Case: 20-1871 Document: 119 Page: 1 Filed: 12/29/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SANOFI-AVENTIS DEUTSCHLAND GMBH,
Appellant
v.
MYLAN PHARMACEUTICALS INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1871
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01670.
-------------------------------------------------
SANOFI-AVENTIS DEUTSCHLAND GMBH,
Appellant
v.
Case: 20-1871 Document: 119 Page: 2 Filed: 12/29/2021
2 SANOFI-AVENTIS DEUTSCHLAND v.
MYLAN PHARMACEUTICALS INC.
MYLAN PHARMACEUTICALS INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-2029, 2020-2032, 2020-2033, 2020-2034
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01675, IPR2018-01676, IPR2018-01678, IPR2019-00122.
-------------------------------------------------
SANOFI-AVENTIS DEUTSCHLAND GMBH,
Appellant
v.
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-2159
______________________
Case: 20-1871 Document: 119 Page: 3 Filed: 12/29/2021
SANOFI-AVENTIS DEUTSCHLAND v. 3
MYLAN PHARMACEUTICALS INC.
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00979.
______________________
Decided: December 29, 2021
______________________
WILLIAM SUTTON ANSLEY, Weil, Gotshal & Manges
LLP, Washington, DC, argued for appellant. Also repre-
sented by ADAM BANKS, ANISH R. DESAI, SARAH M.
STERNLIEB, ELIZABETH WEISWASSER, New York, NY;
LAUREN ANN DEGNAN, Fish & Richardson P.C., Washing-
ton, DC; SCOTT MICHAEL FLANZ, JOHN STEPHEN GOETZ,
New York, NY.
DOUGLAS H. CARSTEN, McDermott Will & Emery, Ir-
vine, CA, argued for appellee. Also represented by ADAM
WILLIAM BURROWBRIDGE, Washington, DC; WESLEY
EUGENE DERRYBERRY, STEFFEN NATHANAEL JOHNSON,
TASHA THOMAS, RICHARD TORCZON, Wilson, Sonsini,
Goodrich & Rosati, PC, Washington, DC; ELHAM FIROUZI
STEINER, San Diego, CA.
KAKOLI CAPRIHAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for interve-
nor. Also represented by DANIEL KAZHDAN, THOMAS W.
KRAUSE, BRIAN RACILLA, FARHEENA YASMEEN RASHEED.
______________________
Before DYK, CLEVENGER, and TARANTO, Circuit Judges.
PER CURIAM.
These consolidated appeals are from the final written
decisions in six inter partes reviews by the Patent Trial and
Appeal Board—IPR2018-01670, IPR2018-01675, IPR2018-
01676, IPR2018-01678, IPR2019-00122, and IPR2019-
00979. The reviews involved claims of three patents owned
Case: 20-1871 Document: 119 Page: 4 Filed: 12/29/2021
4 SANOFI-AVENTIS DEUTSCHLAND v.
MYLAN PHARMACEUTICALS INC.
by Sanofi-Aventis Deutschland GmbH—claims 1–3 of
U.S.
Patent No. 8,679,069, claims 11, 14, 15, 18, and 19 of
U.S.
Patent No. 8,603,044, and claims 1–6, 12–18, 20, 23, 26–
30, 32, 33, 36, and 38–40 of
U.S. Patent No. 8,992,486. The
Board held all challenged claims unpatentable for obvious-
ness. Sanofi appeals. We affirm.
The three patents, which share a specification, address
a pen-type injection device that allows a user to set and ad-
minister a dose of medication. See, e.g., ’069 patent, col. 1,
lines 13–17. The challenged independent claims of the
three patents (claim 1 of the ’069 patent, claim 1 of the ’486
patent, and claim 11 of the ’044 patent) are relevantly sim-
ilar, detailing components of a “housing part for a medica-
tion dispensing apparatus.” ’069 patent, col. 6, lines 36–60
(claim 1). The Board determined that all challenged claims
are unpatentable on two independent grounds—obvious-
ness over Burroughs and obviousness over Steenfeldt-Jen-
sen. We limit our discussion to the latter ground,
addressed in IPR2018-01670, IPR2018-01676, IPR2018-
01678, and IPR2019-00979.
