Less than two months after CVC made the surprising move to revoke two of its seminal European CRISPR patents, Sigma-Aldrich has done it too. While the facts that led to Sigma’s “self” revocation may be different than CVC’s, this en vogue trend of avoiding final decisions is troubling because it denies the public of the certainty it deserves.

Nicholas C. Prairie
Nicholas (“Nick”) Prairie is an associate in the Litigation Department, and a member of the Life Sciences Patent practice. He works with life science and pharmaceutical clients of all sizes and counsels through the life cycle of U.S. and foreign patent assets.
Nick is experienced at conducting freedom-to-operate and patentability analyses to identify opportunities in crowded therapeutic fields, as well as developing and implementing prosecution strategies to support commercial efforts. He has prepared non-infringement and invalidity opinions, evaluated litigation risk, and developed potential litigation strategies. He has conducted infringement analyses and has prepared complaints for federal district courts and the International Trade Commission. Nick is also heavily involved in supporting opposition practice in Europe, on the sides of both Opponents and Patentees.
Nick’s technical expertise is diverse. While trained as a synthetic organic chemist, he works with an array of therapeutics in the chemistry space, including small molecules, macrolides, and multifunctional molecules, as well as therapeutics in the biotechnology space including antibodies, enzyme replacement therapies, engineered cells, nucleic acid-based therapies, and gene editing technologies. Prior to joining Proskauer, Nick was an associate at another Boston firm where he assisted in patent prosecution and district court litigation.
Before law school, he worked for about eight years as a chemist where he designed and synthesized a variety of pharmaceutically interesting compounds including; small molecules, peptides, peptide-drug conjugates, proteins, and protein-polymer conjugates, and is an inventor on several patents/patent applications. As a graduate student his research focused on natural product synthesis. In addition to staying up to date on the ever-shifting patent case law, Nick enjoys spending time with his dog and staying active.
To Be Or Not To Be: Self-Revocation of Seminal European Patents Creates New Uncertainty In CRISPR IP Space
There is no shortage of surprises and twists in the decade-long fight over the control of dominant IP in the CRISPR space. The newest one is the self-revocation of two seminal CRISPR patents in Europe by the team led by two Nobel Laureates Emmanuelle Charpentier and Jennifer Doudna (aka “CVC”). …
The Broad Impact of Edwards v. Meril on the Safe Harbor Provision
The Federal Circuit’s decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., has garnered significant attention, especially concerning the application of the “safe harbor” provision under 35 U.S.C. § 271(e)(1). The Federal Circuit’s ruling, and the subsequent denial of Edwards’s petition for rehearing en banc, underscores the breadth of the safe harbor, putting to bed the question of whether “solely” means “only” in the context of the safe harbor.
Scope of Issued Patents May be Limited by Prosecution Estoppel Created in Child Cases
Cell therapy products in the U.S. are estimated to be worth approximately $4.5 billion currently and expected to grow to over $30 billion in the next ten years. As market value increases litigation is bound to heat up.
Recently, Fate Therapeutics and the Whitehead Institute sued Shoreline Biosciences in the Southern District of California for allegedly infringing six patents directed to composition and methods relating to induced pluripotent stem cells (iPSCs) directly under 35 U.S.C. §§ 271(a) and (g), and for inducing infringement. Fate’s infringement theories included both literal infringement and infringement under the Doctrine of Equivalents. The court granted summary judgment of noninfringement to Shoreline for all asserted claims.