Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Merck Serono S.A. v. Hopewell Pharma Ventures, Inc.
Nos. 2025-1210, -1211 (Fed. Cir. (P.T.A.B.) Oct. 30, 2025). Opinion by Linn, joined by Hughes and Cunningham.
Merck owns two patents directed to methods of treating multiple sclerosis by orally administering cladribine according to a specific dosing regimen. Hopewell filed two IPRs challenging certain claims as obvious over the “Bodor” and “Stelmasiak” references.
The Patent Trial and Appeal Board held all challenged claims unpatentable as obvious. In its final written decision, the Board determined that Bodor qualified as prior art because it was filed and published before the patents’ priority date and there was “no facial overlap in the named inventors or assignees of Bodor and the [Merck] patents.” The patent owner failed to provide corroborating evidence that one of the inventors had made an inventive contribution to the relevant disclosure in Bodor. The Board also found that, even if Merck had shown such a contribution, Bodor’s inventors made significant contributions, so the reference would still qualify as “by another” under pre-AIA 35 U.S.C. §§ 102(a), (e). Merck appealed.
The Federal Circuit affirmed. To begin, the court considered “whether and to what extent a disclosure invented by fewer than all the named inventors of a patent may be deemed a disclosure ‘by another’ and thus included in the prior art, or whether the disclosure should properly be treated as ‘one’s own work’ and therefore excluded from the prior art.” After analyzing several cases, the Federal Circuit held:
[F]or a reference not to be “by another,” and thus unavailable as prior art under pre-AIA § 102(e), the disclosure in the reference must reflect the work of the inventor of the patent in question. That is clear enough when a single inventor is involved. What should also be clear is that when the patented invention is the result of the work of joint inventors, the portions of the reference disclosure relied upon must reflect the collective work of the same inventive entity identified in the patent to be excluded as prior art. That showing may be made by fewer than all the inventors but nonetheless must evince the joint work of them all to avoid being considered a work “by another” under the statute. Any incongruity in the inventive entity between the inventors of a prior reference and the inventors of a patent claim renders the prior disclosure “by another,” regardless of whether inventors are subtracted from or added to the patent.
Applying this “rule requiring complete identity of inventive entity,” the court ruled that the Board properly treated Bodor as prior art.
Next, the Federal Circuit affirmed the Board’s finding that the challenged claims were obvious over Bodor and Stelmasiak. Substantial evidence, including expert testimony and the references themselves, supported the Board’s finding. The court also rejected Merck’s arguments regarding claim construction.
Aortic Innovations LLC v. Edwards Lifesciences Corp., et al.
No. 2024-1145 (Fed. Cir. (D. Del.) Oct. 27, 2025). Opinion by Reyna, joined by Prost and Chen.
Aortic sued Edwards for infringement of four patents related to transcatheter aortic valve replacement devices. The district court entered a stipulated judgment of noninfringement based on its construction of the claim term “outer frame.” The court ruled that because the terms “outer frame,” “self-expanding frame,” and “self-expanding outer frame” were used interchangeably to refer to the same structure in two embodiments in the patents, Aortic had acted as its own lexicographer. Thus, the court defined “outer frame” to mean “a self-expanding frame.” Aortic appealed.
At the outset, the Federal Circuit dismissed the appeal as to one of the patents for lack of subject matter jurisdiction. The Patent Office had recently cancelled the asserted claims of that patent, leaving “no actual case or controversy between the parties.”
On the merits, the Federal Circuit affirmed the stipulated judgment of noninfringement because the court agreed with the district court’s construction that the “outer frame” is a “self-expanding frame.” The Federal Circuit explained that “a patent’s consistent and clear interchangeable use of two terms can result in a definition equating the two terms.” Here, the specification “consistently” used the terms interchangeably, and it “never limits the presence of a self-expanding frame to only some embodiments.” The specification “clearly and consistently conveys that the self-expanding nature of [certain structures] is present in all embodiments of those devices.”
Aortic raised an alternative argument that Edwards should be judicially estopped from advocating a different construction, but the Federal Circuit ruled that Aortic forfeited the argument “by not raising it before the district court.”
Corning Optical Communications RF, LLC v. PPC Broadband, Inc.
Nos. IPR2014-00440, -00441, -00736 (Aug. 18, 2015) (designated precedential except as to § II.E.1 on Oct. 28, 2025). Opinion by Bonilla, joined by Lee and Cocks.
In these consolidated IPR proceedings, Petitioner Corning challenged claims of certain patents owned by PPC Broadband. After institution, Patent Owner moved to dismiss the petitions for failure to name all real parties-in-interest, specifically alleging that Petitioner’s parent and sister companies should have been identified as real parties-in-interest.
The Board granted Patent Owner’s motions to dismiss, vacated the institution decisions, and terminated the reviews because the petitions “fail to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2).”
The Board explained that whether a party is a real party-in-interest “is a highly fact-dependent question” and “there is no bright-line test.” According to the Board, “a common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” “Other considerations include whether a non-party funds and directs and controls an IPR petition or proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition.”
Applying these and related considerations, the Board found that Petitioner’s actions “have blurred sufficiently the lines of corporate structure” with its sister company such that it “could have controlled the filing and participation of the IPRs.” Also, the evidence sufficiently established that the parent company “funded these IPR proceedings, and also exercised or could have exercised control over Petitioner’s participation in these proceedings.” Thus, both were real parties-in-interest.
Lastly, the Board rejected the Petitioner’s argument that it should be permitted to amend its petition and retain its filing date. The Board disagreed because under § 312(a)(2), an IPR petition may be considered “only if” it identifies “all” real parties-in-interest. The petitions failed to do so, and thus the Board ruled that it “cannot consider the Petitions, and should not have considered them at the time of institution.” The Board determined that the appropriate remedy was to grant the motions to dismiss, vacate the institution decisions, and terminate the proceedings.