Analogous Art Must Be Compared to the Challenged Patent

Written by: Rhett D. Ramsey & Michael L. Fuller

In Sanofi-Aventis Deutschland GmbH v. Mylan Pharm. Inc., Case No. 2021-1981, the Federal Circuit reversed an obviousness determination by the PTAB. At issue was Sanofi’s reissued U.S. Patent No. RE47,614 (the ’614 patent), directed to a drug delivery device. The PTAB had found Sanofi’s drug delivery patent to be obvious in view of three prior art references: Burren, Venezia, and de Gennes.

In its IPR petition, Mylan argued that, although de Gennes relates to cars and not drug delivery devices or medical devices, de Gennes is analogous art because it addresses a problem analogous to the problem addressed in Burren. The Federal Circuit explained that Mylan’s comparison was improper and did not show that de Gennes is analogous art to Sanofi’s patent. “In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent” (emphasis added). Because Mylan only compared de Gennes to another prior art reference, and not to the challenged patent, Mylan did not carry its burden to establish obviousness premised on de Gennes, and the Federal Circuit reversed the obviousness determination.

Editor: Brenden S. Gingrich, Ph.D.