Board IPR decision finding Sanofi’s claims obvious affirmed due to motivation to combine references and proper claim construction

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No. 2020-2071 (IPRs 2018-01684) (https://cafc.uscourts.gov/opinions-orders/20-2071.OPINION.12-29-2021_1886454.pdf) (Non-Precedential)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

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.