• Federal Court Of Appeal Holds That Patent Dedication to Be Assessed As Of Date of Hearing, Not Earlier
  • July 15, 2010 | Author: Jason C. Markwell
  • Law Firm: Ogilvy Renault LLP - Toronto Office
  • CASE:
    Sandoz Canada Inc. v. Abbott Laboratories et al.

    BIAXIN XL® (clarithromycin)

    PM(NOC) Regulations - section 6 proceeding

    Abbott Laboratories et. al.

    June 22, 2010


    On June 22, 2010, the Federal Court of Appeal ("FCA") granted Abbott's cross-appeal and dismissed Sandoz's appeal stemming from a decision of the Federal Court.  The Federal Court had granted to Abbott a prohibition order in respect of Canadian Patent No. 2,285,266 ("266 Patent") and denied it a prohibition order in respect of Canadian Patent No. 2,358,395 ("395 Patent").  The Federal Court of Appeal upheld the decision in respect of the 266 Patent and reversed the decision in respect of the 395 Patent.   

    In regard to the 266 Patent, the Federal Court held that Sandoz's allegations of invalidity against the 266 Patent were not justified. Sandoz asserted that the trial judge had failed to consider certain prior art and failed to properly assess the common general knowledge.  The FCA rejected Sandoz's arguments and held that the trial judge had not made any palpable or overriding errors.  The FCA stated that the trial judge was entitled to prefer the evidence of one witness over another.

    In regard to the '395 Patent, the Federal Court held that Sandoz's allegation of double patenting were justified, even though Abbott had dedicated the alleged double patent to the public ten days prior to filing its memorandum of argument.  The trial judge held that since the dedication had occurred after service of the Notice of Allegation, the dedication could not defend against the double patenting attack.

    The FCA disagreed.  It held that "after claims have been dedicated, the patent is to be construed without reference to the dedicated claims."  After considering the jurisprudence, including a decision of the Supreme Court of Canada, the FCA determined that "it is correct to assess the justification of allegations contained in a NOA as at the date of the hearing, at least where assessment as at the date of hearing will promote the purpose of the Regulations [to prevent patent infringement]."   The FCA concluded that "the purpose of the Regulations is not served in the present case by considering the allegation of double patenting as at the date the NOA was served, as this would ignore the effect of the dedication of the 541 Patent.  The result is that the Minister of Health may issue a Notice of Compliance to Sandoz, yet at the time of such issuance its allegation of double patenting is unjustified."

    For these reasons, the FCA held that the 395 and 541 Patents should have been considered as of the date of the hearing.  Accordingly, the FCA reversed the trial decision and granted to Abbott an order of prohibition in respect of the 395 Patent.