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At California Central District Court Juno Therapeutics, Inc. et al v. Kite Pharma, Inc. – Multi-party Patent Infringement

Curator and Reporter: Aviva Lev-Ari, PhD, RN

 

Infringement of Patent: US7446190B2 – which is exclusively licensed to Juno Therapeutics, Inc.

United States

Inventor
Michel Sadelain
Renier Brentjens
John Maher
Current Assignee
Sloan-Kettering Institute for Cancer Research

Worldwide applications
2003  US

Application US10/448,256 events
2002-05-28
Priority to US38387202P
2008-11-04
Application granted
Application status is Active
Adjusted expiration
Show all events

 

SUMMARY OF INVENTION

The present invention provides chimeric TCR’s, nucleic acid polymer encoding the chimeric TCR’s and methods of using the chimeric TCR’s to facilitate T cell response to a specific target. The chimeric TCR’s of the invention combine, in a single chimeric species, the intracellular domain of CD3 ζ-chain (“zeta chain portion”), a signaling region from a costimulatory protein such as CD28 and a binding element that specifically interacts with a selected target. Thus, in accordance with a first aspect of the invention, there is provided a nucleic acid encoding a chimeric T cell receptor, said chimeric T cell receptor comprising a zeta chain, a CD28 signaling region and a binding element that specifically interacts with a selected target. In accordance with a second aspect of the invention, there is provided a chimeric T cell receptor comprising a zeta chain portion, a CD28 signaling region and a binding element.

In accordance with the method of the invention a chimeric TCR is provided which comprises a zeta chain portion, a co-stimulatory signaling element and a binding element which specifically interacts with a cellular marker associated with target cells. T-lymphocytes from the individual to be treated, for example a human individual, are transduced with the chimeric TCR. This transduction may occur ex vivo, after which the transduced cells are reintroduced into the individual. As a result, T cell immune response is stimulated in the individual to the target cells.

SOURCE

https://patents.google.com/patent/US7446190B2/en

  • Prior Art Search results: (cells) (nucleic acid) (acid polymer) (cell) (cd28) before:priority:2002-05-28

Assignees Inventors include:

C12P21
C12P21/00
C12P
C12P21/02
C07K14/52
C07K14/715
C07K14/54
C07K14/521
C07K14/47
C07K14/46
C12N9/6432
C12Y304/21006
C07K14/47
C07K14/46
C07K14/475
C07K14/435
A01K2217
A01K2217/00
A01K
A01K2217/075
C12N2533/00
C12N2533/14
C12N2533/18
C12N2533/30
G01N33/502
G01N33/5041
Y10S435/973
G01N33/5008
B01J2219/00648
B01J2219/00306
B82Y15/00
B01J2219/00646
C07K14/70532
C07K14/70503
C07K16/2827
A61K2039/5158
A61K38/1774
A61K31/33
A61K45
A61K45/06
C07K14/70532
C12N2795
C12N2795/00
C12N2795/00011
C07K14/47
C07K14/46
A61K48/00
C07K14/435
C12N2510/00
C12N2502/99
C12N2501/515
C12N2501/51
C07K14/70503
A61K38/00
A61K
C07K14/705
G01N33/6878
G01N33/68
C07K1/047
C07K1/04
C07K14/70503
A01K2217/05
C07K14/705
A01K2217
Y02A50/38
A61K2039/6068
A61K2039/6025
C07K2319/21
C07K14/47
C07K14/46
A61K48/00
C07K14/435
C07K14/4747
C07K14/70575
A61K45/06
A61K45

SOURCE

https://patents.google.com/?q=cells&q=nucleic+acid&q=acid+polymer&q=cell&q=cd28&before=priority:20020528&scholar

 

IRELL & MANELLA LLP Morgan Chu (SBN 70446) Alan J. Heinrich (SBN 212782) Elizabeth C. Tuan (SBN 295020) 1800 Avenue of the Stars, Suite 900 Los Angeles, California 90067-4276 Telephone: (310) 277-1010 Facsimile: (310) 203-7199 Attorneys for

Plaintiffs JUNO THERAPEUTICS, INC., MEMORIAL SLOAN KETTERING CANCER CENTER, and SLOAN KETTERING INSTITUTE FOR CANCER RESEARCH UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, and Sloan Kettering Institute for Cancer Research,,

Plaintiffs, v. Kite Pharma, Inc., Defendant. ) ) ) ) ) ) ) ) ) ) ) )

CASE NO.: 2:17-CV-07639

COMPLAINT FOR PATENT INFRINGEMENT

DEMAND FOR JURY TRIAL

Case 2:17-cv-07639 Document 1 Filed 10/18/17 Page 1 of 14 Page ID #:1

Knowing that it infringes the ’190 Patent, Kite challenged the validity of all claims of the ’190 Patent in an inter partes review (“IPR”) in the United States Patent and Trademark Office (“PTO” or “Office”) before the Patent Trial and Appeal Board (“PTAB” or “Board”). The PTAB instituted the IPR and then upheld all claims of the ’190 Patent in a Final Written Decision issued December 16, 2016. The PTAB concluded that Kite did not even show “by a preponderance of the evidence”—the lower standard applicable to validity challenges in an IPR—that any claim of the ’190 Patent was unpatentable.

