Law Times

Law Times • sepTember 25, 2017 Page 13 www.lawtimesnews.com CASELAW Supreme Court of Canada Intellectual Property PATENTS Validity of patent Promise doctrine not correct approach to determining patent's utility In infringement/impeachment action, plaintiffs' patent relat- ing to its drug with compound esomeprazole, used as proton pump inhibitor (PPI) to treat various maladies, was declared invalid for inutility. Plaintiffs' ap- peal was dismissed. Plaintiff ap- pealed. Appeal allowed. Promise doctrine applied by trial judge and appeal court was not correct approach to determine whether patent had sufficient utility. Doc- trine was unsound and exces- sively onerous, conf lating s. 2 of Patent Act that defined what qualified as invention to obtain protection of patent with disclo- sure requirements of s. 27(3) of Act. Promise doctrine's approach to multiple promised uses, re- quiring all of them to be dem- onstrated or soundly predicted by filing date even though any single use was sufficient to make invention useful for purposes of s. 2 of Act, had punitive and po- tentially unfair effect. Approach risked depriving otherwise use- ful invention of patent protection because not every promised use was sufficiently demonstrated or soundly predicted, which would discourage patentees from mak- ing full disclosure contrary to purpose of s. 27(3) of Act. Correct approach was to identify subject- matter of invention and then ask whether it was useful in that it was capable of practical purpose, rather than being speculative or fanciful. Trial judge accepted that drug compound's use as PPI to reduce production of gas- tric acid was soundly predicted by relevant date. Use as PPI was appropriately related to patent's subject matter of compound. Pat- ent had sufficient utility to satisfy requirement of s. 2 of Act and so was not invalid for inutility. AstraZeneca Canada Inc. v. Apotex Inc. (2017), 2017 Car- swellNat 2988, 2017 CarswellNat 2989, 2017 SCC 36, 2017 CSC 36, McLachlin C.J.C., Abella J., Mol- daver J., Karakatsanis J., Wagner J., Gascon J., Côté J., Brown J., and Rowe J. (S.C.C.); reversed (2015), 2015 CarswellNat 12189, 2015 CarswellNat 2431, 2015 FCA 158, 2015 CAF 158, Eleanor R. Daw- son J.A., C. Michael Ryer J.A., and Wyman W. Webb J.A. (F.C.A.). Federal Court of Appeal Civil Practice and Procedure COSTS Particular items of costs Column IV of Tariff B costs justified given complexity of matter, involving eight expert witnesses Applicant's application for order prohibiting Minister of Health from issuing Notice of Compli- ance (NOC) to respondent for generic version of applicant's ointment product until expiry of patent was granted. Applicant was awarded costs in amount of $419,729.92 inclusive. Ap- plicant was denied substantial portion of amount claimed, but Court rejected specific argu- ments raised by respondent in respect of additional deductions. Given complexity of this mat- ter, involving eight expert wit- nesses, appropriate scale for fees was middle of Column IV of Tariff B of Federal Court Rules. Respondent appealed. Appeal dismissed. Respondent's request that in event its appeal on merits of Federal Court's prohibition application was successful costs award should be set aside was dismissed as its appeal was un- successful. Respondent's alterna- tive submission that even if ap- peal was dismissed, costs award should be reduced to deduct some or all of amounts awarded for certain fees paid to appli- cant's experts was rejected. Fed- eral Court did not make palpable and overriding error in respect of said portions of its costs award. Teva Canada Ltd. v. Leo Phar- ma Inc. (2017), 2017 Carswell- Nat 779, 2017 FCA 51, Johanne Gauthier J.A., Yves de Montigny J.A., and Mary J.L. Gleason J.A. (F.C.A.); affirmed (2016), 2016 CarswellNat 707, 2016 Carswell- Nat 708, 2016 FC 107, 2016 CF 107, George R. Locke J. (F.C.). Intellectual Property PATENTS Validity of patent Specific property of increased bioavailability differentiated patent Appellant pharmaceutical com- pany N filed patent application in 1997, for molecule and its by- product salts. N obtained patent in 2006. Co-appellant company B filed patent application in 1998 for form of molecule, which was more easily available. B obtained patent