Appeal Dismissed in PMNOC Appeal regarding Tadalafil

  • December 15, 2015

Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC and the Minister of Health, 2015 FCA 286 (Dawson, Near and Boivin JJA)

December 15, 2015

Jamie Mills and Beverley Moore for the Appellants (BLG Ottawa)
Tim Gilbert, Sana Halwani and Zarya Cynader for the Respondents (Gilbert’s LLP, Toronto)

This brief decision was an appeal of a PMNOC application brought by Eli Lilly for the drug tadalafil. The trial Judge had held that Canadian Patent 2,379, 948 was both not infringed and was invalid for obviousness. The Court of Appeal agreed with the Appellant that the test for obviousness was not that set out by the trial Judge (a rather low bar), but rather the Sanofi test. Despite the use of the wrong test, the Court of Appeal found that the trial Judge’s evaluation of obviousness met the Sanofi test (more or less self-evident that the invention was “obvious to try”). Other than in respect of this issue, the Court of Appeal agreed with the disposition by the trial judge.

By: Ken Clark, Aird & Berlis LLP