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Drug testing in Canadian patent suit not permitted to be used in foreign litigation

Posted in Intellectual Property, Litigation, Patents

In a rare case where drug samples were given under consent in an NOC proceeding Novartis sought, but was denied, to use these samples in a related litigation in Portugal (2016 FC 1091).

Samples are rarely provided in NOC proceedings. Nevertheless, production may be compelled if samples were provided to the Minister as part of the drug submission (Patented Medicines (Notice of Compliance) Regulations (SOR/93-133), s. 6(7)). This was not the situation in this case where Mylan consented to producing the samples, subject to the existing protective order.… Continue Reading

Federal Court of Appeal allows $6.5 million lump sum cost consequence

Posted in Litigation

In a recent appeal (2017 FCA 25) relating to the issue of costs following a patent infringement trial, the Federal Court of Appeal commented that lump sum awards have found increasing favour with courts, and for good reason as they save the parties time and money. Lump sum costs awards further the objective of the Federal Courts Rules of securing “the just, most expeditious and least expensive determination” of proceedings (Rule 3). When a court can award costs on a lump sum basis, granular analyses are avoided and the costs hearing does not become an exercise in accounting. … Continue Reading

Availability of non-infringing product is relevant in determining profit recovery for infringing activities

Posted in Intellectual Property, Patents

In a recent decision (Apotex Inc. v. ADIR, 2017 FCA 23), the Federal Court of Appeal determined that the Federal Court erred in law by rejecting the relevance at law of any available non-infringing product and failed to adequately consider the evidence adduced as to the ability and willingness of three suppliers to provide non-infringing product. According to the Court of Appeal:

  • To the extent the Federal Court rejected the relevance of non-infringing perindopril because the defendant sold perindopril, this conclusion was inconsistent with Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34 where the Roundup Ready
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CETA Implementation in Canada: Bill C-30 Brings Significant Changes to the Canadian Patent System

Posted in Intellectual Property, Litigation, Patents

Changes are coming swiftly, as the federal government moves to implement the Comprehensive Economic and Trade Agreement (“CETA”) just days after it was signed by Prime Minister Trudeau in Brussels at the end of October 2016.

These changes will significantly impact biologic/pharma patents in two major ways. First, they will implement, for the first time, a Canadianized version of patent-term restoration. Second, they will revamp the current framework for linkage between patents and the approval of biosimilar/generic drugs in Canada by giving innovators the right of appeal, by changing the nature of the PM(NOC) proceedings to a more U.S.-style approach, … Continue Reading

Canada’s Federal Court of Appeal Confirms Different Patent Claims Can Have Different Promised Utilities

Posted in Intellectual Property, Patents

In Teva Canada v. Novartis Canada 2016 FCA 230, the Federal Court of Appeal confirms that in assessing the utility of a patented invention, different patent claims can have different promised utilities.

This decision was made in Teva’s appeal from the Federal Court’s judgment (2015 FC 770) in which the Minister of Health was prohibited from granting an NOC to Teva in respect of its generic version of Novartis’ EXJADE® (deferasirox).

The only issue on appeal was whether the lower court erred in law in its construction of the so-called “promise of the patent”.… Continue Reading

Claim For Section 8 Damages Struck But Novel Cause Of Action Survives In Ontario Suit Re: Viagra® Patent

Posted in Intellectual Property, Patents

In this decision (2016 ONSC 4966), the Ontario Court dismissed Apotex’s claim for damages under s. 8 of the NOC Regulations in the face of a motion to strike. Apotex’s other relatively esoteric claims were, however, left for another day. These claims include alleged false and misleading statements under s. 7 of the Canadian Trade-Marks Act, unjust enrichment, nuisance, and conspiracy. Pfizer failed to establish that these claims were doomed to fail. The high standard applicable on these motions was not met.

Apotex pursues Pfizer in the Ontario Court for alleged losses relating to Apotex’s delay in … Continue Reading

Allegations Against Canadian Tenofovir Patent Found Unjustified (Again)

Posted in Intellectual Property, Patents

Gilead’s Canadian Patent 2,261,619 (the “619 Patent”)—the compound patent for tenofovir disoproxil fumarate (“TDF”)—is no stranger to Canadian courts. Adding to its litigious history, the Federal Court recently dismissed each of Apotex’s claims in an application under Canada’s NOC Regulations to find—for a second time—allegations relating to the 619 Patent’s validity unjustified.… Continue Reading

Federal Court Rules on Health Canada Importation Ban

Posted in Litigation

This case (Apotex v. Canada (Health), 2016 FC 673) involves a very unique set of circumstances. An underlying Health Canada decision was found to have been made for an improper purpose and carried out unfairly. This decision was apparently perpetuated in identical form in a subsequent decision without an evidentiary or lawful basis to do so and the subsequent decision was, therefore, found to be unlawful as well.… Continue Reading

CIALIS® Patent Survives Validity Challenge on Appeal

Posted in Intellectual Property, Patents

Last year we wrote about a trilogy of Federal Court decisions relating to Eli Lilly’s erectile dysfunction (ED) drug CIALIS® (tadalafil).  While Lilly was successful in obtaining a prohibition order in the first proceeding, its latter two applications were dismissed. Mylan appealed the first order, and the Federal Court of Appeal (FCA) recently released its decision in Mylan Pharmaceuticals ULC v. Eli Lilly Canada Inc., 2016 FCA 119 dismissing Mylan’s appeal.

