Canada: An Example In A Prior Art Patent Inevitably Anticipated The Invention, Even If It Was Not Stated (Intellectual Property Weekly Abstracts Bulletin: Week Of September 7, 2015)

Last Updated: September 10 2015
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

Patent Decisions

An example in a prior art patent inevitably anticipated the invention, even if it was not stated

Takeda Canada Inc. v. Mylan Pharmaceuticals ULC , 2015 FC 751

Drug: pantoprazole magnesium dihydrate

In an NOC proceeding, Mylan has successfully alleged invalidity of Takeda's patent claiming the compound pantoprazole magnesium dihydrate.

Mylan made many invalidity allegations, but the patent was ultimately found invalid for anticipation. Mylan also alleged non-infringement, claiming their product does not infringe because it is a hemipentahydrate and not a dihydrate.

The anticipating document was a patent application that describes a process for preparing magnesium salts of certain benzimidazoles, including pantoprazole, that were known to be useful as gastric acid inhibitors. It was found that one of the examples to the patent necessarily produces pantoprazole magnesium dihydrate, even though the patent application did not state whether it produces a hydrous or anhydrous form.

The Court determined that the prior art example would anticipate the invention if it inevitably or necessarily produced the dihydrate. If a dihydrate is only sometimes obtained, then it would not anticipate.

Experimental testing was done by Mylan to show that if a skilled person followed the process in the example and characterized the obtained compound, they would find that it was the dihydrate. The patentee did not proffer any of its own testing to show that anything other than the dihydrate could be made using the process, and thus the Court held that the anticipation allegation was justified. The Court noted that although criticisms were made of Mylan's testing, not doing any testing in response was fatal to their arguments.

For the allegation of non-infringement, the Court found that the range of water content in Mylan's product fell between the theoretical water content of the dihydrate and the hemipentahydrate. This was not found to be sufficient to support a finding that Mylan's product is a dihydrate.

Asserting the same patent but different claims in NOC litigation is found to be an abuse of process

Gilead Sciences, Inc. v. Apotex Inc. , 2015 FC 610

Drug: tenofovir disoproxil

Apotex has struck Gilead's Notice of Application as it relates to a patent that had previously been found to be invalid in an earlier NOC proceeding as an abuse of process (see 2013 FC 1272 ). In the earlier proceeding Teva had alleged claims 1-7 of the patent were invalid. Some claims were dropped and only claims 3 and 4 were ultimately argued at the hearing.

Gilead argued it was not an abuse of process to maintain the application against Apotex because striking a pleading is discretionary, Gilead would fill an evidentiary gap from the earlier proceeding and the validity issues are different between the proceedings because Gilead would assert other claims, not just claims 3 and 4.

The Court disagreed, finding it is an abuse of process because the context is not dependent on the evidence to be called but, rather, on the issues presented to the Court for determination. The Court also found that it is not open to a patentee to assert only some claims in the first proceeding, and then different claims in the later proceeding. The Court stated that the situation may be different if the initial generic challenger does not put the validity of some claims in issue, but that was not the case here.

Claim for damages based on the Statute of Monopolies survives a motion to strike

Apotex Inc. v Eli Lilly and Company et al. , 2015 ONSC 5396

Drug: tenofovir disoproxil

The Ontario Superior Court has refused to strike a claim for damages pursuant to the Statute of Monopolies . In finding the law is not yet settled, the Court reviewed the state of the law and found that the Statute of Monopolies may or may not apply and the Patent Act may or may not be a complete code. In the face of such uncertainty, it was not possible for the Court to find that the claim has no reasonable prospect of success.

Trademark Decisions

Court holds on appeal that it was reasonable to find use of the challenged marks

Cameron IP v. Haldex AB , 2015 FC 1000

Cameron has unsuccessfully appealed from the TMOB where the Officer maintained in part registrations for HALDEX and HALDEX & DESIGN.

Cameron had previously sent a section 45 notice in 2009, requiring Haldex to provide evidence of use of the marks during the three year relevant period. Evidence was provided that did not support all the registered goods and services, and therefore those would be deleted from the respective registrations. Cameron argued on appeal that the marks should be expunged completely.

Applying the reasonableness standard for an appeal of a decision by the Registrar of Trademarks, the Court declined to intervene, holding it was reasonable for the Hearing Officer to find use based on the evidence provided.

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