In reasons dated February 26, 2015, Justice Barnes dismissed Janssen's application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Teva for the compound bortezomib until the expiry of Canadian Letters Patent 2,203,936 (the '936 Patent). The '936 Patent relates to bortezomib and its use to treat cancer.
The fatal finding for the '936 Patent was its characterization by the Court as a selection patent. Justice Barnes held that bortezomib falls within a genus of compounds claimed by an earlier patent, all of which are said to be highly potent in the treatment of cancer. He explained that although a compound falling within a previously claimed genus may be reclaimed as a valid selection, it must not have been made previously and must possess a special property of an unexpected character from those comprising the genus.
Justice Barnes dismissed the opinion of Janssen's expert that, notwithstanding the teachings of the prior patent, the person of skill continued to face challenges in connection with the assembly of the bortezomib molecule. He noted that:
"[T]he 904 Patent provided the person of skill with a clear roadmap to bortezomib. Although choices were still required to be made for all of the elements identified by Dr. Wuest, those choices were rendered obvious by the teaching of the 904 Patent. [...] A person of skill is not doing anything inventive when he chooses options provided in a prior patent to build a molecule that he expects will work."
Further, Justice Barnes held that the inventive concept of the '936 Patent does not incorporate any enhanced aspects of potency or selectivity nor does it assert any such relative advantages:
"The 936 Patent claims bortezomib for the same use. Bortezomib does not possess "a special property of an unexpected character" or "a substantial advantage over the genus from which it was selected"[.] Indeed, even as among the other compounds that bortezomib is compared with, it does not appear to offer any particular advantage."
On these bases, the Court held that the invention claimed in the '936 Patent is obvious. The full decision can be accessed at the following link: Janssen Inc. v. Teva Canada Limited, 2015 FC 247.
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