Tuesday, October 22, 2013

Non-Obviousness Affirmed on the Facts in Teva / Zoledronate

Teva Canada Ltd v Novartis Pharmaceuticals Canada Inc / zoledronate (NOC) 2013 FCA 244 Gauthier JA: Evans, Near JJA aff’g 2013 FC 283 Hughes J
            ZOMETA ACLASTA / zoledronate / 1,338,937

In a brief decision from the bench, the FCA has affirmed Hughes J’s decision granting an order of prohibition in favour of Teva on the basis of deference in respect of his appreciation of the evidence.

This NOC proceeding initially concerned two patents, one to zoledronate (‘937) and a separate patent to a broad class of compounds including zoledronate (‘895). At first instance Hughes J held the ‘895 patent invalid for lack of utility, but the ‘937 patent was held to be valid and an order of prohibition was granted accordingly: see my post here. Teva appealed only the holding respecting the ‘937 patent, on the basis that Hughes J had erred in his obviousness analysis, arguing that Hughes J had misapplied the Windsurfing / Pozzoli test accepted by the SCC in Sanofi 2008 SCC 61 [3]. Teva argued that Hughes J set the bar for non-obviousness too high, based on his statement that “one cannot raise the bar too high in respect of obviousness. Research ought to be rewarded, not discouraged” [FC 161]. The FCA pointed out at [6] that this statement reflected a similar statement made by Rothstein J in Sanofi at [64]. The FCA then went on to emphasize the deferential standard of review for factual findings in respect of obviousness [11], and noted that “The Judge is presumed to have considered all the evidence before him” [12]. In the circumstances, the FCA concluded that there was no basis for interfering with Hughes J's conclusion.

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