Kite recently received marketing approval from the Food and Drug Administration (“FDA”) for its Yescarta™ product (axicabtagene ciloleucel) (“axicel” or “Yescarta,” also known as “KTE-C19”) on October 18, 2017. Plaintiffs accordingly bring suit against Kite for infringement based on Kite’s making, using, offering to sell, and selling of its chimeric antigen receptor products that comprise the claimed nucleic acid polymers of the ’190 Patent. 35 U.S.C. § 271(a). Plaintiffs hereby allege for their Complaint against Defendant Kite, on personal knowledge as to their own actions and on information and belief as to the actions of others,

26. Indeed, the DNA sequence of Kite’s retroviral vector demonstrates that Kite’s anti-CD19 chimeric TCR falls within the scope of the ’190 Patent claims. In a document Kite filed with the Recombinant DNA Advisory Committee (“RAC”), a federal committee that reviews clinical trial protocols that are either directly funded by the National Institutes of Health (“NIH”) or conducted at institutions that receive NIH funding, Kite provided the DNA sequence of KTE-C19’s anti-CD19 chimeric TCR vector. Exhibit 10 (KTE-C19 DNA Sequence). The RAC filing described the retroviral vector used as

encoding a chimeric antigen receptor directed against the B cell antigen, CD19 . . . The retroviral vector utilizes the MSGV1 (murine stem cell virus-based splice-gag vector 1) retroviral vector backbone and consists of 7026 bps including the 5’ long terminal repeat (LTR) from the murine stem cell virus (promoter), packaging signal including the splicing donor (SD) and splicing acceptor sites, FMC63- based (anti-CD19 FMC63-28) CAR protein containing a signal peptide (human GM-CSF receptor), FMC63 light chain variable region (FMC63 VL), linker peptide, FMC63 heavy chain variable region (FMC63 VH), CD28 (hinge, transmembrane and cytoplasmic region), and TCR-zeta (cytoplasmic region), followed by the murine stem cell virus 3’LTR. This particular vector was provided by Dr. Steven A. Rosenberg from the Surgery Branch/NCI and is the same vector used in an ongoing RAC-approved clinical trial of which Dr. Stephen A. Rosenberg is the Principal Investigator (OBA/RAC submission 0809-940). . . . [T]he complete nucleotide sequence as determined by the standard nucleotide sequencing protocol is shown in Appendix 2 of this application.

27. During the IPR Kite initiated against the ’190 Patent, Sloan Kettering’s expert, Prof. Thomas Brocker, the Director of the Institute for Immunology at the Ludwig-Maximilians University in Munich, Germany, compared the chimeric TCR used by Kite’s scientific collaborators to the claims of the ’190 Patent, demonstrating that Kite’s collaborators’ chimeric TCR construct, and thus, Kite’s own KTE-C19 product, falls within the scope of at least claims 1-3 and 5 of the ’190 Patent. Exhibit 12 (Brocker Declaration), ¶ 224. The NCI chimeric TCR analyzed by Prof. Brocker contains the same nucleotide sequence as KTE-C19’s chimeric TCR. See Exhibit 11 (RAC Filing).

28. On October 18, 2017, Kite received approval for the FDA to market and sell Yescarta (axicabtagene ciloleucel) in the United States.

COUNT 1:

INFRINGEMENT OF THE ’190 PATENT UNDER 35 U.S.C. § 271(a)

29. Plaintiffs re-allege and incorporate by reference the allegations contained in paragraphs 1-28 above.

30. to 40. are Plaintiffs’ description of Defendant Infringement on claims of the Patent

MAIN SOURCE for Filings by Plaintiffs

http://litigationtools.maxval-ip.com/UnifiedPatentViewDocument/home/index?caseid=128416

 

 

Plaintiffs:

  • Juno Therapeutics, Inc.,
  • Memorial Sloan Kettering Cancer Center,
  • Sloan Kettering Institute for Cancer Research

Defendant and Counterclaimant

  • Kite Pharma, Inc.

 

Effective April 17, 2018, Magistrate Judge Rozella A. Oliver will be located at the Edward R. Roybal Federal Building and U.S. Courthouse, COURTROOM 590 on the 5th floor, located at 255 East Temple Street, Los Angeles, California 90012. All Court appearances shall be made in Courtroom 590 of the Roybal Federal Building,

100

Oct 9, 2018

MINUTE IN CHAMBERS CLAIM CONSTRUCTION ORDER by Judge S. James Otero: The Court finds that a POSITA encountering the 190 Patent prior to the CoC would have understood SEQ ID NO:6 to begin with nucleotide 336 of the CD28 protein. The Court construes the disputed claim terms as follows: 1. The amino acid sequence encoded by SEQ ID NO:6 before the Certificate of Correction means Amino Acids 113-220 of CD28 (starting with lysine (K)) and after the Certificate of Correction means Amino Acids 114-220 of CD28 (starting with isoleucine (I)). 2. nucleic acid polymer encoding… a binding element that specifically interacts with a selected target is given its plain and ordinary meaning. (shb) (Entered: 10/10/2018)

 

Main Doc

 

Juno Therapeutics, Inc. et al v. Kite Pharma, Inc. (2:17-cv-07639), California Central District Court

California Central District Court
Judge: S James Otero
Referred: Jacqueline Chooljian
Case #: 2:17-cv-07639
Nature of Suit 830 Property Rights – Patent
Cause 35:271 Patent Infringement
Case Filed: Oct 18, 2017
Docket last updated: 03/08/2019 11:59 PM PST 

