Ensuring a Reference Is Analogous Art to a Challenged Patent, Not to Another Reference

| Hans L. Mayer


Before Reyna, Mayer, and Cunningham. Appeal from Patent Trial and Appeal Board.

Summary: When arguing that a reference is analogous prior art, a petitioner must show that the reference is analogous to the challenged patent, and not other prior art references.

Mylan petitioned for IPR of a Sanofi patent. Mylan argued that the challenged claims were obvious based on three references, Venezia, Burren, and de Gennes. The parties agreed that the de Gennes reference belonged to a different field of endeavor than the challenged patent. Mylan argued that de Gennes constituted analogous art because it was pertinent to a problem faced by the Burren reference. Mylan, however, made no showing that de Gennes was pertinent to the problem faced by the inventor of the challenged patent. The Board agreed with Mylan and found Sanofi’s patent unpatentable as obvious in view of the three references.

The Federal Circuit reversed, holding that by comparing the de Gennes reference to other prior art and not the challenged patent, Mylan did not carry its burden to show that de Gennes was analogous to the patent at issue. Thus, the Federal Circuit held that Mylan failed to meet its burden to establish obviousness premised on de Gennes, and the Board’s factual finding that de Gennes is analogous to the challenged patent was unsupported by substantial evidence.

Editor: Paul Stewart

James Raleigh New York Bar Admission Pending