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`NOTE: This disposition is nonprecedential.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.
`MYLAN PHARMACEUTICALS INC.
`
`3
`
`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.
`MYLAN PHARMACEUTICALS INC.
`
`5
`
`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
`
`