in eukaryotic cells, Dr.
Carroll wrote it is clearly well worth a try. Stay tuned. Ex. 1152, at 1660 (emphasis added);
Ex. 1534, 34; Ex. 1535, 34.
Response: Admitted.
86.
Kent Golic stated that [i]t was immediately obvious that [the Type-II CRISPR-
Cas] system might be repurposed for genome engineering, similar to ZFNs and TALENs. See
Ex. 1473, at 306; Ex. 1534, 36; Ex. 1535, 36.
Response: Admitted, to the extent Fact 58 intended to cite Ex. 1473, at 304 instead
of Ex. 1473, at 306.
87.
Techniques one might use to practice the methods of UCs claims in eukaryotic
cells were well-known and routinely used in the art. Ex. 1534, 39; Ex. 1535, 39.
Response: Denied.
88.
Dr. Simons admitted that all of the techniques one might use to apply Type-II
CRISPR-Cas in eukaryotic cells, including those that are taught in Broads own patents and
application, were conventional at the time, and that a person of ordinary skill in that art would be
capable of performing the conventional methods. See Ex. 1555, at p. 97, ll. 19-22, p. 134, ll. 520 (techniques generally conventional), p. 146-153 (specifically referring to techniques described
in Broads provisional application Ex. 2101).
Response: Denied.
A2-17
89.
Methods for introducing a nucleic acid into a eukaryotic cell had been well-
known for over 30 years. Ex. 1534, 44; Ex. 1535, 44.
90.
By 2012, it was well-known that a protein or nucleic acid, including those of
prokaryotic origin, could be expressed in a eukaryotic cell using an expression vector, including
viral vectors. See Ex. 1534, 44; Ex. 1535, 44.
Response: Denied.
91.
By 2012, it was well-understood that heterologous expressed proteins could be
targeted to the nucleus using one or more nuclear localization sequences (NLSs). See, e.g., Exs.
1029; 1235; 1236; 1319; Ex. 1534, 45; Ex. 1535, 45.
Response: Denied.
92.
One of ordinary skill in the art understood how to increase expression of
prokaryotic proteins in eukaryotic cells by codon optimization. See, e.g., Ex. 1030; Ex. 1534,
45; Ex. 1535, 45; see also Ex. 1315; Ex. 1576, at 796-98.
Response: Denied.
93.
Directly injecting a pre-assembled prokaryotic protein/RNA complexes into
eukaryotic cells had been used. See, e.g., Ex. 1293, at 12; Ex. 1534, 46; Ex. 1535, 46.
Response: Admitted.
94.
Prokaryotic systems had been used in eukaryotic cells for decades prior to 2012.
Ex. 1534, 52; Ex. 1535, 52.

Response: Denied.
95.
The prokaryotic Cre-Lox site-specific recombination system had been used
successfully in eukaryotic cells since the late 1980s. Ex. 1534, 54; Ex. 1535, 54; see Ex.
A2-18
1335; Ex. 1336.

96.
The prokaryotic EcoRI restriction endonuclease had been used in eukaryotic cells
since the late 1980s. Ex. 1534, 56; Ex. 1535, 56; see Ex. 1302.
97.
The prokaryotic RecA protein had been used successfully in eukaryotic cells from
at least the mid-1990s. Ex. 1534, 57; Ex. 1535, 57; see Ex. 1329.
98.
The C31 recombinase from Streptomyces lividans was well-known to display
activity in mammalian cells. Ex. 1534, 60; Ex. 1535, 60; see Ex. 1327.
99.
DNA-targeting ZFN and TALEN systems utilize the prokaryotic FokI restriction
endonuclease domains to cleave eukaryotic target DNA. Ex. 1534, 52; Ex. 1535, 52.
100.
Sauer reported, in 1987, that a procaryotic recombinase can enter a eucaryotic
nucleus and, moreover, that the ability of the Cre recombinase to perform precise recombination
events on the chromosomes of S. cerevisiae is unimpaired by chromatin structure. Ex. 1534,
54; Ex. 1535, 54; Ex. 1335, abstract (emphasis added).
Response: Admitted.
101.
Dr. Simons acknowledged that Sauer demonstrated the use of Cre-Lox
recombinase in eukaryotic cells. Ex. 1556, at 234, l. 21-235, l. 14.

Response: Denied.
102.
Reiss et al. demonstrated, in 1996, that the prokaryotic recombination protein

A2-19
RecA itself is capable of interacting with genomic homologous DNA in somatic plant cells. Id.;
see also Ex. 1329, Abstract; Ex. 1556, at 240, ll.11-14.
Response: Admitted.
103.
Dr. Simons admitted that he has not cited any evidence that any difference
between prokaryotic and eukaryotic cells has actually presented any specific difficulty in using
the Type-II CRISPR-Cas system and methods in eukaryotic cells. See Ex. 1555, p. 179, l. 8-p. p.
180, l. 9, p. 192, l. 10 p. 193, l. 16, p. 202, l. 2 22,. p. 203, ll. 16-21.
Response: Denied.
104.
Dr. Simons admitted on cross-examination that he did not have any evidence that
misfolding proteins was actually a factor or an impediment to the successful use of Cas9 systems
in eukaryotic cells. Ex. 1555, at 179, ll. 14-19.
Response: Denied.
105.
Eukaryotic DNA is not fixedly bound in chromatin, it was known to be a dynamic
system, constantly exposing different areas of DNA. Ex. 1534, 96; Ex. 1535, 96.
Response: Denied.
106.
DNA in eukaryotes is not limited to chromatin bound genomic DNA. See, e.g.,
Ex. 1556, p. 229, l. 16-p. 230, l. 15.

