Case: Gilead Sciences, Inc v Apotex
Inc, 2016 FC 857 (Court File No. T-1694-14)
Drug: VIREAD® (tenofovir disoproxil
fumarate)
Nature of case: Prohibition application pursuant
to section 6 of the Patented Medicines (Notice of Compliance)
Regulations (Regulations)
Successful party: Gilead Sciences, Inc. and Gilead
Canada, Inc.
Date of decision: July 21, 2016 - Confidential
Reasons; Public Reasons released August 23, 2016
Summary
Gilead Sciences Canada, Inc. markets tenofovir disoproxil
fumarate (TDF) under the name
VIREAD® for the treatment of HIV infection. Apotex
sought approval to market a generic TDF product and was required to
address Gilead's Canadian Patent No. 2,261,619 (619
Patent) under the Regulations. By this
application, Gilead sought an order prohibiting the minister from
approving Apotex's submission until the expiry of the 619
Patent.
The court allowed Gilead's prohibition application. Gilead
established that Apotex's anticipation, obviousness, and
inutility allegations were not justified.
Background
The 619 Patent relates to tenofovir disoproxil (TD, also known as bis(POC)PMPA), a prodrug of the nucleotide reverse transcriptase inhibitor tenofovir (also known as PMPA). This prodrug increases the oral bioavailability of the parent drug, tenofovir (PMPA). Gilead asserted only claim 32, which claims TD and its salts, tautomers and solvates.
The blinding of experts is a question of relevance, reliability and weight
The parties adopted different approaches towards the treatment of their expert witnesses. Gilead provided the legal framework regarding anticipation, obviousness, and utility to its experts early; Apotex withheld this information until after the experts had drawn their own conclusions on issues such as the promise of the patent, claim construction, and the prior art, but provided its experts with the prior art and common general knowledge. Justice Brown held that the blinding of experts (or lack thereof) may be a factor when determining relevance, reliability and weight, but it is not a matter that goes to admissibility. He preferred some experts on some issues, and other experts on other issues, taking into account the arguments raised by both parties and assessing the appropriate weight to be given to the expert testimony. In general, Justice Brown preferred the expert testimony of Gilead's experts.
Court is not bound by findings on invalidity allegations in previous NOC proceedings
Justice Brown held that the court was not bound by findings on invalidity allegations with respect to the 619 Patent in a previous NOC proceeding. He was not persuaded that he ought to apply comity except in the limited context of patent construction or another question of law.
Court rejects allegations that Claim 32 is invalid for anticipation, obviousness, or inutility
Anticipation. Justice Brown accepted
Gilead's evidence that claim 32 was not anticipated by a
European genus patent application alleged by Apotex to include TD.
He held that there was no disclosure of a carbonate group moiety in
the prodrugs described. Justice Brown also rejected Apotex's
allegation that claim 32 was an invalid selection from the genus
patent application, holding that even if the genus patent
application included TD, Gilead's prodrug presented special
advantages for efficient oral delivery that were not previously
disclosed.
Obviousness. Justice Brown rejected Apotex's
allegation that the discovery of the prodrug TD (bis(POC)PMPA) was
obvious or obvious to try. He noted that, as argued by the parties,
the inventive concept is "the addition of the bis(POC) moiety
to PMPA." He held that reaching this inventive concept was a
relatively long and arduous process that required an inventive
spark and would not have been obvious to the unimaginative and
uninventive skilled person.
Utility. Justice Brown held that the promised
utility of the 619 Patent is the efficient oral delivery of the
parent drug (tenofovir or PMPA) through its prodrug, which has a
specific carbonate moiety (yielding TD or bis(POC)PMPA). He held
that contrary to Apotex's allegations, efficacy in HIV
treatment was a goal — not a promise. The experimental
results disclosed in the 619 Patent were sufficient to demonstrate
that bis(POC)PMPA efficiently delivered PMPA. Justice Brown also
considered additional studies that showed the low bioavailability
of PMPA and demonstrated the improved bioavailability of the
prodrug (TD) compared to the parent (PMPA).
For these reasons, the court concluded that Apotex's
allegations of invalidity were not justified.
Norton Rose Fulbright Canada acted for Gilead in this
matter.
Link:
Gilead Sciences, Inc v Apotex Inc, 2016 FC 857
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