Actavis Pharma Company v Alcon Canada Inc., 2015 FCA 192 (Dawnson J.A., Webb J.A., Boivin J.A.)
September 16, 2015
Douglas Deeth and Heather Watts of Deeth William Wall LLP for Actavis Pharma Company
Peter Wilcox, Marian Wolanski and Frederic Lussier of Belmore Neidrauer LLP for Alcon Canada Inc., Alcon Pharmaceuticals, Ltd. and Bayer Intellectual Property GmbH
This was an appeal of the Application Judge’s decision to grant an Order prohibiting the Minister of Health from issuing a Notice of Compliance to Actavis Pharma Company. Actavis appealed the decision in relation to two of the patents, the ‘114 Patent and the ‘211 Patent. The ‘211 Patent was dealt with under a separate set of reasons in 2015 FCA 191.
In respect of the ‘114 Patent, Actavis argued that the Application Judge had erred in the construction of the promise, in finding that utility was soundly predicted and that the patent was not invalid on the basis of obviousness. The Court of Appeal held that the construction of the patent is a matter of law, to be reviewed on a correctness standard; whereas sound prediction and obviousness are matters of mixed fact and law, to be reviewed on a standard of palpable and overriding error.
The Court of Appeal concluded that the Appellant was essentially re-arguing its case and reaffirmed that it is not the Court’s role to re-weigh evidence. A Judge is entitled to prefer one expert’s evidence over another on a number of grounds, and the Application Judge’s preference for one expert over another in this case did not amount to a reviewable error.
By: Jillian Brenner, Borden Ladner Gervais LLP