Law Times

PAGE 14 CaseLawLaw Intellectual Property SUPREME COURT OF CANADA Industrial And PATENTS Applications judge overstated stringency of test for anticipation that "exact invention" already made and publicly disclosed Appellant challenged validity of selection patent on grounds of anticipation, obviousness and double patenting. Selection pat- ent is one whose subject mat- ter is fraction of larger known class of compounds which was subject matter of prior patent. Respondents were holders of '875 patent, which disclosed genus class of compounds use- ful in inhibiting platelet aggre- gation activity in blood. Genus patent disclosed over 250,000 possible different compounds useful for this purpose, in- cluding racemate, a substance containing equal amounts of two structurally different com- pounds. Respondents also hold- ers of '777 patent that disclosed clopidogrel bisulfate, marketed under trade name of Plavix as anti-coagulant that inhibits platelet aggregation activity in blood. Clopidogrel bisulfate, encompassed within scope of claims in '875 patent, is dextro- rotatory isomer of racemate. It exhibits platelet aggregation in- hibiting activity and is less toxic and better tolerated. Appellant generic manufacturer sought to market generic version of Plavix, claiming it would not infringe respondents' patent for Plavix because '777 pat- ent invalid on grounds of an- ticipation, obviousness and double patenting. Respondents obtained order prohibiting Minister of Health from issuing Notice of Compliance to appel- lant on ground that generic ver- sion of Plavix did infringe '777 patent. Federal Court of Appeal upheld decision. Further appeal to Supreme Court of Canada dismissed. System of genus and selection patents acceptable in principle. Question was wheth- er particular selection patent has been anticipated i.e. claimed in- vention already made or public- ly disclosed. Applications judge overstated stringency of test for anticipation that "exact inven- tion" already made and publicly disclosed. Requirements of "pri- or disclosure" and "enablement" should be considered separately and proven. Question is how much trial and error or ex- perimentation permitted. '777 patent not invalid on basis of anticipation. No evidence that person skilled in the art would know, from reading '875 patent, specific beneficial properties as- sociated with more active dex- tro-rotatory isomer. '875 patent did not teach special advantages so invention of '777 patent not disclosed and not anticipated. '777 patent not invalid on ba- sis of obviousness. Obviousness relates to how skilled worker would have acted in light of pri- or art and requires application of four-step test. Taking into consideration relevant factors invention not self-evident from prior art and common general knowledge in order to satisfy test. No evidence that person skilled in art would have known which of five known separation techniques would work with this racemate. Course of con- duct and time involved demon- strated that advantage of dex- January 19, 2009 • Law Times COURT DECISIONS CaseLaw is a weekly summary of notable unreported civil and criminal court decisions by the Supreme Court of Canada, the Federal Court of Canada and all Ontario courts. Single or multiple copies of the full text of any case digested in this issue can be obtained by: i) completing and mailing in the order form in this issue; or ii) calling CaseLaw's photocopy department at (905) 841-6472 in Toronto, (800) 263-3269 in Ontario and Quebec, or (800) 263-2037 in other provinces; or iii) faxing a copy of the completed order form to (905) 841-5085. tro-rotatory isomer not quickly or easily predictable. Challenge to selection patents based on ground of double patenting not well-founded. Generalized concern about evergreening not justification for attack on doctrine of selection patents. No "same invention" double patenting since claims of '875 and '777 patents not identical and former is broader. Claims in '777 patent reflect patently distinct compound so not in- valid for "obviousness" double patenting. Sanofi-Synthelabo Canada Inc. v. Apotex Inc. (Nov. 6, 2008, S.C.C., Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ., File No. 31881) Appeal from 154 A.C.W.S. (3d) 942, 282 D.L.R. (4th) 179, 59 C.P.R. (4th) 46, 358 N.R. 135 dismissed. Order No. 008/315/054 (67 pp.). Real Property OWNERSHIP Two regimes of civil liability in respect of neighbourhood distur- bances should be recognized Appellant began operating ce- ment plan in municipality in 1955 pursuant to special statute passed by Quebec