Federal Appeal

Industrial and Intellectual Property


Decision finding patent invalid for obviousness was upheld on appeal

Applicants applied under s. 6(1) of Patented Medicines (Notice of Compliance) Regulations for order prohibiting Minister of Health from issuing notice of compliance to respondent for its generic version of product Vigamox, antibacterial eye drop. Judge found that patent was invalid for reasons of obviousness and dismissed application. Applicants appealed. Appeal dismissed. Judge had to interpret patent as it would be understood by person skilled in art to which it pertained. Applicants did not question judge’s construction of inventive concept, which was identified as pharmacological composition for topically treating or preventing ophthalmic infection, which comprised 0.1 to 1.0 wt per cent moxifloxican. Judge did not fail to understand implications of what inventive concept at issue meant to skilled person in art. Judge logically considered each of known separately in light of state of art with view to determining whether moxifloxican was obvious or obvious to try at relevant date. Judge carefully set out prior art evidencing what skilled person would have knowledge of. Evidence demonstrated that patent disclosed and enabled essential element of moxifloxican claimed in more than one patent that addressed treatment of eye infections. Judge was entitled to accept expert’s opinion without adopting every aspect of it. Judge drew own conclusions on evidence as to whether inventive step of trying moxifloxican for claimed application would have been obvious to skilled person in art. Judge did not make palpable and overriding error in factual finding or reasoning.

Alcon Canada Inc. v. Actavis Pharma Co. (Sep. 16, 2015, F.C.A., Eleanor R. Dawson J.A., Wyman W. Webb J.A., and Richard Boivin J.A., File No. A-284-14) Decision at 240 A.C.W.S. (3d) 966 was affirmed.  258 A.C.W.S. (3d) 399.

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