“by another” Archives

Complete inventive entity required to avoid “by another” prior art under pre-AIA § 102(e)

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decision finding claims directed to cladribine regimens for treating multiple sclerosis unpatentable as obvious. The Court clarified that a disclosure can only be excluded as prior art under pre-AIA § 102(e) if it reflects the collective work of the same inventive entity as the challenged patent. Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Case No. 25-1210 (Fed. Cir. Oct. 30, 2025) (Hughes, Linn, Cunningham, JJ.)

Merck holds patents covering methods for treating multiple sclerosis using specific oral cladribine dosing regimens. Hopewell Pharma filed inter partes review (IPR) petitions challenging these patents, asserting that the claims were obvious in light of two prior art references disclosing similar cladribine dosing schedules.

Merck argued that one reference, Bodor, was not prior art because one of the named inventors on the challenged patents, De Luca, allegedly contributed to the six-line dosing disclosure in Bodor. The Board rejected this argument, finding that Merck failed to provide corroborated evidence of De Luca’s inventive contribution and concluding that the Bodor disclosure was “by another.” The Board ultimately found all claims unpatentable as obvious over the two prior art references. Merck appealed.

On appeal, Merck contended that the Board erred by applying a “bright-line rule” requiring complete identity of inventive entities to exclude a reference as not “by another.” The Federal Circuit disagreed, reaffirming the long-standing principle from In re Land (CCPA 1966): Any difference in inventive entity, whether by adding or omitting inventors, renders the prior disclosure “by another” under pre-AIA § 102(e).

The Federal Circuit explained that when a patent results from collaboration among joint inventors, a reference can be excluded only if the relied-upon portions of the reference represent the collective efforts of the same inventive team named as inventors in the patent. While evidence from fewer than all inventors may suffice, it must demonstrate that the disclosure embodies their joint contribution. Thus, even partial overlap of inventors does not prevent the earlier disclosure from being prior art.

Merck also argued that the Board’s interpretation conflicted with language in the Manual of Patent Examining Procedure (MPEP), which suggests that the work of “at least one joint inventor” could avoid prior art treatment. The Federal Circuit rejected this claim, noting that the MPEP cites Land and defines “by another” as “a different inventive entity.” Because this rule has been long established, the Court concluded that Merck had sufficient notice and was not deprived of a fair opportunity to respond.

Finally, Merck asserted that the Board failed to apply the “rule of reason” when assessing whether De Luca contributed to Bodor. The Federal Circuit disagreed, finding that the Board properly considered all evidence, including declarations, meeting minutes, and testimony, and reasonably concluded that De Luca’s alleged role was not corroborated or significant enough to make him a co-inventor.

Practice note: This decision reinforces that under the pre-AIA statute, the phrase “by another” requires complete identity of the inventive entity to [...]

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Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)

The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by another” under pre-America Invents Act § 102(e). LSI Corp. v. Regents of Univ. of Minnesota, Case No. 21-2057 (Fed. Cir. Aug. 11, 2022) (Dyk, Reyna, Hughes, JJ.)

The Regents of the University of Minnesota (UMN) sued LSI Corporation and Avago Technologies (collectively, LSI) for infringement of a patent related to methods for reducing errors in binary data sequences. LSI petitioned for IPR, challenging several claims of the asserted patent and arguing that they were anticipated by two prior art references, Okada and Tsang. Tsang made reference to a “Seagate Annual Report” that was published by the inventors of the asserted patent, and which was later embodied in the patent’s application.

The Patent Trial & Appeal Board (Board) found that one of the challenged claims was anticipated by Okada. The Board also found that LSI had not shown that the other challenged claims were rendered unpatentable by either Okada or Tsang and further rejected an invalidity (anticipation) theory first raised by LSI during oral arguments as untimely (while noting that the argument failed even if timely raised). The Board determined that the Tsang reference was not “by another” under § 102(e) because LSI’s petition relied solely on material that was originally disclosed in the inventor’s Seagate Annual Report. LSI appealed the Board’s determinations relating to invalidity based on Okada or Tsang.

The Federal Circuit noted that LSI did not challenge the Board’s untimeliness determination and rejected LSI’s argument that it did not need to because the Board nevertheless reached a merits decision on the argument. The Court cited to its 2016 decision in Intelligent Bio-Systems v. Illumina Cambridge, which held that “the Board’s rejection of arguments on the ground that they were newly raised in a reply brief was not an abuse of discretion even though the Board went on to address the merits.”

Turning to the § 102(e) issue, the Federal Circuit first explained that an invention is anticipated under § 102(e) if the invention is described in a patent application filed “by another,” but a patent owner may overcome such anticipation by establishing that the relevant prior art disclosure describes the owner’s invention. Describing the history of the Tsang reference and the patent under review, the Court explained that the inventors originally submitted a Seagate Annual Report to Seagate, a UMN collaborator. Tsang, a Seagate employee, received the report and quickly filed a patent application for an improvement on the methods described in the report. This application listed only Tsang as inventor and made direct reference to the Seagate Annual Report.

The Federal Circuit then addressed whether LSI’s IPR petition relied on Tsang’s improvement to the inventors’ report or simply on Tsang’s summary of the inventors’ report. The Court explained that while LSI’s petition relied on both Tsang’s summary of the [...]

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