Wolf Greenfield and Client Cold Spring Harbor Laboratory Prevail in 4 IPRs

Wolf Greenfield recently convinced the U.S. Patent Trial and Appeal Board not to institute four inter partes reviews (IPRs) on four separate patents, on behalf of the firm’s longtime client, Cold Spring Harbor Laboratory (CSHL). The patents cover short hairpin RNA (shRNA) invented at CSHL by Gregory Hannon, Ph.D and his team. shRNA is effective in silencing specific gene expression in mammalian cells, making it a versatile tool for a variety of applications including functional genomics, drug discovery, and human therapeutics.

Four petitions for IPR were filed in October 2015 alleging that all claims of four shRNA patents were unpatentable as anticipated and/or obvious. The challenged patents included claims to methods of using shRNAs to attenuate gene expression in mammalian cells, and to mammalian cells and transgenic mice stably expressing shRNA. CSHL turned to Wolf Greenfield's Post-Grant Proceedings Group, which successfully fought the four petitions—reinforcing the validity of the four patents.

This outcome preserves CSHL’s robust and widely licensed shRNA patent portfolio. In 2015, CSHL established Hairpin Technologies Inc. as its exclusive licensing agent for non-therapeutic use of these patents. Hairpin Technologies has successfully expanded the commercial distribution and research use of shRNAs, and in its first year of operations has generated more than $1 million in shRNA licensing revenue.

The Wolf Greenfield post-grant proceedings team that achieved this latest victory on behalf of CSHL and its shRNA patents included Michael Siekman, Oona Johnstone, Chelsea Loughran, and Patricia Granahan. Read more in Law360 and InnovateLI.