Apotex Inc v Allergan Inc 2015 FCA 137 Dawson JA: Webb, Boivin JA aff’g 2014 FC 567
O'Reilly J
2,585,691 / bimatoprost / LUMIGAN RC
O’Reilly J’s holding that the ‘691 patent turned largely on the facts, and, unsurprisingly, the FCA
has affirmed on the basis that O’Reilly J made no legal error and there was no palpable and
overriding error in his factual findings.
O’Reilly J held, on the authority of Sanofi, 2008 SCC 61, [77], that it is sometimes necessary to
look to the disclosure to determine the inventive concept of the claims. In my post on that aspect
of his decision, I remarked that “O’Reilly J is clearly right on this point,” and the FCA has now
affirmed that principle, on the same authority [7.1]
On appeal Apotex also argued that the utility of the invention was not soundly predicted
“because the line of reasoning from which the desired result can be inferred was not explicitly
disclosed in the patent” [8]. The FCA held that “[t]hose elements of the doctrine of sound
prediction that would be self-evident to the skilled person need not be explicitly disclosed in the
patent” [9]. This strikes me as no more than an explicit statement of what is implicit in the
principle that the patent is addressed to a skilled person, and it does not represent any change in
the practice in this respect. (See here for my discussion of the FC holding on this point.)
The FCA also affirmed at [10] that a genus patent does not anticipate a selection if the special
advantages of the selection are not disclosed in the genus. As the FCA pointed out, this point was
established in Sanofi [32].
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