Response: Admitted.
107.
Examples were known in the art of RNA molecules that could be expressed in
eukaryotic cells and functionally interact with proteins. See, e.g., Ex. 1229.
108.
Dr. Simons admitted on cross examination that each of ribozymes, riboswitches,
and self-splicing introns that he cited as examples, were actually shown to function in eukaryotic
A2-20
cells in the references that he himself cited. See Ex. 1556, p. 216, ll. 19-20, p. 219, l. 21 222, l.
18, p. 225, ll. 5-13.
Response: Denied.
109.
Riboswitches, ribozymes, and self-slicing introns are not proteins like Cas9. Ex.
1534, 88-89; Ex. 1535, 88-89.

Response: Denied.
110.
A person of ordinary skill would not consider riboswitches, ribozymes, and self-
splicing introns to be analogous to Cas9 or predictive or its activity in eukaryotes. Ex. 1534,
88-89; Ex. 1535, 88-89.
Response: Denied.
111.
Wirtz et al. show that the T7 polymerase can access and copy eukaryotic DNA.
Ex. 2240, at 4626; Ex. 1534, 85-86; Ex. 1535, 85-86.

Response: Denied.
112.
UCs first provisional patent application demonstrates that UCs inventors
expected that Type-II CRISPR system could be readily adapted for use in a eukaryotic cell. Ex.
1534, 70; Ex. 1535, 70; see also Ex. 1003, at [00124]-[00129], [00165]-[00177], [00186][00188], [00216], [00178]-[00179], and Figs. 1-4.
Response: Denied.
113.
In an interview published on June 28, 2012, Dr. Doudna explained UCs recent
discovery: Weve discovered the mechanism behind the RNA-guided cleavage of doublestranded DNA that is central to the bacterial acquired immunity system. Ex. 1546, at 1.
Response: Admitted.
114.
In an interview published on June 28, 2012, Dr. Doudna stated: Our results could
A2-21
provide genetic engineers with a new and promising alternative to artificial enzymes for gene
targeting and genome editing in bacteria and other cell types. Ex. 1546, at 1 (emphasis added).
Response: Admitted.
115.
In an interview published on June 28, 2012, Dr. Doudna stated [a]lthough weve
not yet demonstrated genome editing, given the mechanism we describe it is now a very real
possibility. Ex. 1546, at 1
Response: Admitted.
116.
Dr. Simons testified during his deposition, [o]ne never does an experiment
without the belief that it might work under certain circumstances. Ex. 1555, at p. 178, ll. 10-12.
Response: Admitted.
A2-22
Broads Facts 117-122

117.
Junior Party inventor, Feng Zhang, began experiments adapting CRISPR-Cas
systems to function in eukaryotic cells in 2011 and filed a grant proposal with the NIH on
January 12, 2012 that set forth the design of a mammalian CRISPR expression system. Ex.
2009, Simons.3d 11.102; Ex. 2411 at 16, Fig. 4; Ex. 2412.
118.
In an October 24, 2011, email, Dr. Zhang discussed the use of tracrRNA even
when transfecting mature crRNA instead of the CRISPR array. Ex. 2312.
119.
Broad submitted its manuscript for the Cong et al paper, which demonstrates the
successful use of a CRISPR-Cas9 system in eukaryotic cells, to Science on October 5, 2012. Ex.
2009, Simons.3d 11.113; Ex. 1055 at 823.
120.
Proteins smaller than 50-60 kilodaltons (kD), which includes Cre (38 kD), EcoRI
(31kD) and RecA (38 kD), can diffuse through the nuclear membrane. Ex. 2012, Carroll tr. at
65:3-6; Ex. 2305, Orillard at 6491; Ex. 2304, Nagy at 99; Ex. 2315.
121.
C31 integrase has about 370 potential target cites in the eukaryotic genome, but
still only achieves a cutting efficiency increase of 40%. Ex. 1594, Maury at 719-720; Ex. 2013,
Greider tr. at 328:12-329:6, 331:2-332:6.
122.
In 2012, skilled persons would have recognized that the Group II introns had been
shown to function in a eukaryotic cells only by microinjection into an embryonic cell having an
increased magnesium level. Ex. 2012, Carroll tr. at 141:22-25; see also Ex. 2010, Breaker
1.49-1.50, 1.54-1.55.
A2-23
CERTIFICATE OF FILING AND SERVICE

I hereby certify that on the 28th day of September, 2016, a true and complete copy of the
foregoing BROAD et al. REPLY 2 is being filed by 5:00 pm EST via the Interference Web
Portal. Pursuant to agreement of the parties, service copies are being sent by e-mail by 8:00 pm
EST, to counsel for Senior Party as follows:
Todd R. Walters, Esq.
Erin M. Dunston, Esq.
Travis W. Bliss, Ph.D., Esq.
Christopher L. North, Ph.D., Esq.
BUCHANNAN INGERSOLL & ROONEY PC
1737 King Street, Suite 500
Alexandria, Virginia 22314-2727
(703) 836-6620
todd.walters@bipc.com
erin.dunston@bipc.com
travis.bliss@bipc.com
christopher.north@bipc.com
Date: September 28, 2016
Li-Hsien Rin-Laures, M.D., Esq.