Thursday, March 07, 2019
150 order For Order Thu 12:50 PM 
ORDER GRANTING DEFENDANT KITE PHARMA, INC.S EX PARTE APPLICATION FOR AN EXTENSION OF TIME FOR THE MAGISTRATE JUDGE TO HEAR MOTIONS TO COMPEL PRODUCTION OF DOCUMENTS AND WITNESSES144 by Judge S. James Otero: 1. Time is extended until April 17, 2019, for the Magistrate Judge to hear (a) any motions to compel Plaintiffs to produce documents that Kite has already identified as deficient in Plaintiffs production and Plaintiffs have not yet produced, and (b) a motion to compel Bristol-Myers Squibb Company to produce documents in response to Kites subpoena; and 2. Time is extended until May 10, 2019, for the Magistrate Judge to hear a motion to compel deposition testimony regarding the documents described in paragraph 1 above. (lc) Modified on 3/7/2019 (lc)
Wednesday, March 06, 2019
149 transcript -Transcript Order Form (G-120) Wed 2:56 PM 
TRANSCRIPT ORDER as to Defendant Kite Pharma, Inc. for Court Smart (CS). Court will contact Adam R. Lawton at adam.lawton@mto.com with further instructions regarding this order. Transcript preparation will not begin until payment has been satisfied with the transcription company. (Lawton, Adam)
Tuesday, March 05, 2019
147 respm Reply (Motion related) Tue 5:31 PM 
REPLY in support of EX PARTE APPLICATION for Order for Extension of Time for the Magistrate Judge to Hear Motions to Compel Production of Documents and Witnesses 144 filed by Defendant Kite Pharma, Inc..(Lawton, Adam)
Att: 1 Reply Declaration of Adam R. Lawton
146 respm Objection/Opposition (Motion related) Tue 12:26 PM 
OPPOSITION Ex Parte Application re: EX PARTE APPLICATION for Order for Extension of Time for the Magistrate Judge to Hear Motions to Compel Production of Documents and Witnesses 144Opposition filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research.(Wells, Crawford)
Att: 1 Declaration,
Att: 2 Exhibit 1
Monday, March 04, 2019
148 minutes Telephone Conference For Order re Discovery Matter Wed 9:27 AM 
MINUTES OF CONTINUED PRE-MOTION TELEPHONIC DISCOVERY CONFERENCE settling139 Motion re: Informal Discovery Dispute held before Magistrate Judge Karen L. Stevenson. Should Judge Otero grant Kite’s Ex Parte Application, Kite may file a motion to compel. In the interim, at the request of counsel for non-party BMS, who does not receive the CM/ECF notifications in this case, the Court ORDERS Defendant Kite, to provide copies to BMS counsel of the following: (1) Minutes of Pre-Motion Telephonic Discovery Conference held on February 26, 2019, (Dkt. No. 138) (see document for further details). Court Recorder: XTR 03-04-19. (hr)
145 respm Declaration (Motion related) Mon 12:52 PM 
DECLARATION of Adam R. Lawton (Corrected) in support of EX PARTE APPLICATION for Order for Extension of Time for the Magistrate Judge to Hear Motions to Compel Production of Documents and Witnesses 144 filed by Defendant Kite Pharma, Inc.. (Lawton, Adam)
144 17 pgs motion Order Mon 11:50 AM 
EX PARTE APPLICATION for Order for Extension of Time for the Magistrate Judge to Hear Motions to Compel Production of Documents and Witnesses filed by Defendant Kite Pharma, Inc.. (Lawton, Adam)
Att: 1 Proposed Order,
Att: 2 Declaration of Adam R. Lawton,
Att: 3 Exhibit 1,
Att: 4 Exhibit 2,
Att: 5 Exhibit 3,
Att: 6 Exhibit 4,
Att: 7 Exhibit 5,
Att: 8 Exhibit 6,
Att: 9 Exhibit 7,
Att: 10 Exhibit 8,
Att: 11 Exhibit 9,
Att: 12 Exhibit 10,
Att: 13 Exhibit 11,
Att: 14 Exhibit 12,
Att: 15 Exhibit 13,
Att: 16 Exhibit 14,
Att: 17 Exhibit 15,
Att: 18 Exhibit 16
Thursday, February 28, 2019
143 order Leave to File Excess Pages Thu 10:50 AM 
ORDER GRANTING-IN-PART DEFENDANT KITE PHARMA, INC.’S APPLICATION FOR LEAVE TO FILE A 10-PAGE REPLY BRIEF IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT140 by Judge S. James Otero. It is hereby ordered that Defendant Kite Pharma, Inc. may file a reply brief of no more than 10 pages in support of its motion for summary judgment of noninfringement. Plaintiffs are permitted to file a sur-reply, not to exceed 7 pages, addressing the admissibility of the expert declarations submitted in support of its opposition to Defendant’s motion for summary judgment of noninfringement. The sur-reply shall be filed no later than 5 days from Defendant’s reply. IT IS SO ORDERED. (lom)

Juno Therapeutics, Inc. v. Kite Pharma, Inc. (2:17-cv-07639)

District Court, C.D. California

 

 

 

 

 

 

 

Recorded here ONLY if PDF is Downloadable

Oct 18, 2017

COMPLAINT Receipt No: 0973-20685642 – Fee: $400, filed by Plaintiffs Juno Therapeutics, Inc., Sloan Kettering Institute for Cancer Research, Memorial Sloan Kettering Cancer Center. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14) (Attorney Morgan Chu added to party Juno Therapeutics, Inc.(pty:pla), Attorney Morgan Chu added to party Memorial Sloan Kettering Cancer Center(pty:pla), Attorney Morgan Chu added to party Sloan Kettering Institute for Cancer Research(pty:pla))(Chu, Morgan) (Entered: 10/18/2017)

Main Doc

3

Oct 18, 2017

Request for Clerk to Issue Summons on Complaint (Attorney Civil Case Opening),, 1 filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research. (Chu, Morgan) (Entered: 10/18/2017)

SKIPPED

46

Jan 29, 2018

JOINT REPORT Rule 26(f) Discovery Plan ; estimated length of trial 5-12 days, filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research.. (Attachments: # 1 Appendix 2)(Chu, Morgan) (Entered: 01/29/2018)

SKIPPED

66

Mar 29, 2018

AMENDED ANSWER and AMENDED COUNTERCLAIM to Complaint (Attorney Civil Case Opening),, 1 filed by Defendant and Counterclaimant Kite Pharma, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Appendix (redline version of amended pleading))(Lawton, Adam) (Entered: 03/29/2018)

SKIPPED

74

May 11, 2018

STIPULATION for Protective Order filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research. (Attachments: # 1 Proposed Order)(Tuan, Elizabeth) (Entered: 05/11/2018)

75

May 14, 2018

ORDER GRANTING PROTECTIVE ORDER by Magistrate Judge Rozella A. Oliver re Stipulation for Protective Order 74 (dml) (Entered: 05/14/2018)

