Nika Aldrich
May 15, 2023

Fresh From the Bench: Latest Precedential Patent Case


Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1981 (Fed. Cir. May 9, 2023)

In our Case of the Week, the Court of Appeals for the Federal Circuit considered the “analogous art” inquiry in an obviousness analysis, holding that when arguing that prior art is analogous art to a challenged patent, the petitioner must show why the prior art is pertinent to the problem addressed by the challenged patent, and not to a problem addressed by other prior art.

Sanofi owns Patent No. RE47,614 for a drug delivery device meant to improve “operability with respect to dosage control and/or improved reproducibility of the dosage in connection with different cartridges.”  Mylan petitioned the Patent Trial and Appeal Board (“PTAB”) to institute an IPR proceeding against the ’614 patent, on the grounds the patent was obvious over a combination of prior art, including a Burren patent and a de Gennes patent.  The PTAB instituted the IPR and found that the ’614 patent was obvious over the prior art, in part because the de Gennes patent was analogous art to the ’614 patent.



Bot M8 LLC v. Sony Interactive Entertainment LLC, Appeal No. 2022-1291 (Fed. Cir. May 9, 2023)

In an appeal from the U.S. Patent Trial and Appeal Board (“PTAB” or the “Board”), the Federal Circuit addressed whether the Board correctly determined that Bot M8’s subject patent concerning a gaming machine that authenticates certain data and that has both a motherboard and a different board was unpatentable. The Federal Circuit affirmed the PTAB’s determination. First, the Federal Circuit held that to the extent there was any error in the Board’s construction of the subject patent, it was harmless because the Board did not rely on that construction to reach its conclusion of unpatentability.  Second, the Federal Circuit held that PTAB’s obviousness determination was not in error, finding that a person of ordinary skill in the art would have understood a benefit of combining the teachings from prior art to arrive at the process described in the subject patent.

The opinion can be found here.

United Cannabis Corporation v. Pure Hemp Collective Inc., Appeal No. 2022-1363 (Fed. Cir. May 8, 2023)

In an appeal from a district court decision denying a motion for attorneys’ fees, the Federal Circuit affirmed.  Pure Hemp had sought fees based on alleged inequitable conduct.  The request for fees was based on three different theories: 35 U.S.C. § 285, 28 U.S.C. § 1927, and the Court’s inherent authority.  The district court found that the record on the substantive merits of inequitable conduct was “woefully undeveloped, and as such, does not paint a persuasive picture for awarding fees.”  That was likely because the inequitable conduct allegations were voluntarily dismissed, along with the rest of the case, pursuant to an agreement between the parties.  The Federal Circuit affirmed that the record was undeveloped, and that even the facts in the record raised numerous disputes of material facts in relation to the inequitable conduct claim.  Pure Hemp argued that inequitable conduct was established to the extent that portions of a patent were copied into the application for the patent in suit, but the other patent was not identified to the Patent Office.  The Federal Circuit declined to engage in fact finding concerning the materiality of that prior art.  Pure Hemp also argued that United Cannabis’s attorneys had a conflict of interest, but the Federal Circuit found that argument to have been waived for failure to raise it before the district court.

The opinion can be found here.


Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder


Mario E. Delegato, Associate

Tyler Hall, Associate