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Feature1 min readPost-grant review

Four post-grant reviews: § 112(a) won, obviousness lost.

In October 2026, the Patent Trial and Appeal Board issued four final written decisions in post-grant reviews that Merck brought against Halozyme patents. In each, all challenged claims were unpatentable for lack of written description and enablement under § 112(a). Obviousness over the ’429 patent and Chao wasn’t shown in any of the four.

4 of 4post-grant reviews held every challenged claim unpatentable under § 112(a). Obviousness wasn’t shown in any of them.

Part 1 of 3

Four decisions, one result

Patent 12,264,345, claims 1–17: final written decision, October 1, 2026 (Paper 89).

§ 112(a): written description and enablement4 of 4

All challenged claims held unpatentable in each decision.

Obviousness over the ’429 patent and Chao0 of 4

Not shown in any of the four decisions.

Patent 12,091,692, claims 1, 2, 5, and 7–33: final written decision, October 2, 2026 (Paper 96).

Patent 12,060,590, claims 1, 2, 6–15, and 17–30: final written decision, October 15, 2026 (Paper 100).

Patent 12,054,758, claims 1, 2, and 6–30: final written decision, October 15, 2026 (Paper 100).

Part 2 of 3

What the Board held

In each decision, the Board held all challenged claims unpatentable for lack of written description and enablement under § 112(a).

Obviousness over the ’429 patent and Chao wasn’t shown in any of the four. In the October 1, 2026 decision, indefiniteness also wasn’t shown.

Of the Board’s two trial types for patent challenges, only post-grant review can raise § 112. An inter partes review (IPR) is limited to §§ 102 and 103, based on patents and printed publications.

The four patents claim continuity to the same 2012 application and are drawn to modified PH20 hyaluronidase polypeptides.

Part 3 of 3

Read the limits

These are panel decisions. None is designated precedential or informative. As of October 29, 2026, no party had requested Director Review, and the time to request it hadn’t run.

The takeaway

For a newly issued patent, weigh § 112 grounds early. A post-grant review petition must be filed within nine months after the patent issues.

Sources

  1. S103Merck Sharp & Dohme LLC v. Halozyme, Inc., No. PGR2025-00052, Paper 89 (P.T.A.B. October 1, 2026) (final written decision) (Patent 12,264,345, claims 1–17). Data source ↗
  2. S104Merck Sharp & Dohme LLC v. Halozyme, Inc., No. PGR2025-00046, Paper 96 (P.T.A.B. October 2, 2026) (final written decision) (Patent 12,091,692, claims 1, 2, 5, 7–33). Data source ↗
  3. S105Merck Sharp & Dohme LLC v. Halozyme, Inc., No. PGR2025-00024, Paper 100 (P.T.A.B. October 15, 2026) (final written decision) (Patent 12,060,590, claims 1, 2, 6–15, 17–30). Data source ↗
  4. S106Merck Sharp & Dohme LLC v. Halozyme, Inc., No. PGR2025-00030, Paper 100 (P.T.A.B. October 15, 2026) (final written decision) (Patent 12,054,758, claims 1, 2, 6–30). Data source ↗
  5. S13Federal patent statutes, 35 U.S.C. §§ 253(a), 301, 302, 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). Official page ↗

Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.

General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.
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