Protective Order

SKIPPED

85

Aug 13, 2018

DECLARATION of Alan J. Heinrich re Brief (non-motion non-appeal), 84 ISO Juno’s Claim Construction Brief filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research, Counter Defendants Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research. (Attachments: # 1 Exhibit Exhibit 1, # 2 Exhibit Exhibit 2, # 3 Exhibit Exhibit 3, # 4 Exhibit Exhibit 4, # 5 Exhibit Exhibit 5, # 6 Exhibit Exhibit 6, # 7 Exhibit Exhibit 7, # 8 Exhibit Exhibit 8, # 9 Exhibit Exhibit 9, # 10 Exhibit Exhibit 10, # 11 Exhibit Exhibit 11)(Heinrich, Alan) (Entered: 08/13/2018)

Main Doc

Declaration

115

Dec 3, 2018

SEALED DECLARATION IN SUPPORT OF APPLICATION to file document (Reply in Support of Motion to Dismiss and Exhibits J-M) under seal 114 filed by Defendant Kite Pharma, Inc.. (Attachments: # 1 Unredacted Document Reply in Support of Motion to Dismiss, # 2 Unredacted Document Exhibit J, # 3 Unredacted Document Exhibit K, # 4 Unredacted Document Exhibit L, # 5 Unredacted Document Exhibit M)(Lawton, Adam) (Entered: 12/03/2018)

Main Doc

117

Jan 4, 2019

STIPULATION to AMEND Protective Order 75 filed by Defendant Kite Pharma, Inc.. (Attachments: # 1 Amended Protective Order, # 2 Proposed Order)(Lawton, Adam) (Entered: 01/04/2019)

118

Jan 7, 2019

ORDER GRANTING AMENDED PROTECTIVE ORDER by Magistrate Judge Rozella A. Oliver, re Stipulation to Amend Protective Order 117 (dml) (Entered: 01/07/2019)

119

Jan 7, 2019

AMENDED PROTECTIVE ORDER by Magistrate Judge Rozella A. Oliver, re Order Granting 118 (dml) (Entered: 01/07/2019)

122

Jan 24, 2019

Joint STIPULATION to Extend Discovery Cut-Off Date to March 29, 2019 filed by Plaintiffs Juno Therapeutics, Inc., Memorial Sloan Kettering Cancer Center, Sloan Kettering Institute for Cancer Research. (Attachments: # 1 Proposed Order)(Heinrich, Alan) (Entered: 01/24/2019)

Main Doc

SOURCE

https://www.courtlistener.com/docket/6175992/juno-therapeutics-inc-v-kite-pharma-inc/

Other related sources

35 U.S.C. 271 – Infringement of patent

Other related articles published in this Online Open Access Scientific Journal, include the following:

Economic Potential of a Drug Invention (Prof. Zelig Eshhar, Weitzman Institute, registered the patent) versus a Cancer Drug in Clinical Trials: CAR-T as a Case in Point, developed by Kite Pharma, under Arie Belldegrun, CEO, acquired by Gilead for $11.9 billion, 8/2017.

Curator: Aviva Lev-Ari, PhD, RN

https://pharmaceuticalintelligence.com/2017/10/04/economic-potential-of-a-drug-invention-prof-zelig-eshhar-weitzman-institute-registered-the-patent-versus-a-cancer-drug-in-clinical-trials-car-t-as-a-case-in-point-developed-by-kite-pharma-unde/

 

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Newly Elect President of Technion, Professor Uri Sivan: Key Contributions to Scientific Innovations

 

Reporter: Aviva Lev-Ari, PhD, RN

 

February 7, 2019
By: Office of the Technion Spokesperson

The Technion Council, headed by Mr. Gideon Frank, has elected Professor Uri Sivan of the Faculty of Physics as the next president of Technion. The Council’s decision was based on the recommendation of the Search Committee for the Technion President and received sweeping support from the Academic Assembly. The appointment is subject to the final approval of the International Board of Governors, which is set to convene in June.

Professor Uri Sivan

Prof. Sivan will commence his term as President of Technion on October 1 2019, and will replace the outgoing President Prof. Peretz Lavie, who will complete his term after a decade in office.

Prof. Sivan, 64, a resident of Haifa, is married and the father of three. He served as a pilot in the Israeli Air Force. He has a BSc in Physics and Mathematics, an MSc and PhD in Physics, all with honors from Tel Aviv University.

In 1991, after three years at IBM’s T. J. Watson Research Center in New York, Prof. Sivan joined the Faculty of Physics at Technion.

SOURCE

https://ats.org/news/professor-uri-sivan-elected-new-president-of-the-technion/

 

Key Contributions to Scientific Innovations

  • His research has covered a wide range of fields including quantum mesoscopic physics and the harnessing of molecular and cellular biology for the self-assembly of miniature electronic devices. Prof. Sivan, along with colleagues Profs. Erez Braun and Yoav Eichen, demonstrated for the first time how to harness molecular recognition by DNA molecules for wiring an electric circuit. This study gained considerable resonance and helped pave the way for a new field in nanotechnology using the self-assembly properties of biological molecules to construct miniature engineering systems.
  • His research has focused on the way water orders next to molecules and the effect of this ordering on inter-molecular interactions in biologically relevant solutions. Within this framework, Prof. Sivan’s group designs and builds unique, ultra-high-resolution atomic force microscopes.
  • His research has led to patents and industrial applications. Recently, an Israeli start-up company was established in the field of single cell analysis for cancer diagnostics, based on the technology developed in Prof. Sivan’s lab.
  •  Prof. Sivan is the founding director of the Russell Berrie Nanotechnology Institute (RBNI), which he headed between 2005 and 2010.  RBNI has led the scientific revolution in nanotechnology at Technion and has placed the university at the forefront of global research in the field. RBNI made headlines when Prof. Sivan and Dr. Ohad Zohar engraved the entire Hebrew Bible onto a tiny silicon chip. The Nano Bible was written as part of an educational program developed by the Institute to increase young people’s interest in science and especially in nanotechnology. In 2009, President Shimon Peres presented the Nano Bible to Pope Benedict XVI during his official visit to Israel. Today, there are three copies of the chip worldwide: at the Vatican Library, the Smithsonian Museum in Washington D.C., and the Israel Museum in Jerusalem. The establishment of RBNI spearheaded the development of Israel’s national nanotechnology program, and together with centers established in other Israeli universities, has positioned the country as a world leader in nanotechnology.

