Gilead Sciences, Inc v Apotex, Inc 2016 FC 856 Brown J
2,512,475 / TRUVADA
In this chapter of the continuing TRUVADA saga, Brown J held Gilead’s 475 patent invalid as
being anticipated, or in the alternative, obvious, on the basis of a disclosure made by Gilead
executives in the course of a conference call with investors. The filing date was 13 January,
2004, and the conference call, which was public , took place more than one year before, on 2
December, 2002, and so outside the one year grace period for disclosure by the inventor set out in
s 28.2(1)(a) and s 28.3(a). The argument for anticipation or obviousness based on the conference
call was very strong, and the main tactic of Gilead’s counsel was to try to keep the conference
call transcript out of evidence by instructing the Gilead witnesses not to produce the conference
call transcript, in violation of Rule 94(1), and without seeking the relief of Rule 94(2) , .
Brown J held that in the circumstances hearsay evidence of the conference call transcript
introduced by Apotex was admissible as being both necessary and reliable . The holding on
anticipation  and obviousness [120-21] followed directly. Apotex also argued lack of utility,
but Brown J construed the promise of the patent modestly , and found that the promised
utility was soundly predicted .
As a minor point, Brown J found that the conference call, which was public , would have
been known to a person skilled in the art , but I don’t see a specific holding by Brown J that
it was part of the state of the art, in the sense of being common general knowledge or prior art
which would be discovered in a reasonably diligent search directed to the problem at hand. As
noted here, there is an issue as to whether the art that can be used in an obviousness attack
includes only the state of the art, so defined, or all prior art. This would potentially have been an
important point had the decision rested primarily on obviousness, but given that anticipation was
the primary basis for Brown J’s holding of invalidity, nothing turned on it.