Patent Decisions
Court of Appeal affirms judgment finding patent invalid due to insufficient disclosure
Idenix Pharmaceuticals, Inc. v. Gilead
Pharmasset LLC., 2017 FCA
161
This is an appeal of the Federal Court's decision allowing
Gilead's claim to invalidate Idenix's '191 Patent on
the grounds of insufficient disclosure and lack of demonstrated
utility/sound prediction. The Federal Court also dismissed
Idenix's counterclaim that Gilead's subsequent patent, the
'657 Patent, was invalid for anticipation (see 2015 FC 1156, our summary here). Both patents at issue claim
compounds having activity against the family of Flaviviridae
viruses, including Hepatitis C.
On the issue of sufficiency, the Court of Appeal affirmed the
Federal Court's conclusion that the '191 Patent was invalid
for insufficiency of disclosure. Idenix had raised a number of
issues including that the Trial Judge had not read the '191
Patent's disclosure from the perspective of the person skilled
in the art with the benefit of common general knowledge. The Court
of Appeal noted that the use of the term "express written
disclosure" in the Reasons was not appropriate. However, the
Court of Appeal concluded that it was apparent on a fair reading of
the Reasons that the Trial Judge was concerned with how the skilled
person would have understood the patent, and dismissed Idenix's
allegations on this point. The Court of Appeal dismissed
Idenix's other points on the issue of sufficiency.
Given the findings on insufficiency of the disclosure, the Court
Appeal found it unnecessary to deal with Idenix's submissions
on the '191 Patent's utility or on the '657
Patent's validity.
Decision to add Information Commissioner as a party to an ATI decision judicial review upheld by Court of Appeal
Apotex Inc. v. Canada (Health), 2017 FCA 160
The Federal Court of Appeal dismissed Apotex's consolidated
appeals of the Federal Court's decision in 2016 FC 776 (our summary here). The Judge had dismissed
Apotex's appeal of the Prothonotary's Order, which granted
the Information Commissioner leave to be added as a party to
Apotex's application for judicial review. In the underlying
application, Apotex applied for judicial review in relation to
three separate but identical decisions of the Minister of Health to
disclose information in response to an access to information
request.
The Court of Appeal found that the Judge had not erred in refusing
to interfere with the Prothonotary's order even though the
Commissioner had not demonstrated it was a necessary party pursuant
to Rule 104 of the Federal Courts Rules. Instead, the
Court of Appeal concluded that the Judge was not bound to strictly
apply Rule 104 to the Commissioner's request. In the Court of
Appeal's view, the necessity test provided for in Rule 104
would undermine the intent of paragraph 42(1)(c) of the Access
to Information Act, which grants the Commissioner the clear
possibility of appearing as a party, with leave of the court, in
judicial review proceedings before the Federal Court. The Court of
Appeal noted that, when exercising discretion to grant leave under
paragraph 42(1)(c), the court should be satisfied that the
Commissioner would be of assistance to the court in the judicial
review proceeding.
Decision refusing to strike inducement to induce infringement allegations affirmed
Elbit Systems Electro-optics Elop Ltd. v. Selex ES Ltd., 2016 FC 1129
In this recently reported decision, the Court dismissed an
appeal of the Prothonotary's decision dismissing in part the
Defendant's motion to strike portions of the statement of
claim. In the underlying action, the Plaintiff claimed that the
Defendant has, or will imminently infringe its patent, but also
that the Defendant is inducing or procuring the infringement of the
patent by a third party and the Canadian Government. Further, the
plaintiff alleged that the third party has or will consequently
induce infringement by the Government of Canada. The Defendant is a
subcontractor of the third party, the prime contractor, which was
awarded the upgrade contract from the Government of Canada. Neither
the third party nor the Canadian Government were named as
defendants, even though allegations were made that they both
have or will directly infringe the patent.
The Court concluded that the Prothonotary did not err in law or
make any palpable and overriding error in refusing to strike the
impugned paragraphs, including those concerning inducement to
induce infringement.
Quantum of over $644 million awarded to Dow
The Dow Chemical Company v. Nova Chemical Corporation, 2017 FC 637
Dow requisitioned a reference following a finding that its patent was valid and infringed by Nova. In the decision reported in 2017 FC 350, the Court provided reasons addressing the assumptions and other considerations that were to inform the calculations of damages and profits. In this supplemental decision, the Court addressed three outstanding issues and determined the quantum of damages and profits payable by Nova to Dow. The Court awarded Dow $644,623,550.00, inclusive of pre-judgment interest to April 7, 2017, together with pre-judgment interest.
Industry News
CIPO is conducting a public consultation on the proposed
amendments to the Patent Rules from August 1 to September 8, 2017.
See CIPO's notice for more information.
Health Canada has released a Notice: Validation rules for regulatory
transactions provided to Health Canada in the "non-eCTD
electronic-only" format.
Health Canada has announced Consultation on Proposed Modification to
Bioequivalence Standards for Multiphasic Modified-Release Drug
Products. The website indicates that the consultation is
open for comment starting July 27, 2017 until September 25,
2017.
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