Tomorrow, the Supreme Court of Canada was scheduled to hear arguments in Apotex Inc., et al. v. Sanofi-Aventis, et al. (Plavix/clopidogrel), including on the issue of patent utility/promise but this afternoon the Court announced that the hearing will NOT go ahead. Apotex has discontinued its appeal.

Some background on the proceeding, written prior to the announcement that the case will not be heard:

Due to a protective order, I understand that the hearing will not be streamed live online but a video recording is expected to be posted online within a day or so.

The appeal is from decisions of Justice Pelletier, Justice Noël and, with concurring reasons, Justice Gauthier in 2013 FCA 186, which was, in turn, an appeal from the decision of Justice Boivin in 2011 FC 1486. The Federal Court of Appeal stated at para 71:

The Trial Judge erred in construing the patent as specifically promising a result when the invention was used in humans and then assessing the utility of the patent against that specific promise. Properly construed, the ‘777 Patent made no such promise. As a result, the allegation that the patent was invalid for lack of utility ought to have been dismissed.

The same parties litigated the PM(NOC) proceeding up to the Supreme Court (see 2005 FC 390, 2006 FCA 421, and 2008 SCC 61) which considered, among things, obviousness, anticipation and double patenting for selection patents.

The factums of the parties (Apotex, Sanofi-Aventis) and the interveners (AIPPI, Canadian Generic Pharmaceutical Association, BioteCanada, Canada’s Research Based Pharmaceutical Companies, Centre for Intellectual Property Policy, FICPI) are available on the Court’s website.

The Supreme Court summarized the questions on the appeal as:

  • How the utility promised by a patent is to be identified and ascertained?
  • How an appellate court is to review factual findings of trial judge as to how skilled addressee would understand the promised utility?
  • How limitations periods are to be applied in respect of activity that only involves conduct, including import and export, in one province?

More information on other intellectual property proceedings at the Supreme Court are available on my Supreme Court litigation page.

[Updated: 4:00pm – The Supreme Court announced that the hearing will NOT go ahead. S&B tweeted that Apotex has discontinued the appeal.]

[Further update – Howard Knopf noted that the discontinuance was filed “on consent” suggesting that the some kind of settlement was reached.]