The FCA’s decision affirms the view that obviousness and obviousness-type double patenting validity challenges require distinct analyses, and that a patent’s disclosure cannot be referenced to vary the … Continue Reading

Recent Ruling Regresses the Federal Court’s Stance on Expert “Blinding” in Canadian Patent Cases

Posted in Intellectual Property, Litigation, Patents

A recent decision of the Federal Court in Allergan Inc. v. Apotex Inc. et al. (2016 FC 344), relating to the drug Gatifloxacin, appears to have regressed the issue of expert “blinding” in patent cases. Expert “blinding” is a relatively recent trend in patent litigation where a litigant intentionally “blinds” its expert witness to certain issues and materials in an effort to afford their opinions a higher degree of credibility. In the Gatifloxacin decision, the Court appears to have endorsed expert “blinding” in patent cases as not only de rigueur but, perhaps necessary; while other recent decisions of … Continue Reading

Scathing Judicial Review of Natural Health Product Decision

Posted in Litigation

In The Winning Combination Inc. v. Canada (2016 FC 381), the Federal Court found that Health Canada demonstrated bias, prejudgment and prevented The Winning Combination (“TWC”) from fully and fairly participating in the licensing process. Accordingly, the Court quashed Health Canada’s decisions and awarded TWC full costs.

This was a judicial review of a series of related Health Canada decisions regarding the TWC product Resolve, a smoking cession aid. There is a long history associated with this dispute, involving a convoluted set of decisions by Health Products and Food Branch Inspectorate (“HPFBI”) and the Natural and Non-Prescription Health Products … Continue Reading

Largest Patent Infringement Award in Canada Stands: Apotex Denied Leave to Appeal to the SCC

Posted in Intellectual Property, Patents

On April 14, 2016, the Supreme Court of Canada denied Apotex’s final attempt at obtaining leave to appeal in the storied patent battle between Merck and Apotex over Merck’s lovastatin patent.

The case began in 1997 when Apotex launched its generic lovastatin product. At the liability trial in 2010, Justice Judith Snider of the Federal Court found Merck’s lovastatin patent to be valid and infringed (2010 FC 1265). The judgment included reference to DNA evidence establishing that Apotex had infringed through its operations in Winnipeg. The Judge also found that Apotex’s joint venture partner fabricated batch records and … Continue Reading

Court Gives Green Light For Canadian Pharmaceutical Patent Actions Where Future Infringement Is Likely Though Not Inevitable

Posted in Intellectual Property, Litigation, Patents

In reasons dated March 21, 2016, the Federal Court of Canada upheld a decision that allowed a patent infringement action involving tenofovir (an anti-HIV drug) to continue on the basis of allegations of a likely future (quia timet) infringement. The Court was satisfied that there was a “strong possibility of infringement” in circumstances where regulatory approval, and future market presence, of the generic copycat was “sufficiently likely” even though not inevitable that the generic would receive marketing authorization.… Continue Reading

Watch Out: NPEs are Coming to Canada!

Posted in Intellectual Property, Patents

NPEs, otherwise known as non-practicing entities, or pejoratively referred to by some as “patent trolls”, have seen a significant negative impact on their business model south of the border. NPEs are analogous to private equity businesses–their business model is to acquire undervalued patent assets and turn around and sell or license them to others, which often leads to expensive patent litigation. If their assets are depreciating in value, the model becomes significantly less attractive. This is exactly what is happening in the US.

Recent US Supreme Court decisions including Alice, which restricted the scope of patent-eligible subject matter, and … Continue Reading

Canadian Trademark Law Adapts to Online Software Licence Sales

Posted in Intellectual Property, Technology License Agreement, Trade-marks

The online sale of a software licence constitutes a “use” in relation to a good for the purposes of Canadian trademarks. This was the recent holding of the Federal Court of Canada in Specialty Software v Bewatec, 2016 FC 223. This decision strengthens trademark protection for software in Canada and demonstrates that courts will adapt legal concepts to modern technology. Here, the traditional model of purchasing software on tangible media, such as a CD-ROM, is simply outdated. Software as a service (SaaS) offerings have greatly increased in recent years with the explosion of cloud computing, which essentially provides … Continue Reading

Old Law Continues to Frustrate Innovator Protections for Combo-Drugs in Canada

Posted in Intellectual Property, Patents

On May 4, 2016, the Federal Court of Appeal upheld a summary motion ruling that Gilead’s ‘619 Patent is ineligible for listing against the combo-product, TRUVADA(R) (decision published as Gilead Science, Inc. v. Apotex Inc., 2016 FCA 140).