Sandip H. Patel, Esq.
Greta Noland
MARSHALL GERSTEIN & BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, Illinois 60606
(312) 474-6300
lrinlaures@marshallip.com
spatel@marshallip.com
gnoland@marshallip.com
/s/ Steven R. Trybus

Steven R. Trybus
Reg. No. 32,760
Lead Counsel for Broad
Jenner & Block LLP
Chicago, IL 60654
Telephone: (312) 222-9350
Facsimile: (312) 527-0484
strybus@jenner.com

BROAD Et Al. REPLY 2

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Filed on behalf of: Junior Party, Broad

By: Steven R. Trybus

By: Raymond N. Nimrod

UNITED STATES PATENT AND TRADEMARK OFFICE

Patent Interference No. 106,048 (DK)

BROAD et al. REPLY 2

INTRODUCTION AND SUMMARY ................................................................................1

STATEMENT OF PRECISE RELIEF REQUESTED ........................................................2

DESCRIPTION OF APPENDICES ....................................................................................3

UC Improperly Conflates Motivation And Expectation Of Success .......................5

The Alleged Later Success Of Others In 2012 Does Not Show An

UCs Prokaryotic Protein Examples Did Not Provide An Expectation Of

UC Misconstrues And Takes Statements Of Broad Scientists Out Of

BROAD et al. REPLY 2

BROAD et al. REPLY 2

INTRODUCTION AND SUMMARY

CRIPSR-Cas9 system could be successfully applied to eukaryotic cells.

conventional techniques. UC Opp. 2 at 1. According to UC, Jinek 2012s disclosure of the

separate patentability of the use of CRISPR/Cas9 in eukaryotic cells.

UC also erroneously conflates motivation and expectation of success, asserting

expectation of success is shown by multiple groups attempting to adapt CRISPR to eukaryotes in

might be repurposed for genome engineering do not indicate a reasonable expectation of

success; they reflect a possibility of success, however remote. UC Opp. 2 at 15.

BROAD et al. REPLY 2

eukaryotes. Broads Motion 2 should be granted.

STATEMENT OF PRECISE RELIEF REQUESTED

BROAD et al. REPLY 2

statement of facts in support of this Reply.

CRISPR-Cas system to eukaryotic cells using conventional techniques. UC Opp. 2 at 1; see

BROAD et al. REPLY 2

Broads eukaryotic invention depended entirely on Jinek 2012 is completely false. 1

BROAD et al. REPLY 2

UC Improperly Conflates Motivation And Expectation Of Success

UCs opposition also erroneously conflates motivation and reasonable expectation of

statements regarding motivation to assert an expectation of success. For example, UC relies on

BROAD et al. REPLY 2

reasonable expectation that the experiment will succeed. See In re Cyclobenzaprine

even if the likelihood of success is very low.

would have perceived a reasonable expectation of success corresponding to the alleged

motivation, i.e., making a eukaryotic CRISPR invention as a TALEN or zinc-fingers

BROAD et al. REPLY 2

modification. On page 24 of its Opposition, UC cites the publication where a pre-assembled

medium.). The further response is that UC provides no evidence of a motivation to replace

Given the effort required to achieve limited results in an artificially-altered eukaryotic

BROAD et al. REPLY 2

On page 7 of its Opposition, UC relies on a prediction in Sontheimers 2009 patent

problem. Dr. Doudnas statement is a contemporaneous admission that adapting CRISPR to

function in eukaryotic cells was not merely routine and expected.

BROAD et al. REPLY 2

UC hardly acknowledges Dr. Doudnas admission that she experienced many

involved only routine work (contrary to being a profound discovery).

BROAD et al. REPLY 2

purposes of determining whether an interference-in-fact exists between Broads eukaryotic

expectation of success in eukaryotes. See, e.g., Ex. 2009; Simons 11.35.

BROAD et al. REPLY 2

UCs Prokaryotic Protein Examples Did Not Provide An Expectation Of

BROAD et al. REPLY 2

per DNA-targeting sequence. Ex. 2013, Greider tr. at 324:1-2.

BROAD et al. REPLY 2

BROAD et al. REPLY 2

UC Misconstrues And Takes Statements Of Broad Scientists Out Of Context

At page 14 of its Opposition, UC states that the contemporaneous quotations cited by

contemporaneous article expressed an expectation of success. Instead, they only express