in 2004. Respondent com- pany T alleged to Federal Court that B's patent was invalid on grounds of obviousness. B's ap- plication for writ of prohibition was dismissed. B claimed that obviousness test was not prop- erly applied by Federal Court. B pointed to finding that some of properties of its molecule were not predictable, before making and testing. B appealed from Federal Court judgment. Appeal dismissed. Categorical approach to obviousness issue was not ap- propriate. Federal Court found that two of three identified ele- ments in case were not inventive. Federal Court erred in its iden- tification of inventive concept. There was no difference between prior art and inventive concept or solution taught by patent. Skilled person would have ex- pected that salt screen process would identify one salt that would improved pharmaceuti- cal properties. Specific property of increased bioavailability dif- ferentiated B's patent from that of N. Although Federal Court's reasoning was f lawed, conclu- sion that skilled person would have found patent to be obvious was correct in result. Bristol-Myers Squibb Canada Co. v. Teva Canada Ltd. (2017), 2017 CarswellNat 1330, 2017 FCA 76, J.D. Denis Pelletier J.A., D.G. Near J.A., and Donald J. Rennie J.A. (F.C.A.); affirmed (2016), 2016 CarswellNat 2448, 2016 FC 580, Anne L. Mactavish J. (F.C.). Torts MISFEASANCE IN PUBLIC OFFICE Miscellaneous Generic manufacturer partially successful in action for misfeasance in public office Plaintiff was generic pharmaceu- ticals manufacturer. Defendant Crown represented Health Pro- tection Branch ("HPB") under Ministry of Health. Plaintiff filed submission for Notice of Compli- ance ("NOC") for generic trazo- done drug. Plaintiff sought to rely on bioavailability studies relied on by related company in U.S., on basis that products were identical and drug had been approved in U.S.. U.S. approval was based on data comparing generic to inno- vator's approved drug. Unrelated company had obtained approval to sell innovator's drug in Canada. HPB insisted that plaintiff pro- vide Canadian reference product. Plaintiff brought application for judicial review which was with- drawn when settlement reached. Disagreement between parties about what data was required for NOC continued. Seven years after submission, HPB granted NOC, by which time two of plaintiff 's competitors had received NOCs for generic trazodone. Plaintiff was partially successful in ac- tion against defendant for dam- ages for, inter alia, misfeasance in public office. Plaintiff appealed; defendant cross-appealed. Plain- tiff 's appeal allowed in part; de- fendant's cross-appeal dismissed. Impasse had been resolved by settlement agreement. Judgment of Federal Court was varied so as to remove conclusion that plain- tiff failed to mitigate loss. Thus, reference or trial to establish ex- tent of plaintiff ' damages should proceed on basis that plaintiff did not fail to mitigate loss. Content of correspondence was such that there was no palpable and over- riding error in Federal Court's finding that by April 1991, plain- tiff was aware that Health Protec- tion Branch was acting in breach of settlement agreement and that plaintiff was suffering damage as a result. R. v. Apotex Inc. (2017), 2017 CarswellNat 1352, 2017 FCA 73, Eleanor R. Dawson J.A., Rennie J.A., and Woods J.A. (F.C.A.); re- versed (2014), 2014 CarswellNat 4609, 2014 CarswellNat 6410, 2014 FC 1087, 2014 CF 1087, Roger T. Hughes J. (F.C.). Federal Court Immigration and Citizenship ADMISSION Application for temporary resident or immigrant visa Officer's analysis of best interests was unreasonable because it was unrealistic Husband and wife applicants were citizens of Albania, and two CASELAW Caselaw is a weekly summary of notable civil and criminal court decisions by the Supreme Court of Canada, the Federal Court of Canada and all Ontario courts. These cases may be found online in WestlawNext Canada. To subscribe, please access carswell.com or call 1-800-387-5164. REACH ONE OF THE LARGEST LEGAL AND BUSINESS MARKETS IN CANADA! AVAILABLE ONLINE AND IN PRINT With more than 300,500 page views and 100,000 unique visitors monthly canadianlawlist.com captures your market. 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