Canada’s PM(NOC) Regulations allow innovative drug manufacturers to list patents on the public Patent Register pertaining to their drug products. This provides a public notice function to potential copycat generic manufacturers of all listed patents that must be addressed or, else the patent expired, before obtaining marketing authorization from the Canadian Minster of Health to market and sell a generic … Continue Reading

Canadian Patent Law Update: Supreme Court Grants Leave in Utility / Promise / Sound Prediction Case

Posted in Intellectual Property, Patents

Canadian patents have utility requirements. A claimed invention must have some level of utility. A ‘mere scintilla’ of utility is all that the Patent Act requires.  However, where a patent contains an explicit promise of a specific result, the case-law has developed a requirement that this so-called ‘promised utility’ be demonstrated or soundly predicted as of the Canadian filing date of the patent application.

There has been much controversy over this ‘promise doctrine’ as well as the ‘heightened disclosure requirement’ that has been applied in the case of a sound prediction.  The controversy includes a NAFTA challenge by Eli Lilly … Continue Reading

Canadian Patent Law of Obviousness: R.I.P. Fair Expectation of Success

Posted in Intellectual Property, Patents

The question of whether a “fair expectation of success” is the correct legal standard applicable to an obvious to try analysis was finally laid to rest in the Federal Court of Appeal’s recent important decision of Eli Lilly v Mylan (2015 FCA 286). A unanimous panel held that a “fair expectation of success” was not the correct standard. Instead, the higher “more or less self-evident” test articulated by the Supreme Court of Canada in Sanofi-Synthelabo (2008 SCC 61) was reaffirmed as the correct legal standard. The higher standard for obviousness makes it more difficult to invalidate … Continue Reading

Canada’s Federal Court of Appeal Upholds C$180 Million Judgment in Favour of Merck Against Apotex in a Landmark Patent Damages Ruling

Posted in Intellectual Property, Patents

In a Judgment released July 23, 2015, the Federal Court of Appeal upheld the Federal Court’s award of more than C$180 million in damages and interest for Apotex’s infringement of Merck’s Canadian lovastatin patent. In this decision, the Federal Court of Appeal reversed the Trial Judge and held that the availability of a non-infringing alternative (“NIA”) is relevant under Canadian law but held that Apotex could not have and would not have deployed it.… Continue Reading

Innovator Delays Its Own Canadian Drug Approval In Effort To Secure Data Protection

Posted in Intellectual Property, Patents

On June 12, 2015, at the urgent request of Horizon Pharma PLC (“Horizon”), the Federal Court of Canada granted a rare interlocutory stay preventing the Minister of Health (the “Minister”) from issuing a Notice of Compliance (“NOC”) to Horizon in respect of its own glycerol phenylbutyrate drug RAVICTI that will be used to treat Urea Cycle Disorders (“UCDs”). Horizon sought the stay to prevent generic competitors from using the information in its regulatory submission while Horizon challenged the Minister’s decision to deny RAVICTI data protection. The Minister did not oppose Horizon’s motion.

While this case raises a fairly unique issue, … Continue Reading

Restoring the Balance: Canada Reaffirms Intended Purpose of PM(NOC) Regulations

Posted in Patents

Industry Canada has sponsored proposed amendments to the Patented Medicines (Notice of Compliance) Regulations (the “PM(NOC) Regulations”) that broadens the eligibility to list patents on the Patent Register. These amendments are a direct response to the “perfect match” doctrine recently endorsed by Canadian courts. They reaffirm Health Canada’s long-standing practice regarding patent listing. In so doing, Industry Canada is seeking to restore the balance between innovators and their generic competitors as intended by the PM(NOC) Regulations.… Continue Reading

PM(NOC) proceedings: Federal Court of Appeal affirms stringent product specificity requirements for listing patents in Canada

Posted in Patents

The Federal Court of Appeal has affirmed the stringent product specificity requirements for listing a patent against a drug for purposes of the PM(NOC) Regulations in its recent decision in ViiV Healthcare ULC et al. v. Teva Canada Limited et al., 2015 FCA 93.

In this proceeding, Teva and Apotex brought motions under the PM(NOC) Regulations arguing that a patent listed against ViiV’s KIVEXA drug was not eligible for purposes of paragraph 4(2)(a) of the Regulations. KIVEXA is a combination drug that contains two medicinal ingredients. The patent at issue explicitly claims one of these ingredients.… Continue Reading

Speculation Insufficient to Establish Indirect Patent Infringement in Canada

Posted in Patents

The relevance of expert evidence in establishing indirect infringement of a pharmaceutical in Canada has been questioned. It is unclear what “facts” a product monograph is to contain that will amount to “instructions” to infringe a patent or how a party is to prove that such “facts” amount to “instructions” or how those “instructions” would be understood. What is clear is that “speculation” will not suffice.

On March 26, 2015, the Federal Court released its decision in Bayer Inc. v. Pharmaceutical Partners of Canada Inc., 2015 FC 388, granting PPC’s motion to strike portions of an application brought … Continue Reading

PM(NOC) Proceedings: Teva defeats VELCADE cancer treatment patent

Posted in Patents

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 … Continue Reading