In Merck & Co. Inc. v. Pharmascience Inc. (2010 FC 510), the Federal Court (FC) dismissed Merck & Co. Inc.'s (Merck) application to prohibit the Minister of Health from issuing a Notice of Compliance (NOC) to Pharmascience Inc. The FC found Canadian Patent No. 2,173,457 (the '457 patent) invalid on the basis of double patenting and anticipation. Significantly, the FC held that, despite its finding of anticipation, the '457 Patent was not obvious because prior art subsequent to the anticipating art would have discouraged any inquiry in to the relevant field of research.
Pharmascience had sought a NOC to market a generic version of the medicine finasteride, used in the treatment of male pattern baldness. Only dependent claim 5 of the '457 Patent remained in issue, and the FC summarized it as follows: "the use of finasteride for the preparation of a medicament adapted for oral administration useful for the treatment of male pattern baldness in a person and wherein the daily dosage is about 1.0mg." 
In Sanofi-Aventis Canada Inc. v. Ratiopharm Inc. (2010 FC 230), the Federal Court ("FC") denied Sanofi-Aventis Canada's (Sanofi) application to prohibit the Minister of Health from issuing a Notice of Compliance ("NOC") to Ratiopharm Inc. pursuant to section 6 of the Patented Medicines (Notice of Compliance) Regulations ("PMNOC Regulations"). The FC held Sanofi's Canadian Patent No. 2,177,772 was invalid for overbreadth, lack of utility and in any case was not infringed by the use of Ratiopharm's proposed composition.
Ratiopharm's NOC application was for irbesartan, a drug for treatment of cardiovascular ailments such as hypertension and heart failure. Canadian Patents 2,177,772 ("'772 patent") and 2,057,913 had been listed by Sanofi on the patent register in respect of irbesartan pursuant to section 4 of the PMNOC Regulations. Ratiopharm accepted that no NOC would issue prior to expiry of the '913 patent, so only the '772 patent remained for consideration. The '772 patent claims pharmaceutical compositions containing irbesartan, preferably in the form of tablets with a high relative amount of the active ingredient that allowed for a rapid dissolution and release.
In Apotex Inc. v. Merck & Co., Inc (2010 FC 287), the Federal Court of Canada (FC) held that Apotex is entitled to obtain compensation from Merck for having been kept out of the norfloxacin market for several years while the parties litigated Apotex's Notice of Compliance (NOC) application.
Apotex tried to market a generic version of norfloxacin in the early 1990s, a drug patented by Merck. Merck filed an order to prohibit Apotex from obtaining a NOC. The Supreme Court of Canada set aside the prohibition order on July 9, 1998 in Merck Frosst Canada v. Canada. Apotex sought relief under s.8 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 ("the 93 Regulations"), as amended by SOR/98-166 ("the '98 Regulations"), for delayed market entry caused by Merck's prohibition order application.
In Bauer Hockey Corp. v. Easton Sports Canada Inc. (2010 FC 361), the Federal Court ("FC") held Easton Sports Canada Inc. (Easton) infringed, and induced others to infringe, plaintiff Bauer's Canadian Patent No. 2302953 ("the '953 patent") claiming an improved skate having a one-piece quarter section. The FC found all skates manufactured by Easton using a claimed "F" pattern were infringing since these skates featured all of the essential elements claimed in the '953 patent design.
In Scott Paper v. Georgia-Pacific Consumer Products LP (2010 FC 478), the Federal Court of Canada (FC) set aside a decision from the Trade-Marks Opposition Board (TMOB) and reinstated applicant Scott Paper's trade-mark application covering a daisy flower square pattern design for use with bathroom tissue.
Scott Paper had appealed under section 56 of the Trade-marks Act (the Act) against respondent Georgia-Pacific's opposition on the grounds of confusion under 12(1)(d) and subsection 6(5), lack of entitlement under subsection 16(3) to register a confusing mark and lack of distinctiveness over the respondent's own mark.
In Apotex Inc. v. Syntex Pharmaceuticals International Inc. (2010 FCA 155), the Federal Court of Appeal ("FCA") affirmed the Federal Court's (FC) decision (2009 FC 494) dismissing Apotex's claim for damages under s.8 of the Patented Medicines (Notice of Compliance) Regulations ("PMNOCR"). The FCA held that s.8 of the PMNOCR does not apply where an innovator prevailed in PMNOCR prohibition proceedings but not in subsequent patent litigation, meaning generic manufacturers cannot retroactively apply a finding of invalidity to PMNOCR prohibition proceedings.
By 
|