Decision finding patent invalid for obviousness was upheld on appeal

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.

Free newsletter

Our daily newsletter is FREE and keeps you up to date on all the developments in the Ontario legal community. Please complete the form below and click on subscribe for daily newsletters from Law Times.

Recent articles & video

Insurance lawyers reveal their referral philosophies

Court of Appeal rules auto insurer not liable for parental negligence claim stemming from accident

Refugee lawyers speak out on federal election campaign rhetoric

Employees of Aboriginal Legal Services join major union

Pro Bono Ontario to rename Ottawa help centre after David Scott

Chasm in opinions remains after statement of principles repeal

Most Read Articles

New equality measure approved by Law Society of Ontario as the statement of principles gets repealed

Judges call out lack of support for legal aid, pro bono amid MAG presence

Chasm in opinions remains after statement of principles repeal

Law students, paralegals can continue working on the same summary conviction matters