• Order of Prohibition Granted in respect of One of Two Asserted Patents
  • November 6, 2013
  • Law Firm: Borden Ladner Gervais LLP - Toronto Office
  • Bayer Inc. v. Cobalt Pharmaceuticals Company, 2013 FC 1061
    Drug: drospirenone and ethinylestradiol

    Two patents were under consideration by the Court in this application brought pursuant to the Patented Medicines (Notice of Compliance) Regulations. With respect to the first patent, the Court noted that the issue to be considered was whether the claims were directed to a product in which one of the compounds was micronized, or whether there was no restriction on the form if it achieved certain rapid dissolution characteristics. The Court agreed with Bayer that the claims are not limited to a micronized form and therefore Cobalt’s allegation as to non-infringement was not justified. The Court also found that the allegation of obviousness was not justified. The Court noted that the Court of Appeal has held that “a distinction must  be made between the potential use to which an invention may be put, and an explicit promise to achieve a specific result identified in the patent.” The Court accordingly found that the allegation of lack of sound prediction and inutility, as well as overbreadth, insufficiency and ambiguity were not justified. The Order of prohibition was granted in respect of this patent.

    With respect to the second patent, the Court was required to construe the claims and found that there was no certainty as to the dosage covered by the claims and it would most likely be 2 mg. As Cobalt’s product will contain 3 mg, the allegation of non-infringement was justified. The Court found the allegation of obviousness was not justified. In terms of double patenting, the Court wrote “[g]iven the expiry dates of each of the ‘426 patent (August 31, 2020) and the ‘728 patent (December 22, 2019), it is obvious that the ‘426 patent may be challenged for Double Patenting in light of the ‘728 patent, but not the other way around.”

    The Court ultimately found that the allegations of double patenting were not justified, nor those of inutility or lack of sound prediction. However, the Court found that the claims do not claim a vendible product but instead provide for a choice to be made from a variety of compounds and dosage ranges, and therefore the allegation of unpatentable subject matter for claiming a method of medical treatment are justified in respect of all but one claim, which covered a single dosage of each of two compounds. The Court dismissed this application for prohibition in respect of this patent.