Teva Canada Ltd. v. Novartis, 2015 FC 770 (O'Reilly J.)
June 19, 2015
Anthony Creber and Alex Gloor for Novartis
David Aitken and Scott Beeser for Teva
Novartis sought an order prohibiting the grant of a Notice of Compliance to Teva in relation to Canadian Patent No. 2,255,951 ('951). The '951 patent relates to the treatment of excess iron using deferasirox which binds to iron. In a Notice of Allegation Teva alleged invalidity on several grounds but at hearing, narrowed these to inutility, obviousness and insufficiency. For the Federal Court, O'Reilly J. construed the claims and then determined that most of Teva's allegations were unjustified.
Utility
Animal testing on several compounds demonstrated utility at the filing date of the patent. The compounds used in the animal tests all showed the same effects such that it was soundly predictable that the non-animal tested compounds would achieve similar results. O’Reilly J. did see merit in Teva’s allegations with respect to the use claims. Overall, O’Reilly J. found that Novartis had met the burden of showing that Teva’s allegation of inutility was unjustified.
Obviousness
Teva argued that s. 28.3 of the Patent Act did not require the relevant prior art to be discoverable on a reasonably diligent search. O'Reilly J. saw no reason to depart from the "reasonably diligent search" criterion and doubted that some of the cited sources provided by Teva were relevant prior art, for example: some papers were published in obscure journals; two US patents related to bivalent rather than trivalent metals; and it was not obvious that the compounds in these sources would bind to iron so markedly.
Sufficiency
Based on his claim construction, O'Reilly J. found that Novartis had provided a skilled person with a description of the invention and instructions on how to put it into practice.
By: Scott Widdowson, Borden Ladner Gervais LLP