APPOINTMENTS

Recently, Prof. Sivan was appointed to head the National Advisory Committee in Quantum Science and Technology of the Council for Higher Education’s Planning and Budgeting Committee (PBC). The committee outlined the national quantum academic program, which was adopted and launched last year.

Prof. Sivan has served as a member of the Israeli National Committee for Research and Development (MOLMOP) and the Scientific Advisory Committee of the Batsheva de Rothschild Foundation. He currently serves on the Advisory Committee of the Maof Fellowships Committee for advancing Arab faculty and is a member of the Israeli Wolfson Foundation Advisory Board.

AWARDS

Prof. Sivan is a renowned lecturer in Israel and abroad. He was awarded with numerous prizes including

  • the Mifal Hapais Landau Prize for the Sciences and Research,
  • the Rothschild Foundation Bruno Prize,
  • the Israel Academy of Sciences Bergmann Prize,
  • the Technion’s Hershel Rich Innovation Award, and
  • the Taub Award for Excellence in Research.

 

SOURCE

https://ats.org/news/professor-uri-sivan-elected-new-president-of-the-technion/

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Patent on Methods and compositions for RNA-directed target DNA modification and for RNA-directed modulation of transcription was awarded to UC, Berkeley on October 30, 2018

  •  site-specific modification of a target DNA and/or a polypeptide associated with the target DNA, a DNA-targeting RNA
  •  genetically modified cells that produce Cas9; and Cas9 transgenic non-human multicellular organisms.

Reporter: Aviva Lev-Ari, PhD, RN

 

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United States Patent 10,113,167
Doudna ,   et al. October 30, 2018

Methods and compositions for RNA-directed target DNA modification and for RNA-directed modulation of transcription 

AbstractThe present disclosure provides a DNA-targeting RNA that comprises a targeting sequence and, together with a modifying polypeptide, provides for site-specific modification of a target DNA and/or a polypeptide associated with the target DNA. The present disclosure further provides site-specific modifying polypeptides. The present disclosure further provides methods of site-specific modification of a target DNA and/or a polypeptide associated with the target DNA The present disclosure provides methods of modulating transcription of a target nucleic acid in a target cell, generally involving contacting the target nucleic acid with an enzymatically inactive Cas9 polypeptide and a DNA-targeting RNA. Kits and compositions for carrying out the methods are also provided. The present disclosure provides genetically modified cells that produce Cas9; and Cas9 transgenic non-human multicellular organisms.


Inventors: Doudna; Jennifer A. (Berkeley, CA), Jinek; Martin (Berkeley, CA), Chylinski; Krzysztof (Vienna, AT), Charpentier; Emmanuelle (Braunschweig, DE)
Applicant:
Name City State Country Type

The Regents of the University of California
University of Vienna
Charpentier; Emmanuelle
Oakland
Vienna
Braunschweig
CA
N/A
N/A
US
AT
DE
Assignee: The Regents of the University of California (Oakland, CA)
University of Vienna (Vienna, AT)
Charpentier; Emmanuelle (Braunschweig, DE)
Family ID: 1000003617643
Appl. No.: 15/138,604
Filed: April 26, 2016

SOURCE

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=10113167.PN.&OS=PN/10113167&RS=PN/10113167

SAVE

UC Berkeley team awarded second CRISPR-Cas9 patent

 

“Today’s news … represents yet another validation of the historic and field-changing breakthrough invented by scientists Jennifer Doudna, Emmanuelle Charpentier, and their team… The patent announced today specifically highlights the CRISPR-Cas9 invention’s ability to edit DNA in any setting, including within animal and human cells. It also highlights its utility in several formats across both dual-RNA and single-RNA configurations, useful for therapy for genetic diseases and for improving food security.”
— Edward Penhoet, special adviser to the UC Berkeley chancellor, tells Axios

The details: According to the patent, the compositions can be used in animal or human cells, and can work as either 2 separate pieces of RNA or a single piece of RNA.

  • Penhoet says the new patent covers 2 RNA components that together form the “DNA-targeting-RNA,” with one that targets the particular sequence of DNA needed to be edited and the other that binds with the Cas9 protein.
  • This follows another patent given to UC Berkeley in June on methods to use CRISPR-cas9.
  • The patents cover the composites used by CRISPR-Cas9 within human, plant, animal and bacteria cells.
  • Both allow the use of strands of RNA “that can be shorter than naturally-occurring RNA components. This allows them to be more easily used and, therefore, is a form often preferred,” Penhoet says.

Go deeper:

SOURCE

https://www.axios.com/uc-berkeley-awarded-crispr-cas9-gene-edit-patent-5a533f22-929d-4e7d-83fe-0a73ebeb4538.html

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Will the Supreme Court accept a UC Berkeley Appeal of the Sep. 10th, US Court of Appeals for the Federal Circuit decision to uphold the patent filed by the Broad Institute on CRISPR/Cas9 gene editing?

Reporter: Aviva Lev-Ari, PhD, RN

 

On 2018, Sep. 10th, the US Court of Appeals for the Federal Circuit agreed to uphold the patent filed by the Broad Institute on CRISPR/Cas9 gene editing in organisms with complex cells – UC Berkeley team can appeal this decision to the US Supreme Court, it is unclear whether the Supreme Court will accept this case.

