• Court of Appeal Affirms Judgment Finding Patent Invalid Due to Insufficient Disclosure
  • August 2, 2017 | Authors: Beverley Moore; Adrian J. Howard
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Idenix Pharmaceuticals, Inc. v. Gilead Pharmasset LLC., 2017 FCA 161

    This is an appeal of the Federal Court's decision allowing Gilead's claim to invalidate Idenix's '191 Patent on the grounds of insufficient disclosure and lack of demonstrated utility/sound prediction. The Federal Court also dismissed Idenix's counterclaim that Gilead's subsequent patent, the '657 Patent, was invalid for anticipation (see 2015 FC 1156, our summary here). Both patents at issue claim compounds having activity against the family of Flaviviridae viruses, including Hepatitis C.

    On the issue of sufficiency, the Court of Appeal affirmed the Federal Court's conclusion that the '191 Patent was invalid for insufficiency of disclosure. Idenix had raised a number of issues including that the Trial Judge had not read the '191 Patent's disclosure from the perspective of the person skilled in the art with the benefit of common general knowledge. The Court of Appeal noted that the use of the term "express written disclosure" in the Reasons was not appropriate. However, the Court of Appeal concluded that it was apparent on a fair reading of the Reasons that the Trial Judge was concerned with how the skilled person would have understood the patent, and dismissed Idenix's allegations on this point. The Court of Appeal dismissed Idenix's other points on the issue of sufficiency.

    Given the findings on insufficiency of the disclosure, the Court Appeal found it unnecessary to deal with Idenix's submissions on the '191 Patent's utility or on the '657 Patent's validity