MERCK SERONO S.A. v. HOPEWELL PHARMA VENTURES, INC.
Before Hughes, Linn, and Cunningham. Appeal from the Patent Trial and Appeal Board.
Summary: An earlier reference is available as prior art “by another” unless it involved the same inventive entity.
Hopewell requested inter partes review of two Merck patents directed to methods of treating multiple sclerosis (“MS”). The Board found each one unpatentable as obvious over two prior art references: Bodor and Stelmasiak. Merck argued that, under pre-AIA 35 U.S.C. § 102, Bodor was not prior art “by another” because the named inventors on the challenged patents contributed to the portion of Bodor’s disclosure that the Board relied on. The Board rejected Merck’s argument, finding that Merck failed to establish that Dr. De Luca, one of the named inventors, made significant contribution to the cited disclosure in Bodor. Merck appealed.
The Federal Circuit affirmed the Board’s decision. The court explained that, to establish a reference was not “by another,” a portion of the reference’s disclosure must be the “collective work of the same inventive entity identified in the patent.” The court explained that, to remove portions of a cited reference as prior art, the patentee must demonstrate that the relevant disclosure in the prior art reference reflects the collective work of the same inventive entity as the challenged patent. That showing can be made even if fewer than all the inventors are named on the alleged prior art. But if fewer than all the inventors are named, the patentee must establish that the disclosure actually reflects the joint work of all the inventors named on the challenged patent, including those not named on the alleged prior art. Otherwise, the disclosure will be deemed “by another” and thus prior art against the later filing. The showing that a disclosure in the prior art was by the same inventive entity requires evidence that each inventor made a significant contribution – merely having “some unspecified involvement” is insufficient. The court affirmed the Board’s finding that Merck failed to establish that Dr. De Luca made a significant contribution to the cited disclosure in the Bodor reference. Therefore, Bodor was “by another” and constituted prior art.
Editor: Sean Murray
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