Thursday, September 22, 2016

Claim Construction in EXJADE Affirmed as Correct

Teva Canada Ltd v Novartis Pharmaceuticals Canada Inc 2016 FCA 230 Dawson JA: Gauthier, Near JJA aff’g 2015 FC 770 O'Reilly J
            2,255,951 / deferasirox / EXJADE / NOC

In the decision under appeal O'Reilly J issued an order of prohibition in respect Teva’s generic version of EXJADE on the basis of the ‘951 patent. The only issue on appeal was whether O’Reilly J, having correctly stated the law relating to the promise of the patent, had correctly applied that law in construing the promise of the ‘951 patent [4]. (The promise aspect of O’Reilly J’s decision is blogged here. See here and here for discussion of other aspects of his decision.)

In a brief decision, the FCA held that O’Reilly J’s construction of the promise was “correct” [25]. In light of the recent Nova v Dow , 2016 FCA 216 decision on the standard of review for claim construction (see here), it is interesting that the FCA did not discuss the standard of review at all. (To be clear, the FCA did not hold that the standard of review for construction of the promise was correctness; it simply did not discuss the issue.) Of course, a holding that the decision below is correct is consistent with upholding it on a less stringent standard of review, and it may be that the FCA simply felt no need to address the standard of review.

The FCA also went out of its way to quote Celebrex 2014 FCA 250 [66] (see here) to the effect that “the promise of the patent doctrine will hold an invention to an elevated standard of utility ‘only where a clear and unambiguous promise has been made.’ Where a patent’s validity is ‘challenged on the basis of an alleged unfulfilled promise, the patent will be construed in favour of the patentee where it can reasonably be read by the skilled person as excluding this promise’” [26]. Finally, the FCA re-affirmed that the point made in Celebrex (see here) that the promise doctrine applies on a claim-by-claim basis, so “different claims can have different utilities for the same compound” [23].

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