According to Appeal and Interference Statistics 11/30/2016

https://www.uspto.gov/sites/default/files/documents/Appeal%20and%20Interference%20Statistics%20November%202016.pdf

In recent years, more than half of PTAB’s decisions have been upheld. “The Federal Circuit heard three appeals of interferences in 2016,” said intellectual property expert Jacob Sherkow of New York Law School. “All three were at least affirmed in part. It’s completely unclear whether that’s meaningful — it’s an N of 3–but there you go.” Overall, on 155 appeals since PTAB was created in 2012, the Federal Circuit affirmed 120 on every issue, dismissed or reversed 21 on every issue, and issued partial decisions (that is, upholding parts of a PTAB decision and reversing others) in the other 14.

SOURCE

Disputed CRISPR Patents Stay with Broad Institute, U.S. Panel Rules

Three judges have released their decision

https://www.scientificamerican.com/article/disputed-crispr-patents-stay-with-broad-institute-u-s-panel-rules/

 

Based on

Appeal and Interference Statistics 11/30/2016

https://www.uspto.gov/sites/default/files/documents/Appeal%20and%20Interference%20Statistics%20November%202016.pdf

I recommend UC, Berkeley to Appeal to the Supreme Court the Sept 10th Decision.

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On June 12, 2018 – Berkeley was granted a patent on using CRISPR/Cas9 to edit single-stranded RNA. On June 19, 2018 – Berkeley was granted a second patent, covering the use of CRISPR-Cas9 gene editing with formats that will be particularly useful in developing human therapeutics and improvements in food security.

Reporter and Curator: Aviva Lev-Ari, PhD, RN

UPDATED on 3/2/2019

 

U.S. patent office indicates it will issue third CRISPR patent to UC

Patent involved in interference proceedings will add to university’s gene-editing portfolio

The U.S. Patent and Trademark Office has issued a notice of allowance for a University of California patent application covering systems and methods for using single molecule guide RNAs that, when combined with the Cas9 protein, create more efficient and effective ways for scientists to target and edit genes. U.S. patent application number 13/842,859, which had notably been examined in advance of a prior interference proceeding involving the Broad Institute, specifically focuses on methods and systems for modifying a target DNA molecule in any setting, both in vitro and within live cells, using one or multiple single guide RNAs, across every cell type. The associated patent is expected to issue in the next 6-9 weeks.

This CRISPR-Cas9 DNA-targeting technology, invented by Jennifer Doudna and Martin Jinek of the University of California, Berkeley, along with Emmanuelle Charpentier at Umea University and Krzystof Chylinski at the University of Vienna, is a fundamental molecular tool for editing genes. Together, this patent application and prior U.S. Patent Numbers 10,000,772 and 10,113,167, cover CRISPR-Cas9 methods and compositions useful as gene-editing scissors in any setting, including in vitro, as well as within live plant, animal and human cells.

“We are pleased the patent application is now allowed and that the issued patent will encompass the use of CRISPR-Cas9 technology in any cellular or non-cellular environment. We expect to see continued momentum in the expansion of UC’s CRISPR patent portfolio in the coming months,” said Eldora L. Ellison, Ph.D., lead patent strategist on CRISPR matters for the University of California and a director at Sterne, Kessler, Goldstein & Fox. “The steadfast protection of the CRISPR intellectual property pioneered by the Doudna-Charpentier team is wholly focused on the improvement of human welfare.”

https://news.berkeley.edu/2019/02/08/u-s-patent-office-indicates-it-will-issue-third-crispr-patent-to-uc/

 

The patent covers methods of using optimized guide RNA formats (including single guide and dual guide formats) in certain environments, including eukaryotic cells (such as human, animal and plant cells). The optimized formats modify the part of a guide RNA that interacts with the CRISPR/Cas9 nuclease.

 

Who is it that deserves credit for turning a bacterial immune system into a revolutionary gene editing tool?

We suggest that it is as follows: Two owners of IP in Red

Gene Editing Consortium of Biotech Companies: CRISPR Therapeutics $CRSP, Intellia Therapeutics $NTLA, Caribou Biosciences, ERS Genomics, UC, Berkeley (Doudna’s IP) and University of Vienna (Charpentier’s IP), is appealing the decision ruled that there was no interference between the two sides, to the U.S. Court of Appeals for the Federal Circuit, targeting patents from The Broad Institute.

https://pharmaceuticalintelligence.com/2017/04/13/gene-editing-consortium-of-biotech-companies-crispr-therapeutics-crsp-intellia-therapeutics-ntla-caribou-biosciences-and-ers-genomics-uc-berkeley-doudnas-ip-and-university-of-vienna-charpe/

Patents for the wide use of CRISPR-Cas9 for gene editing all types of cells have already been issued to the Doudna-Charpentier team by the European Patent Office (representing more than 30 countries), the United Kingdom, China, Japan, Australia, New Zealand, Mexico and other countries. The scope of the United States patent issued today broadly includes the use of a CRISPR-Cas9 compound that is specially engineered to be more easily employed inside any type of plant or animal cell, or outside a cell, in order to modify a gene or the expression of a gene.

CRISPR Therapeutics, Intellia Therapeutics and Caribou Biosciences issued the following joint statement on the grant of the ‘772 patent:

“We believe that the U.S. patent ‘772 granted today covers the use of CRISPR/Cas9 genome editing with the RNA guide formats that are widely used throughout the industry. We anticipate this is the first of many patents that will be granted to UC on this foundational CRISPR/Cas9 intellectual property.”

In addition to this granted U.S. patent, applications from this patent estate have been found allowable in the United States and also have issued in Europe, the United Kingdom, China, Japan and various other countries worldwide. These patents cover the dual- and single-guide RNA compositions of the widely adopted CRISPR/Cas9 genome editing technology and their uses in all environments, including plant, animal and human cells as well as for use in human therapeutics.

