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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
`U.S. Patent No. 7,713,947
`___________________
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`PETITIONER HOPEWELL PHARMA VENTURES, INC.’S
`POST-HEARING BRIEF
`
`
`
`
` Case IPR2023-00480
`U.S. Patent No. 7,713,947
`A reference is “by another” if not all inventors are the same between “the
`
`
`
`portions of the reference relied on as prior art, and the subject matter of the claims
`
`in question.” Riverwood v. Jones, 324 F.3d 1346, 1356 (Fed. Cir. 2003).
`
`“Land and Rogers individually [were] separate legal entities from Land and
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`Rogers as joint inventors.” In re Land, 368 F.2d 866, 881 (C.C.P.A. 1966).
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`Because the individual Land and Rogers patents were to different inventive entities
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`than Rogers and Land jointly, both individual patents were §102(e) art “by
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`another.” Id.; see also M.P.E.P. 2136.04; Duncan Parking v. IPS, 914 F.3d 1347,
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`1357 (Fed. Cir. 2019) (citing In re Land); and Ex Parte Abe, No. 2010-000029, at
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`3-5 (B.P.A.I. June 29, 2012). Similarly, in In re Fong, 378 F.2d 977 (C.C.P.A.
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`1967), a patent to Miller, Whitfield, and Wasley was §102(e) art to an application
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`to Miller, Whitfield, Wasley, Fong, and Brown. In Google v. IPA Techs., a
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`reference from Martin, Cheyer, and Moran was §102(a) art to patents to Martin and
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`Cheyer. 34 F.4th 1081, 1084 (Fed. Cir. 2022). There, “[i]f Dr. Moran was not a co-
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`inventor of the [] reference, [it] was not prior art because it was made by the same
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`inventive entity as the ’115 and ’560 patents and not ‘by others.’” Id. In Horizon v.
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`Alchem, a patent to Golombik and Tidmarsh was §102(a) art to the challenged
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`patent listing only Tidmarsh. 2021 WL 5315424 at *3-4 (Fed. Cir. 2021).
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`Similarly, a patent naming solely Plachetka was §102(e) art to a patent to
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`Plachetka and three others. Dr. Reddy’s v. Horizon, IPR2018-00272, Paper 74, at
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`- 1 -
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` Case IPR2023-00480
`U.S. Patent No. 7,713,947
`17 (P.T.A.B. Sept. 9, 2019). Merck cites In re DeBaun, 687 F.2d 459 (C.C.P.A.
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`
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`1982), and In re Mathews, 408 F.2d 1393 (C.C.P.A. 1969), but both cases involved
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`identical inventive entities to disqualify prior art (viz., DeBaun alone or Mathews
`
`alone). See also LSI v. Regents, 43 F.4th 1349, 1356-57 (Fed. Cir. 2022). So did In
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`re Katz, 687 F.2d 450, 455 (C.C.P.A. 1982): Dr. Katz alone invented the relied-
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`upon disclosures and was the sole patent applicant. Likewise, Applied Materials v.
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`Gemini is consistent in holding that identity of inventorship between the relied-
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`upon portion of a reference and the challenged patent is required to disqualify a
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`reference as prior art. 835 F.2d 279, 281 (Fed. Cir. 1987).
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`Merck fails to identify any authority holding that art is disqualified if it
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`describes an invention of a subset of the inventors. Allergan v. Apotex is of no
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`avail. There, the Federal Circuit held that Allergan failed to prove the cited art
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`“represent[s] the work of the inventors themselves;” the Court did not hold that the
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`work of a subset of inventors was disqualified as prior art. 754 F.3d 952, 968-969
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`(Fed. Cir. 2014). Merck’s position is also inconsistent with MaxLinear, where a
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`reference from a subset of inventors of the challenged claim was §102(e) art.
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`MaxLinear v. Cresta, IPR2015-00594, Paper 90, at 16-24 (P.T.A.B. Aug. 15,
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`2016). Merck failed to carry its burden to prove De Luca made an inventive
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`contribution to Bodor; Bodor is therefore prior art under §102(a)/(e). See In re
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`Carreira, 532 F.2d 1356, 1359 (C.C.P.A. 1976).
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`- 2 -
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`
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` Case IPR2023-00480
`U.S. Patent No. 7,713,947
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Eldora L. Ellison/
`
`Eldora L. Ellison, Ph.D., Esq.
`Registration No. 39,967
`Lead Attorney for Petitioner
`
`Date: July 10, 2024
`
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`- 3 -
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`
`
`Case IPR2023-00480
`U.S. Patent No. 7,713,947
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`I certify that the above-captioned PETITIONER HOPEWELL PHARMA
`
`VENTURES, INC.’S POST-HEARING BRIEF was served in its entirety on
`
`July 10, 2024, upon the following parties via electronic mail:
`
`
`
`Emily R. Whelan (Lead Counsel) Emily.Whelan@wilmerhale.com
`Deric Geng (Back-up Counsel) Deric.Geng@wilmerhale.com
`Cindy Kan (Back-up Counsel) Cindy.Kan@wilmerhale.com
`David B. Bassett (Back-up Counsel) David.Bassett@wilmerhale.com
`Vinita Ferrera (Back-up Counsel) Vinita.Ferrera@wilmerhale.com
`Mary.Pheng (Back-up Counsel) Mary.Pheng@wilmerhale.com
`Asher McGuffin (Back-up Counsel) Asher.McGuffin@wilmerhale.com
`Scott Bertulli (Back-up Counsel) Scott.Bertulli@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`WHMerckMavencladIPRs@wilmerhale.com
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Eldora L. Ellison/
`
`Eldora L. Ellison, Ph.D., Esq.
`Registration No. 39,967
`Lead Attorney for Petitioner
`
`Date: July 10, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`22648984.7
`
`
`
`
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