Justice Pelletier; Justice Near; Justice Rennie - 2017-04-11

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In proceedings under the PM(NOC) Regulations, the Federal Court (see 2016 FC 580) found that Teva's allegation that the ‘736 patent was invalid for obviousness was justified and dismissed BMS’ application for a writ of prohibition. This is an appeal from that decision. BMS argues that the Federal Court erred in its application of the “obvious to try” test set out in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 [Plavix 1] and applied by this Court in Sanofi-Aventis v. Apotex Inc., 2013 FCA 186 [Plavix 2]. Specifically, BMS argues that the Federal Court erred in concluding that Teva’s allegation of obviousness was justified in spite of the fact that it found that some of the properties of Type-I atazanavir bisulfate were not predictable before it was made and tested. I come to the same conclusion as the Federal Court though for somewhat different reasons. I would dismiss the appeal. ... In my view, this is the conundrum which the Federal Court faced in this case. Having identified the inventive step as comprising three elements, the Federal Court was forced to say at the conclusion of its analysis that two of those elements were not inventive at all. It is this conclusion which feeds the present appeal. I would say, in light of the Federal Court’s reasoning, that its error was not in its application of the “obvious to try” test but in its identification of the inventive concept. ... On the facts of this case, it seems to me that the facts which support the conclusion that the distance between the prior art and the inventive concept (defined as the solution taught by the patent) could be bridged without recourse to inventiveness would also satisfy the first Lundbeck factor in that it was more or less self-evident that what was being tried ought to work. It seems to me that when this factor is taken it was articulated by the Supreme Court, the conclusion that the Skilled Person would have regarded a salt screen as a more or less self-evident way of getting to a form of atazanavir with greater bioavailability is inescapable.

Decision relates to:


Canadian Intellectual Property