• Allegations of Obviousness and Inutility Found Not Justified
  • November 7, 2017 | Authors: Chantal Saunders; Adrian J. Howard
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Pfizer Canada Inc. v. Teva Canada Limited, 2017 FC 777

    Drug: PRISTIQ Form I ODV succinate

    This application pursuant to the Patented Medicines (Notice of Compliance) Regulations involved allegations of obviousness and inutility. The reasons in an application resulting from a Notice of Allegation sent by Apotex Inc. related to the same drug were released separately (see 2017 FC 774, our summary here) and involved allegations of non-infringement, anticipation, double patenting, and overpromising arising out of section 27(3). The parties in the within application agreed on the construction of the asserted claims. The Court found that Teva's allegations of obviousness and inutility were not justified.

    The Court set out the relevant considerations for an allegation of obviousness. The Court rejected Teva's argument that there is an over-arching inventive concept that applies to all the asserted claims. The Court determined the inventive concept of each asserted claim and then determined that a gap existed between the state of the art and the inventive concepts. The Court then considered whether the skilled person would have come directly and without difficulty to the solution taught by the patent. Teva argued that its witnesses were blinded but the Court considered this to be a question of relevance, reliability and weight, and concluded that a skilled person would not have come directly and without difficulty to the solution in the patent. The doctrine of obvious to try was applied by the Court, and the Court ultimately concluded that it was not more or less self-evident that what is being tried ought to work. Teva's allegation of obviousness was not justified.

    In light of the Supreme Court's decision in AstraZeneca, the Court set out that the first question to be answered in respect of utility is to identify the subject-matter of the invention as claimed in the patent, and the second question is whether that subject-matter is useful. The Court also assessed utility on a claim by claim basis and found the allegations of inutility were not justified.