Steenfeldt-Jensen (
U.S. Patent No. 6,235,004) de-
scribes an injection syringe used to dispense medicine and
depicts five embodiments. Steenfeldt-Jensen, col. 1, lines
11–15;
id., figs. 1–17. The Board determined that a rele-
vant artisan would have modified Steenfeldt-Jensen’s fifth
embodiment with a teaching from its first embodiment to
meet the threaded-sleeve limitation of the asserted inde-
pendent claims, such as claim 1 of the ’069 patent. Mylan
Pharms. Inc. v. Sanofi-Aventis Deutschland GmbH,
IPR2018-01670, at 61–68 (P.T.A.B. Apr. 2, 2020) (1670 Fi-
nal Written Decision). 1 The Board also determined that a
relevant artisan would have modified Steenfeldt-Jensen’s
1 The Board’s 1670 Final Written Decision is repre-
sentative of the Board’s discussion of the same limitation
in the other IPRs discussing Steenfeldt-Jensen.
Case: 20-1871 Document: 119 Page: 5 Filed: 12/29/2021
SANOFI-AVENTIS DEUTSCHLAND v. 5
MYLAN PHARMACEUTICALS INC.
fifth embodiment with a component from its third embodi-
ment to meet the radial-stop limitation of claims 30 and 32
of the ’486 patent. Mylan Pharms. Inc. v. Sanofi-Aventis
Deutschland GmbH, IPR2018-01678, at 67–69 (P.T.A.B.
May 29, 2020) (1678 Final Written Decision). Sanofi chal-
lenges the Board’s findings.
The Board had substantial evidence to support its de-
termination that, based on the express teaching of a nut
member on the first embodiment of Steenfeldt-Jensen (at
col. 7, lines 41–47), a relevant artisan would have modified
the fifth embodiment with an internally threaded driver
tube to engage the piston rod. In light of the expert testi-
mony, the Board reasonably found that the first and fifth
embodiments have substantially similar components and
arrangements of components, that the driver tubes and pis-
ton rods of the two embodiments perform the same func-
tions, that the modified parts would be expected to operate
in substantially the same manner, that the nut member of
the first embodiment teaches an internally threaded driver
tube, and that a relevant artisan would have understood
Steenfeldt-Jensen as actually suggesting consideration of
using the internally threaded driver tube taught by the
first embodiment in other, similar-structure embodiments,
such as the fifth. And the Board reasonably found that any
increase in friction from the modification would not have
deterred a relevant artisan from pursuing the suggestion.
The Board also reasonably found that a relevant arti-
san had a motivation to modify Steenfeldt-Jensen to meet
the radial-stop limitation of claims 30 and 32 of the ’486
patent. 1678 Final Written Decision at 67–69. The Board
determined that a relevant artisan would have modified
the fifth embodiment, which had outer hooks and longitu-
dinal slots acting as a radial stop, by replacing it with pro-
truding teeth from the third embodiment. The Board found
that these two elements were interchangeable, crediting
Mylan’s testimony that using either component as a radial
stop would have been a routine and predictable
Case: 20-1871 Document: 119 Page: 6 Filed: 12/29/2021
6 SANOFI-AVENTIS DEUTSCHLAND v.
MYLAN PHARMACEUTICALS INC.
modification. The Board thus had substantial evidence for
its conclusion that this rearrangement of old elements,
each performing the same function it had been known to
perform, would have been obvious.
For the foregoing reasons, we affirm the four final writ-
ten decisions that determined unpatentability based on
Steenfeldt-Jensen: IPR2018-01670, IPR2018-01676,
IPR2018-01678, and IPR2019-00979. That conclusion
moots the appeals from the final written decisions in
IPR2018-01675 and IPR2019-00122, which involve no
claims other than those already covered by the Steenfeldt-
Jensen reviews. We affirm in Appeal Nos. 20-1871, 20-
2032, 20-2033, and 20-2159. We dismiss as moot the ap-
peals in Appeal Nos. 20-2029 and 20-2034.
Costs awarded to Appellee.
AFFIRMED IN PART, DISMISSED IN PART
