Federal Court Grants Prohibition Order with Respect to a Use
Patent Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC
875 The Federal Court considered and dismissed allegations relating
to double patenting, insufficiency and lack of standing. The Court
granted the prohibition order sought by Eli Lilly. Appeal Dismissed; Patent Claims Upheld as Invalid due to
Obviousness E. Mishan & Sons Inc. v. Supertek Canada Inc.,
2015 FCA 163 The Federal Court of Appeal (FCA) dismissed an appeal from a
trialdecision finding the claims at issue in a patent infringement
case to be invalid for obviousness (decision here; summary here). FCA Finds Patent Should be Listed on the Patent Register for
Combination Drug Eli Lilly Canada Inc. v. Attorney General of
Canada, 2015 FCA 166 In this case, the FCA overturned the Federal Court Decision
dismissing Eli Lilly's application for judicial review of a
decision of the Minister of Health refusing to list a patent on the
Patent Register (Decision here; summary here). The FCA returned the decision to the
Minister for reconsideration. Court Upholds Minister's Decision to Exclude Documents from
an Access to Information Request on the Basis of Solicitor-Client
Privilege Information Commissioner of Canada v. The Minister
of Health, 2015 FC 789 The Office of the Information Commissioner of Canada (OICC)
sought judicial review of the Minister of Health's refusal to
disclose information responsive to Apotex's request for records
related to the processing of an Abbreviated New Drug Submission
(ANDS) and the issuance of a Notice of Compliance (NOC). The
Judicial Review was largely dismissed. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
NOC Proceedings
Drug: tadalafilPatent Infringement Actions
The appellant argued that a particular document should not have
been included in the prior art. In particular, the appellant argued
that the fact that a document was found by a lawyer, should not
lead to a conclusion that it would have been found by the skilled
person. The FCA held that this issue was reviewable as a finding of
mixed fact and law, and would not be overturned without a palpable
and overriding error. The FCA refused to reweigh evidence in this
analysis, and the finding stood.
The FCA then considered the appeal in relation to obviousness. It
held that it was not convinced that the Federal Court misapplied
the fourth step of the Sanofi test. Furthermore, the FCA held that
there was evidence to support the factual findings made by the
trial judge in coming to his conclusion that the claims were
obvious. Thus, the appeal was dismissed.
Other Proceedings of Interest
Drug: spinosad; milbemycin oxime
The drug product contains two medicinal ingredients. The patent at
issue claimed oral formulations specifically relating to one of the
medicinal ingredients. The disclosure indicated that the
formulation may include compounds with antiparasite activity such
as milbemycins. The FCA held that the Federal Court misunderstood
the requirements of paragraph 4(2)(b) of the NOC Regulations.
The FCA held that the Federal Court had not made an error when it
overturned the Minister's construction of the patent, finding
it to claim a formulation which included both spinosad and
milbemycin oxime. However, the Court had erred in not then
overturning the decision not to list the patent on the Patent
Register. Once the finding was made that the patent claimed a
formulation containing the approved medicinal ingredients, it was
eligible for listing on the Patent Register.
Drug: pantoprazole
Apotex had started litigation against the Government, claiming
damages due to refusal or delay in approving drug submissions. It
made an Access to Information (ATI) request relating to one of the
drugs at issue. 47 pages were produced in their entirety, and 8
further pages were produced in redacted versions, based on
solicitor-client privilege. Apotex filed a complaint with the OICC.
The OICC investigated, reported the results to Apotex, and started
this proceeding, with Apotex's consent, after Health Canada
maintained its position that the solicitor-client exemption
applies.
The Court held that the question of whether the Minister properly
applied the exemption of solicitor-client privilege is reviewable
on a standard of correctness, and the question of whether the
Minister's discretionary decision to refuse disclosure is
reasonable is reviewable on a standard of reasonableness. The Court
then considered the solicitor-client exemption and found that it
applied to all but one part of one of the documents. The Court held
that there was no abuse of discretion, and that the severance was
properly exercised. One further sentence was ordered disclosed.
ARTICLE
31 July 2015
Federal Court Grants Prohibition Order With Respect To A Use Patent (Intellectual Property Weekly Abstracts Bulletin: Week Of July 27, 2015)
Apotex had started litigation against the Government, claiming damages due to refusal or delay in approving drug submissions.