Janssen Inc. v. Teva Canada Limited, 2015 FC 247 (Barnes, J.)
February 26, 2015
Jamie Mills, Chantal Saunders, Beverly Moore and Ryan Steeves, counsel for Janssen Inc.
David Aitken, Bryan Norrie and Jeffery Warnock, counsel for Teva Canada Limited
In this PM(NOC) Application, Janssen Inc. sought an order prohibiting the issuance of an NOC to Teva for generic Velcade (bortezomib). The patent at issue was Canadian Patent 2,203,936. The claims at issue covered the compound bortezomib, the use of bortezomib to treat cancer, and a unit dosage of bortezomib. This decision dealt only with obviousness.
The Court found that the inventive concept of the 936 Patent was a group of compounds, including bortezomib, which inhibit the proteasome.
Teva argued that prior art genus patents described all of the elements required to build the bortezomib molecule as a potent inhibitor of the proteasome, and that the 936 Patent claims amount to a selection. Justice Barnes held that one of the genus patents, the 904 Patent, disclosed a genus including bortezomib and disclosed that they were potent inhibitors of the proteasome.
Justice Barnes held that the skilled person knew that, using the substitutions taught in the 904 Patent, a potent inhibitor of the proteasome would emerge. The skilled person was not doing anything inventive by choosing options provided in a prior patent to build a molecule he expects will work. Justice Barnes found that the 936 claims the same compound as was claimed in the 904 Patent, for the same use, and that bortezomib does not possess a “special property of an unexpected character” relative to the compounds claimed in the 904 Patent. Accordingly, the application was dismissed.
By Greg Beach, Belmore Neidrauer LLP