legislature. Neighbourhood problems arose between appellant and neigh- bours displeased with conse- quences of plant's activities. Respondents obtained authori- zation to institute class action on behalf of other residents living in areas near plant. Action filed in 1994 and appellant stopped operating plant in 1997. Trial court allowed class action on ground that scheme of no-fault liability in respect of neighbour- hood disturbances exists under s. 976 of Civil Code of Quebec. Court of Appeal allowed appel- lant's appeal in part with regard to certain aspects of assessment of damages but found company civilly liable on basis of proven fault under general rules of civil liability in light of failure to comply with certain regulatory provisions. Appellant appealed conclusion it was liable on basis of fault and to method adopted for determining quantum of damages. Respondents cross- appealed, seeking recognition of no-fault liability scheme ap- plicable to excessive neighbour- hood annoyances and seeking to restore trial court's conclu- sions on quantum of damages. Principal appeal dismissed and cross-appeal allowed. Right of ownership limited by s. 976 of Code which prohibits own- ers from forcing neighbours to suffer abnormal or excessive an- noyances. Two regimes of civil liability in respect of neigh- bourhood disturbances should be recognized: first, under ordi- nary rules of civil liability, based on wrongful conduct of person allegedly causing disturbances, while second, under regime of no-fault liability, based on ex- tent of annoyance suffered by victim. Trial judge's conclusion that appellant had not com- mitted civil fault in relation to statutory obligations reasonable and analysis of law was correct. Trial judge also found, however, that respondents had suffered abnormal annoyances beyond limit of tolerance neighbours owe each other. Based on these findings trial judge justified in finding appellant liable under s. 976 of Code. She did not misinterpret word "neighbour" when she held that all members living in neighbourhoods adja- cent to plant were neighbours of plant for purposes of s. 976 of Code. Special statute did not grant appellant immunity from actions in damages relating to industrial activities. Statute au- thorized operation of plant but did not exempt appellant from application of ordinary law. Barrette v. Ciment du St-laurent Inc. (Nov. 20, 2008, S.C.C., McLachlin C.J.C., Bastarache, LeBel, Deschamps, Fish, Abella and Charron JJ., File No. 31782) Decision at 164 A.C.W.S. (3d) 396, [2006] R.J.Q. 2633 was varied. Order No. 008/329/018 (80 pp.). Verdict INCONSISTENT VERDICTS Conviction for manslaughter by criminal negligence inconsistent with acquittal for manslaughter by failing to provide necessaries of life Crown appealed reversal of ac- cused's conviction for man- slaughter by criminal negli- gence. Accused was also acquit- ted of manslaughter by failing to provide necessaries of life. Both counts based on allega- tion that accused failed in duty to protect child from foreseeable harm by wife. Appeal dismissed. Verdicts inconsistent. Actus reus, Crown's theory and, essentially, fault elements were common to both counts. No reasonable basis upon which jury could acquit for less serious offence and convict for more serious one. Verdicts suggested that lesser degree of fault not estab- lished while greater degree of fault proven beyond a reason- able doubt, in respect of same omission. Verdicts could not be reconciled on basis of theoreti- cal distinction between offences not raised at trial and not rele- vant on facts. Acquittal entered. Deschamps J. dissenting. Insurance and Risk Management in Commercial Leases: A Practical Guide Dawn Michaeloff This is a desk-top guide to the insurance and risk management provisions of a commercial lease. This publication will identify and discuss the types of insurance typically required of landlords and tenants as well as subrogation, release and indemnity provisions; and damage and destruction provisions. It explains industry phrases and terminology and provides invaluable tips and precedent clauses. Hardbound • Approx. 170 pp. • February 2009 • Approx. $90 • P/C 0299010000 • ISBN 978-0-88804-483-9 For a 30-day, no-risk evaluation call: 1 800 263 2037 or 1 800 263 3269 www.canadalawbook.ca Canada Law Book is A Division of The Cartwright Group Ltd. • Prices subject to change without notice, and to applicable taxes. www.lawtimesnews.com MICHAELOFF_Insurance and Risk Managemnt (LT 1-4x5).indd 1 1/14/09 11:14:49 AM LT0119

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