Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1981 (Fed. Cir. May 9, 2023)
In our Case of the Week, the Court of Appeals for the Federal Circuit considered the “analogous art” inquiry in an obviousness analysis, holding that when arguing that prior art is analogous art to a challenged patent, the petitioner must show why the prior art is pertinent to the problem addressed by the challenged patent, and not to a problem addressed by other prior art.
Sanofi owns Patent No. RE47,614 for a drug delivery device meant to improve “operability with respect to dosage control and/or improved reproducibility of the dosage in connection with different cartridges.” Mylan petitioned the Patent Trial and Appeal Board (“PTAB”) to institute an IPR proceeding against the ’614 patent, on the grounds the patent was obvious over a combination of prior art, including a Burren patent and a de Gennes patent. The PTAB instituted the IPR and found that the ’614 patent was obvious over the prior art, in part because the de Gennes patent was analogous art to the ’614 patent.
The two-part test to analyze whether prior art is analogous art asks: (1) Is the art in the same field of endeavor, regardless of the problem addressed? (2) If the art is not in the same field of endeavor, is it still reasonably pertinent to the particular problem addressed with which the inventor is involved? The prior art was not in the same field of endeavor, so the only question was whether de Gennes was “reasonably pertinent” to a “problem addressed” by the inventor of the ’614 patent. However, the PTAB adopted Mylan’s definition of the “problem addressed” to be the problem addressed by Burren, stating that the problem addressed in Burren is also relevant to the ’614 patent. Finding that de Gennes sought to solve a similar problem as Burren, the PTAB found de Gennes to be analogous art to the ’614 patent.
On appeal, Sanofi argued that the PTAB erred by finding de Gennes to be analogous art, where the PTAB defined the “problem addressed” as the problem addressed by Burren and Mylan had only presented arguments for why Burren was analogous art to the ’614 patent. Mylan argued that the relevant “problem addressed” could be the problem addressed by other prior art, and not necessarily the problem addressed by the challenged patent. The Federal Circuit disagreed, holding that the analysis must consider the problem addressed by the challenged patent. Next, in reviewing Mylan’s filings in the IPR, the Federal Circuit found that Mylan only argued how de Gennes was analogous art to Burren but nowhere argued how de Gennes was analogous art to the ’614 patent. Because Mylan only argued how de Gennes was analogous to Burren, but not to the ’614 patent, the Federal Circuit found that Mylan did not meet its burden for showing that the ’614 patent was obvious.
The opinion can be found here.
By Tyler Hall
ALSO THIS WEEK
Bot M8 LLC v. Sony Interactive Entertainment LLC, Appeal No. 2022-1291 (Fed. Cir. May 9, 2023)
In an appeal from the U.S. Patent Trial and Appeal Board (“PTAB” or the “Board”), the Federal Circuit addressed whether the Board correctly determined that Bot M8’s subject patent concerning a gaming machine that authenticates certain data and that has both a motherboard and a different board was unpatentable. The Federal Circuit affirmed the PTAB’s determination. First, the Federal Circuit held that to the extent there was any error in the Board’s construction of the subject patent, it was harmless because the Board did not rely on that construction to reach its conclusion of unpatentability. Second, the Federal Circuit held that PTAB’s obviousness determination was not in error, finding that a person of ordinary skill in the art would have understood a benefit of combining the teachings from prior art to arrive at the process described in the subject patent.
The opinion can be found here.
By Mario E. Delegato
United Cannabis Corporation v. Pure Hemp Collective Inc., Appeal No. 2022-1363 (Fed. Cir. May 8, 2023)
In an appeal from a district court decision denying a motion for attorneys’ fees, the Federal Circuit affirmed. Pure Hemp had sought fees based on alleged inequitable conduct. The request for fees was based on three different theories: 35 U.S.C. § 285, 28 U.S.C. § 1927, and the Court’s inherent authority. The district court found that the record on the substantive merits of inequitable conduct was “woefully undeveloped, and as such, does not paint a persuasive picture for awarding fees.” That was likely because the inequitable conduct allegations were voluntarily dismissed, along with the rest of the case, pursuant to an agreement between the parties. The Federal Circuit affirmed that the record was undeveloped, and that even the facts in the record raised numerous disputes of material facts in relation to the inequitable conduct claim. Pure Hemp argued that inequitable conduct was established to the extent that portions of a patent were copied into the application for the patent in suit, but the other patent was not identified to the Patent Office. The Federal Circuit declined to engage in fact finding concerning the materiality of that prior art. Pure Hemp also argued that United Cannabis’s attorneys had a conflict of interest, but the Federal Circuit found that argument to have been waived for failure to raise it before the district court.
United Cannabis also moved for sanctions based on an argument that Pure Hemp’s appeal was frivolous. The Federal Circuit held that Pure Hemp’s position was “extremely weak,” and although “a close call,” it did not rise to the level of “frivolous.” The Court gave the following final cautionary note:
We take this opportunity to remind counsel of their obligation not to lightly launch attacks on one another’s integrity and most certainly not to do so without a sound basis and solid evidence. Although we are not pleased with how Pure Hemp has argued this appeal, we cannot say this appeal, as a whole, was “frivolous as argued.”
The opinion can be found here.
By Nika Aldrich
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.