On June 15, 2012, Justice Zinn issued Judgments in two
prohibition proceedings between Sandoz and Fournier in respect of
fenofibrate tablets and Canadian Patent Nos. 2,372,576 (Court File
No. T-991-10) and 2,487,054 (Court File No. T-1184-10). The
'576 patent generally claims specific compositions of
fenofibrate with a particle size less than 20 microns. The '054
patent is generally directed to formulations having a certain
particle size having certain pharmacokinetic parameters in the fed
and fasted state. Both the '576 and '054 patents are
listed on the Patent Register against Founier's LIPIDIL EZ
The Federal Court's recorded entries in both proceedings indicates
that the result of the judicial review applications are
"CONFIDENTIAL". According to the Court's recorded
entries, Justice Zinn has provided the parties in both
matters until the end of business on Friday June 29, 2012 to inform
the Court if any portions of the confidential reasons should be
deleted or modified in the public versions thereof.
While Justice Zinn's reasons remain confidential, Fournier
has appealed the dismissal of the prohibition applications in
respect of the '576 patent (Court File No. A-298-12) and the
'054 patent (Court File No. A-299-12).
According to the redacted Notice of Appeal filed in A-298-12,
Justice Zinn concluded that every one of Sandoz's allegations
of invalidity was not justified but he dismissed the prohibition
proceeding because Fournier had failed to establish that
Sandoz's allegation of non-infringement was not justified.
In the Notice of Appeal, Fournier alleges that Justice
Zinn's finding on infringement arose from a deficiency in
Sandoz's Notice of Allegation, specifically that Sandoz
"deliberately chose not to allege or ever commit to any
particular particle size".
According to the redacted Notice of Appeal filed in A-299-12,
Fournier has asserted claims 10, 20, 27-28 and 38 of the '054
patent as they depend on claims 1-3. Justice Zinn found that
Sandoz's allegations of invalidity of the asserted claims were
unjustified, but dismissed the application finding that Fournier
had failed to establish, that Sandoz's product infringes the
As of today, Health Canada's NOC database does not indicate
that Sandoz has received a NOC for its fenofibrate product.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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