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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
`
`HOPEWELL PHARMA VENTURES, INC.,
`Petitioner,
`
`v.
`
`MERCK SERONO S.A.,
`Patent Owner.
`_________________________________________________
`Case IPR2023-00480
`Patent 7,713,947
`____________________________________________________
`
`PATENT OWNER’S SUPPLEMENTAL BRIEF
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`IPR2023-00480
`U.S. Patent No. 7,713,947
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`TABLE OF AUTHORITIES
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`CASES
`Allergan, Inc. v. Apotex Inc., 754 F.3d 952 (Fed. Cir. 2014) ................................ 1, 2
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`Page(s)
`
`Applied Materials Inc. v. Gemini Rsch. Corp,
`835 F.2d 279 (Fed. Cir. 1988) ..................................................................... 1, 2
`In re Land, 368 F.2d 866, 881 (C.C.P.A. 1966) .................................................... 1-2
`
`Riverwood Int’l Corp. v. R.A. Jones & Co.,
`324 F.3d 1346 (Fed. Cir. 2003) ....................................................................... 2
`OTHER AUTHORITIES
`Manual of Patent Examining Procedure (MPEP) (9th ed. 2022) .............................. 1
`
`
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`ii
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`IPR2023-00480
`U.S. Patent No. 7,713,947
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`The USPTO’s published guidance is that the work of a subset of named
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`inventors is not prior art. MPEP § 2132.01 states, “at least one joint inventor’s
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`disclosure of his or her own work within the year before the application filing date
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`cannot be used against the application as prior art.” (emphasis added). See also
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`MPEP §§ 2136.05(b), 715.01(c), 716.10. The Board should not revisit that
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`guidance here because, even under Petitioner’s view, undisputed evidence shows
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`Dr. De Luca contributed to the regimen the Serono inventors disclosed to Dr.
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`Dandiker, including Dr. Munafo’s testimony (Ex. 2053, ¶¶18, 21) and inventorship
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`of the Challenged Patents. Petitioner offers no reason the 2003 disclosure from the
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`same Serono project would have inventorship different from the challenged claims.
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`The Federal Circuit agrees. Applied Materials Inc. v. Gemini Rsch. Corp.
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`held an application by McNeilly and Benzing was not prior art to a patent by
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`McNeilly, Benzing, and Locke, “[e]ven though [they] have been conceived by
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`different inventive entities.” 835 F.2d 279, 281 (Fed. Cir. 1988). Allergan, Inc. v.
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`Apotex Inc. explained “[t]he relevant inquiry” for whether a paper by Brandt and
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`VanDenburgh was prior art to a patent by VanDenburgh and Woodward “must be
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`whether the Brandt references …were solely Dr. VanDenburgh’s work and hers
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`alone.” 754 F.3d 952, 969 (Fed. Cir. 2014).
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`In re Land, cited by Petitioner, is distinguishable because there was “no
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`indication that the portions of the references relied on disclose anything they did
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`IPR2023-00480
`U.S. Patent No. 7,713,947
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`jointly.” 368 F.2d 866, 881 (C.C.P.A. 1966). And Riverwood Int’l Corp. v. R.A.
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`Jones & Co. merely recognized that, if patent owner won a petition to correct
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`inventorship, there would be no difference in inventive entities. 324 F.3d 1346,
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`1356-57 (Fed. Cir. 2003). Federal Circuit cases after In re Land clarified that, at
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`least where there is some relationship between the challenged invention and the
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`asserted art, the work of a subset of the named inventors is not prior art. Applied
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`Materials, 835 F.2d at 280 (McNeilly & Benzing invented apparatus while
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`working with Locke on method); Allergan, 754 F.3d at 966 (VanDenburgh co-
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`authored paper while designing clinical trials that led to VanDenburgh &
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`Woodward patent). Here, there is no question the Serono inventors’ regimen
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`disclosed in 2003 relates to the challenged patents: both resulted from Serono’s
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`cladribine for MS project that included Dr. De Luca. E.g., Ex. 2053, ¶¶18-22.
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`Case law does not require showing each named inventor made an inventive
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`contribution to the asserted art to disqualify it. Even if it did, Patent Owner’s
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`evidence is sufficient, particularly given the rule of reason standard for
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`corroboration and Petitioner’s burden to establish prior art. Sur-Reply 4-7.
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`The Board should not question USPTO policy and Federal Circuit law in
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`this case, where Petitioner offered no evidence of a difference in inventive entities.
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`Respectfully submitted,
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`/Emily R. Whelan/
`Emily R. Whelan (Reg. No. 50,391)
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`2
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`IPR2023-00480
`U.S. Patent No. 7,713,947
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 10, 2024, I caused a true and correct copy of the
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`following materials:
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` Patent Owner’s Supplemental Brief
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`to be served via e-mail, as consented to by Petitioner, on the following attorneys of
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`record:
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`eellison-PTAB@sternekessler.com
`opartington-PTAB@sternekessler.com
`cvira-PTAB@sternekessler.com
`jcrozendaal-PTAB@sternekessler.com
`cdashe-PTAB@sternekessler.com
`pkhanduri-PTAB@sternekessler.com
`tliu-PTAB@sternekessler.com
`mbond-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`
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`By: /Asher S. McGuffin/
`Asher S. McGuffin (Reg. No. 81,206)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Tel: 617-526-6201
`Email: asher.mcguffin@wilmerhale.com
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