Sanofi-Aventis Inc. v. Apotex Inc.,2013
FCA 186 The Federal Court of Appeal has set aside the judgment of the
Federal Court, and found that Canadian Patent No. 1,366,777 is
valid, and infringed by Apotex. The matter has been sent back to
the Federal Court to deal with the issue of remedies and to assess
Sanofi's costs. This is the same patent that had previously been the subject of
a NOC proceeding and was appealed up to the Supreme Court of
Canada, where it was found to be neither anticipated nor obvious
(2008 SCC 61). Apotex subsequently commenced an action in the Federal Court
seeking a declaration that the patent was invalid. Sanofi also
commenced an infringement action, and the two proceedings were
consolidated into one. The Trial Judge found the patent was
infringed, but invalid for lack of utility on the basis that the
promise of the patent had neither been demonstrated nor soundly
predicted, as well as being obvious (2011 FC 1486). In overturning the Trial Judge, the Court of Appeal addressed
the promise of the patent, obviousness and "obvious to
try", and the disclosure of the factual basis for sound
prediction. The Court of Appeal clarified its earlier statements regarding
the promise of the patent in Eli Lilly Canada Inc. v. Novopharm Ltd,
2010 FCA 197, stating that although the promise of the patent
must be ascertained, it should not be taken to have assumed that
every patent contains an explicit promise of a specific result.
This is because there is no obligation on the part of the inventor
to disclose the utility of his invention in the patent. If there is
no explicit promise of a specific result, then a mere scintilla of
utility will do. Furthermore, patent applications are often drafted to meet
world-wide requirements, and so one must be cognizant that there
may be statements made that are not applicable to Canadian law. For
example, European applications will often contain statements
regarding industrial application, and one must be careful not to
treat each reference to a practical purpose as a promise of a
specific result within the meaning of Consolboard: "Moreover, statements of or references to a specific result
in a claim, which are part of the specification as expressly noted
in Consolboard (such as one dealing with a new use/new
utility [...]) and statements in respect of a claimed new process
to make an old product to obtain a specific result [...] ought to
be distinguished from expressly qualified statements as to what
practical applications can be expected to flow from the
demonstrated properties and advantages of a new product (such as
the new compound in this case)." For obviousness, the Court of Appeal emphasized that the genus
patent described multiple compounds that did not automatically
point to clopidogrel. Also, while the methods of separating a
racemate into its isomers are known, it does not follow that a
person skilled in the art would necessarily apply them. Lastly, the
actual conduct of the inventors was helpful in determining the
relative obviousness of the invention: "Put another way, the distance between the common general
knowledge and the inventive concept of the '777 Patent could
not be bridged by routine experimentation since the results to be
obtained were unknown. On the facts, this was confirmed by the fact
that the inventors, who had more knowledge that the person of
ordinary skill in the art, attempted to resolve a number of other
compounds before finally trying PCR 4099." In a concurring judgment, Gauthier JA distinguished between a
situation where the invention is a new use and the situation in the
present case where the invention is clopidogrel. Gauthier JA wrote
that in such a case, the level of disclosure required for a sound
prediction should be lower and in this case it was sufficient to
state that some of the utility is based upon a prediction: "The clear indication in the [...] patent that use in
humans was predicted as opposed to demonstrated should be
sufficient at law to meet the test for sound prediction. Indeed,
this is enough to enable the public to know that such practical
application was not demonstrated at the time the patent application
was filed. Therefore, the public would have the ability to
challenge the monopoly based on whether it was granted on mere
speculation, and determine whether the inventor in fact had the
required factual basis and sound line of reasoning to support this
statement at the relevant time." As a result of this decision in favour of Sanofi, Apotex's
separate appeal on the issue of its costs was deemed to be moot (2013 FCA 187). Oakcraft Homes Inc v Ecklund, 2013 CanLII
41981 (ON SC) A Small Claims decision has found that architectural drawings
designed by the Plaintiff were substantially copied by the
Defendants and therefore the Defendants were jointly and severally
liable for the damages. A home owner had engaged the Plaintiff to design a new home and
provide drawings of their discussions. The home owner then provided
those drawings to a different builder who made some changes but
substantially used the drawings in building the custom home. The Deputy Judge found that there was copyright in the drawings;
copyright resided in the Plaintiff; the failure to mark the
drawings as copyrighted did not defeat the claim; and, the
Defendants infringed by taking a substantial part of the
original. Damages were assessed at $11,600, the mid-point of each
party's positions. Continental Teves AG & Co. OHG v. Canadian
Council of Professional Engineers An appeal from a decision of a Board of the Trade-marks
Opposition Board (Board) refusing the registration of ENGINEERING
EXCELLENCE IS OUR HERITAGE for brake pads for land vehicles and
brake rotors for land vehicles was dismissed (the Mark). The
Canadian Council of Professional Engineers opposed the
registration. The Court agreed with the Board that the Mark was not shown to
be distinctive. The Court also found that the Mark is clearly
descriptive and therefore prohibited by section 12(1)(b) of the
Trade-marks Act. 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.
PATENTS
Sanofi's patent for clopidogrel (PLAVIX) found valid and
infringed on appeal; Apotex's appeal on costs moot
COPYRIGHT
Architectural plans are protected by copyright and found to be
infringed
TRADE-MARK
Clearly Descriptive Mark Refused Registration on Appeal from
Opposition Board