Misapplication of Analogous Art Test Leads to Reversal

In Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed a Patent Trial and Appeal Board decision finding all of the challenged claims of Sanofi-Aventis’ U.S. Patent No. RE47,614 unpatentable as obvious.

Mylan filed an inter partes review petition alleging that the claims of the ’614 patent were invalid as obvious over three prior art references--Burren, Venezia, and de Gennes. In response, Sanofi argued, inter alia, that de Gennes is not analogous art to the ’614 patent. The Board found that de Gennes was “reasonably pertinent” to a problem faced by the ’614 patent’s inventor and therefore constituted analogous art in this case.

The Federal Circuit found that Mylan failed to establish that de Gennes is analogous to the ’614 patent and that the Board’s contrary finding is not supported by substantial evidence. The Court explained that a reference constitutes analogous art if either (1) the reference is “from the same field of endeavor, regardless of the problem addressed” or (2) “the reference is reasonably pertinent to the particular problem with which the inventor is involved,” even if it is from a different field of endeavor. The Court further explained that, in determining whether a reference is analogous, the reference must be compared to the challenged patent. Here, Mylan argued that de Gennes was analogous to Burren, but Mylan failed to explain how de Gennes is analogous to the ’614 patent and thus failed to carry its burden to establish obviousness based on de Gennes. Because the Board found that Burren and Venezia alone did not render the challenged claims unpatentable, the Federal Circuit reversed.