SOURCE

http://ir.intelliatx.com/news-releases/news-release-details/crispr-therapeutics-intellia-therapeutics-and-caribou

https://pharmaceuticalintelligence.com/2017/04/28/doudna-and-charpentier-and-their-teams-to-receive-wide-ranging-patents-in-many-countries-european-patent-office-epo-and-uk-intellectual-property-office-broad-patent-for-crispr-cas9-gene-editing/

Schematic representation of the CRISPR-Cas9 system. The Cas9 enzyme (orange) cuts the DNA (blue) in the location selected by the RNA (red). Image courtesy of Carlos Clarivan/Science Photo Library/NTB Scanpix

 

“Today’s patent is one of many we anticipate will be awarded to these inventors for their CRISPR-Cas9 invention,” said Edward Penhoet, special advisor to the UC Berkeley chancellor and special assistant to the University of California president. “Six years ago, the Doudna-Charpentier team was the first to file a patent application and publish on the necessary and sufficient components that enable CRISPR-Cas9 to be employed in all environments, including plant and animal cells. Their remarkable research has only accelerated since then, creating new jobs and opening up new possibilities to improve life.”

The U.S. patent granted today (10,000,772) is not involved in any interference proceeding before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, or any appeal before the U.S. Court of Appeals for the Federal Circuit. The ‘772 patent is not impacted by the USPTO’s decision to terminate an interference between a separate UC patent application and a patent application owned by the Broad Institute, Harvard University and the Massachusetts Institute of Technology without reaching a decision on which inventors were the first to invent the use of CRISPR/Cas9 technology for genome editing. UC’s appeal of that decision was heard on April 30, 2018 by the U.S. Court of Appeals for the Federal Circuit, which will issue a decision in the future.

RELATED INFORMATION

SOURCE

http://news.berkeley.edu/2018/06/19/doudna-charpentier-team-awarded-u-s-patent-for-crispr-cas9/

Comments made on On June 12, 2018 – Berkeley was granted a patent on using CRISPR/Cas9 to edit single-stranded RNA. On June 19, 2018 – Berkeley was granted a second patent, covering the use of CRISPR-Cas9 gene editing with formats

There have also been others commenting on the decision, including Jacob Sherkow, who’s an associate professor from the New York Law School. He said that he expected the second patent, in particular, to have “pretty minimal commercial value”. While former molecular biologist and biotech patent lawyer, Dr. Kevin Noonan have reportedly said he thinks UC Berkeley “is just happy to get a patent”.

SOURCE

http://www.frontlinegenomics.com/news/23997/finally-a-win-for-uc-berkeley-two-crispr-patents-awarded/

 

The University of California will finally be granted a key CRISPR patent

Other related 140 articles on CRISPR and on the Legal dispute, published in this Open Access Online Scientific Journal, include the following:

https://pharmaceuticalintelligence.com/?s=CRISPR

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Top 25 Worldwide Universities granted US Utility Patents 2016 by National Academy of Inventors (NAI) and by Intellectual Property Owners Association (IPO)

Reporter: Aviva Lev-Ari, PhD, RN

 

1 UNIVERSITY OF CALIFORNIA, THE REGENTS OF …………………………………………………………………………….505

2 MASSACHUSETTS INSTITUTE OF TECHNOLOGY ……………………………………………………..278

3 STANFORD UNIVERSITY …………………………………….244

4 CALIFORNIA INSTITUTE OF TECHNOLOGY………..201

5 TSINGHUA UNIVERSITY / GRADUATE SCHOOL AT SHENZHEN, TSINGHUA UNIVERSITY………………………………………………………..181

6 WISCONSIN ALUMNI RESEARCH FOUNDATION………………………………………………………168

7 JOHNS HOPKINS UNIVERSITY…………………………..167

8 UNIVERSITY OF TEXAS……………………………………….162

9 UNIVERSITY OF MICHIGAN………………………………..142

10 COLUMBIA UNIVERSITY…………………………………….118

11 UNIVERSITY OF SOUTH FLORIDA ………………………114

12 PURDUE RESEARCH FOUNDATION……………………105

12 CORNELL UNIVERSITY / CORNELL RESEARCH FOUNDATION, INC………………………………………………105

14 HARVARD COLLEGE, PRESIDENT AND FELLOWS…………………………………………………………….104

15 KOREA INSTITUTE OF SCIENCE AND TECHNOLOGY ……………………………………………………..100

16 NEW YORK UNIVERSITY / POLYTECHNIC INSTITUTE OF NEW YORK UNIVERSITY………………93

17 UNIVERSITY OF PENNSYLVANIA…………………………92

18 UNIVERSITY OF ILLINOIS……………………………………..91

18 UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INCORPORATED / UNIVERSITY OF FLORIDA…………………………………………………………..91

20 KING FAHD UNIVERSITY OF PETROLEUM AND MINERALS……………………………………………………90

21 RUTGERS UNIVERSITY…………………………………………84

22 UNIVERSITY OF WASHINGTON……………………………83

23 NORTHWESTERN UNIVERSITY……………………………81

23 UNIVERSITY OF CHICAGO / UCHICAGO ARGONNE LLC………………………………………………………81

25 NATIONAL TSING HUA UNIVERSITY……………………80

This report listing the Top 100 Worldwide Universities that received the most U.S. utility patents is published by the National Academy of Inventors and the Intellectual Property Owners Association. The information provided in the list is based on data obtained from the U.S. Patent and Trademark Office. Patents reported are utility patents granted during the 2016 calendar year. When a patent is assigned to one or more entities, credit is given to the first named entity. For inquiries, or if you have a research foundation that should be combined with your university assignment in the future, contact kleach@academyofinventors.org.

SOURCE

http://www.academyofinventors.com/pdf/top-100-universities-2016.pdf

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Developments in CRISPR Patent Dispute: EPO Revokes Broad’s CRISPR Patent

Curator: Aviva Lev-Ari, PhD, RN

 

 

Mixed views on Broad’s fate after EPO revokes CRISPR patent

https://www.lifesciencesipreview.com/news/mixed-views-on-broad-s-fate-after-epo-revokes-crispr-patent-2671

 

EPO Revokes Broad’s CRISPR Patent

The Broad Institute of MIT and Harvard University is at risk of losing its dominant position over the intellectual property covering CRISPR gene-editing technology in Europe, after the European Patent Office (EPO) ruled today (January 17) that a foundational patent is revoked because the Broad did not meet EPO requirements to establish that its researchers were the first to use CRISPR in eukaryotes.

