Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (USPTO as Intervenor)

Docket No. 2020-2071 (IPRs 2018-01684) (https://cafc.uscourts.gov/opinions-orders/20-2071.OPINION.12-29-2021_1886454.pdf) (Non-Precedential)

DYK, CLEVENGER, TARANTO

December 29, 2021

Brief Summary:  Board IPR decision finding Sanofi’s patents obvious affirmed as substantial evidence supported the motivation to combine and claim constructions analyses.

Summary:  Sanofi appealed Board IPR decision finding US 9,604,008 unpatentable as obvious.  Sanofi argued the Board erred in finding there was a motivation to combined the two prior art references relied upon (Moller and Steenfeld-Jensen).  “The Board found that Steenfeldt-Jensen provided benefits supporting the combination of Møller’s dose-setting approach with Steenfeldt-Jensen’s dose-dispensing approach, that Mylan’s expert testimony supported the benefits of the combination, and that Møller contemplated the combination” but Sanofi argued “Møller disparages the SteenfeldtJensen dose-setting approach by specific reference to Steenfeldt-Jensen” (“a traditional gearing using mutual engaging gear wheels and racks is preferred”).  The FC panel found the Board did not err as “substantial evidence supports the Board’s finding that one skilled in the art would not be deterred by the possibility of some additional friction to make the combination since use of the Steenfeldt-Jensen approach, rather than the Møller approach, would reduce the number of parts while limiting overall force required.”

Sanofi also argued “that the Board erred by finding the same prior art element was both the claimed ‘housing’ and the ‘insert provided in the housing’” since “an element may be a housing, or it may be an insert, but it cannot concurrently be both a housing and an insert ‘in’ that housing.”  The FC panel found no error in the Board’s construction because “[t]he claim language does not preclude an insert being part of the housing” and the specification explains that “’housing’ . . . shall preferably mean any exterior housing . . . or interior housing”, “the housing may be unitary or a multipart component,” and “the insert may be formed integrally with the main housing”. 

Thus, the Board decision was affirmed.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.