This morning, the Federal Circuit released one precedential opinion and one nonprecedential opinion. Both come in companion appeals from the Patent Trial and Appeal Board in inter partes review proceedings. Here are the introductions to the opinions.
Merck Serono S.A. v. Hopewell Pharma Ventures, Inc. (Precedential)
Merck Serono S.A. (“Merck”) appeals the determinations by the Patent Trial and Appeal Board (“Board”) in two consolidated inter partes reviews (“IPR”). This case is a companion case to Merck Serono S.A. v. TWi Pharms., Inc., 2025-1463, -1464, argued on the same day, and decided contemporaneously herewith. In this case, the Board held claims 36, 38, 39, and 41–46 of Merck’s U.S. Patent No. 7,713,947 (“’947 patent”) and claims 17, 19, 20, and 22–27 of Merck’s U.S. Patent No. 8,377,903 (“’903 patent”) unpatentable as obvious over a combination of Bodor and Stelmasiak. Hopewell Pharma Ventures, Inc. v. Merck Serono S.A., IPR2023-00480 (P.T.A.B. Sept. 18, 2024) (U.S. Pat. No. 7,713,947) (hereinafter, “FWD”); Hopewell Pharma Ventures, Inc. v. Merck Serono S.A., IPR2023- 00481 (P.T.A.B. Sept. 18, 2024) (U.S. Pat. No. 8,377,903). The parties argue all claims of both patents together. Because we see no legal or factual errors in the Board’s analysis, we affirm the Board’s unpatentability determination and clarify our precedent on the interpretation of the phrase “by others” or “by another” under pre-AIA 35 U.S.C. §§ 102(a), (e) when a reference and the patent-at-issue identify overlapping inventors.
Merck Serono S.A. v. TWi Pharmaceuticals, Inc. (Nonprecedential)
This case is a companion case to Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., No. 2025-1210, -1211, (Fed. Cir. argued July 11, 2025; decided Oct. 30, 2025) (hereinafter Hopewell), argued on the same day and decided contemporaneously herewith.
Merck Serono S.A. (“Merck”) appeals the determinations by the Patent Trial and Appeal Board (“Board”) in two inter partes reviews (“IPR”) that claims 36, 38, 39, and 41–48 of Merck’s U.S. Patent No. 7,713,947 (“’947 patent”) and claims 17, 19–20, and 22–29 of Merck’s U.S. Patent No. 8,377,903 (“’903 patent”) are unpatentable as obvious (collectively “patents-in-suit”). TWi Pharms., Inc. v. Merck Serono SA, IPR2023-00049 (P.T.A.B. Dec. 18, 2024) (addressing U.S. Pat. No. 7,713,947) (hereinafter “FWD”); TWi Pharms., Inc. v. Merck Serono SA, IPR2023-00050 (P.T.A.B. Dec. 18, 2024) (addressing U.S. Pat. No. 8,377,903). The parties argue all claims of both patents together, and, unless otherwise stated, we reference the Board’s FWD in IPR2023-00049 exclusively in this opinion.
Because Bodor is prior art based on our analysis in Hopewell, and because we see no legal or factual errors in the Board’s analysis in this case, we affirm.