In addition to the highly publicized patent dispute between the Broad and the University of California over the rights to CRISPR gene editing in the U.S., the Broad has been fighting to maintain a number of patents over the technology in Europe. The issue revolves around a disagreement between the Broad and Rockefeller University over who should be named as inventors. The majority of patent applications filed by the Broad in Europe failed to name Rockefeller University itself, as well as Rockefeller researcher Luciano Marraffini, both of which were named on several of the documents filed to establish a priority date for the patent as early as December 2012. Changing the listed inventors goes against the EPO’s formal requirements for priority, leading the agency to rule this morning that the priority documents with the full list of inventors did not count toward establishing priority of the more-limited European filings.

“If you’ve got more than one person on a priority document, they are a singular legal unity,” explains Catherine Coombes, a senior patent attorney with HGF Limited in the U.K. “If you’re going to drop numbers . . . you need to transfer priority from everybody on the first.” Given the ongoing arbitration between the Broad and Rockefeller, it’s not surprising that the Broad did not procure this transfer, she adds.

Today’s decision is the first opposition heard in Europe, but at least 10 other Broad patents have been challenged, many of which have the same issue of leaving out certain inventors from those listed on the documents filed to establish priority. The EPO had put those other proceedings on hold while it looked into this first patent, Coombes says, but now it can apply its ruling to the other cases. “What we will expect to see over the next year or so is a number of the other Broad’s patents in Europe either being completely revoked or being severely limited in Europe.”

The Broad has announced that it will be appealing the EPO’s decision, but “I personally think it’s unlikely that we’ll see a change in direction,” Coombes says. She adds, however, that the institution does have one patent application that does name Rockefeller and Marraffini. “What I would suspect their patent attorneys would be doing is looking over the patent that doesn’t have this [priority] issue and trying to get more claims in that one.”

SOURCE

https://www.the-scientist.com/?articles.view/articleNo/51395/title/EPO-Revokes-Broad-s-CRISPR-Patent/

PRESS RELEASES / 01.15.18

The Rockefeller University and Broad Institute of MIT and Harvard announce update to CRISPR-Cas9 portfolio filed by Broad

An update regarding inventorship and ownership of certain Broad filings relating to the use of the CRISPR-Cas9 system in eukaryotic cells

New York, NY, and Cambridge, Mass., January 15th, 2018

— The Rockefeller University and the Broad Institute of MIT and Harvard have settled their disagreement regarding inventorship and ownership of certain Broad filings relating to the use of the CRISPR-Cas9 system in eukaryotic cells. Rockefeller believed that its faculty member Dr. Luciano Marraffini, co-author with Broad’s Dr. Feng Zhang, on a seminal paper published in Science in 2013, Multiplex Genome Engineering Using CRISPR/Cas Systems, should have been maintained in these Broad eukaryote filings.

SOURCE

https://www.broadinstitute.org/news/rockefeller-university-and-broad-institute-mit-and-harvard-announce-update-crispr-cas9

 

That Other CRISPR Patent Dispute

It’s possible the Rockefeller dispute may work its way in to the interference proceedings involving the Broad and UC Berkeley. Earlier this summer, the patent examiner on the Rockefeller’s application gave an initial rejection to some of the claims because they overlap with UC Berkeley’s patent application. Sherkow said it’s possible the examiner’s decision could be used as evidence to persuade the patent judges that Berkeley was first to develop CRISPR as a gene-editing tool.

SEE

Gene Editing Consortium of Biotech Companies: CRISPR Therapeutics $CRSP, Intellia Therapeutics $NTLA, Caribou Biosciences, ERS Genomics, UC, Berkeley (Doudna’s IP) and University of Vienna (Charpentier’s IP), is appealing the decisionruled that there was no interference between the two sides, to the U.S. Court of Appeals for the Federal Circuit, targeting patents from The Broad Institute.

https://pharmaceuticalintelligence.com/2017/04/13/gene-editing-consortium-of-biotech-companies-crispr-therapeutics-crsp-intellia-therapeutics-ntla-caribou-biosciences-and-ers-genomics-uc-berkeley-doudnas-ip-and-university-of-vienna-charpe/

Other potential casualties of the Rockefeller dispute are some of the Broad’s patents overseas, as Catherine Coombs describes today (August 31) in an opinion article. In a nutshell, patents abroad may be compromised if the applicants on US patents are not the same as those listed on corresponding international patents, Coombs explains.

Rockefeller, Marraffini, and Zhang all declined to comment on the ongoing dispute. The Broad offered a statement acknowledging that Rockefeller has been an important collaborator on CRISPR, and that the institutions share a couple of patent applications related to the tool’s application in prokaryotic cells. “Rockefeller has raised the question of whether its interests are more general,” the statement reads. “We appreciate that Rockefeller has raised this question and expect it will be resolved amicably between our institutions. This resolution will likely take some time.”

The disagreement between Rockefeller and the Broad concerns just one of hundreds of CRISPR-related patent families, noted Corinne Le Buhan, the CEO of IPStudies, a Switzerland-based firm that tracks CRISPR patents. Le Buhan said it’s likely more patent fights will arise. “There are lots of very close patents signed by different inventors,” she told The Scientist. “Based on what we’ve seen on the technology side we can anticipate there will be more disputes.”

SOURCE

https://www.the-scientist.com/?articles.view/articleNo/46921/title/That-Other-CRISPR-Patent-Dispute/

CLASHES OVER THE FUTURE OF GENE THERAPY AT THE US’ BIGGEST BIOTECH MEETING, JP Morgan, SF, January 9-12, 2018

Role of Immune system in gene therapy using CRISPR Cas9

https://www.wired.com/story/clashes-over-the-future-of-gene-therapy-at-the-uss-biggest-biotech-meeting/

 

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