Posts Tagged ‘obviousness’

FC Finds Anticipated Formulation Patent Non-Obvious Since Same Prior Art Would Teach Away From Invention

By Inder Gida, Kiernan A. Murphy and Nick Poon on July 1st, 2010 in Canada: Patents

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." (more...)

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FC interprets desired result claim language as unfulfilled promise in invalidating formulation patent for overbreadth and lack of utility

By Simon Picard and Arif A. Mahmood on July 1st, 2010 in Canada: Patents

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. (more...)

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CAFC Remands Inconsistent Jury Verdict Which Found Dependent Claims Obvious, But Not Antecedent Independent Claims

By Pat Bickley and Arif A. Mahmood on May 22nd, 2010 in United States: Patents

In Comparer Corp. v. Antec, Inc., the Court of Appeals for the Federal Circuit ("CAFC") upheld the District Court's claim construction but vacated the jury's verdicts on obviousness as irreconcilably inconsistent, remanding the case for a new trial on invalidity. Comaper had brought suit against Antec alleging willful infringement of multiple claims of U.S. Patent No. 5,955,955, a cooling device designed to mount within the drive bay of a computer. The jury found willful infringement of claims 1, 2, 7, 12, and 13, and that independent claims 1 and 12 were not invalid as obvious. However, the jury also found that dependent claims 2, 7, and 13 were obvious. Because the District Court did not grant a new trial based on the irreconcilably inconsistent verdicts the CAFC vacated the verdict and remanded. (more...)

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CAFC Vacates Obviousness Summary Judgement Of Automated Offer Solicitation System, Finding No Prior Art Allowed for Immediate Acceptance of Offers

By Matt Peters and Arif A. Mahmood on February 26th, 2010 in United States: Patents

In Source Search Technologies v. LendingTree, the Court of Appeals for the Federal Circuit ("CAFC") vacated the United States District Court of New Jersey's grant of summary judgment that U.S. Patent No. 5,758,328 ("the '328 patent"), a system for matching buyers and vendors over a network like the internet, was infringed but invalid. The CAFC affirmed the grant of summary judgment for the findings that the claims were not indefinite and that LendingTree's website offered "goods and services" as contemplated by the '328 patent but remanded the case for further fact finding on the infringement and validity issues. (more...)

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CAFC Rules Inherent Disclosure Must Disclose Elements As Arranged To Be Anticipatory Reference

By Pat Bickley and Arif A. Mahmood on February 23rd, 2010 in United States: Patents

In Therasense, Inc. v. Becton, Dickinson & Co., the Court of Appeals for the Federal Circuit (CAFC) upheld a jury verdict of invalidity even though the district court had given erroneous jury instructions where the error was harmless because the claims were obvious. Therasense and Abbott Laboratories (Abbott) claimed that Becton, Dickinson & Company and Nova Biomedical Corp. (BD/Nova) infringed U.S. Patent No. 5,628,890 (the '890 patent), which claimed electrochemical sensors for measuring glucose levels in blood. (more...)

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FC holds failure to identify adverse prior art in disclosed reference violates duty of good faith; invalidates Alzheimers treatment for anticipation, obviousness, and utility

By Patrick Hui on January 27th, 2010 in Canada: Patents

In Lundbeck Canada v. Minister of Health, 2009 FC 1102, the Federal Court of Canada (FC) dismissed Lundbeck's prohibition application against Ratiopharm in respect of two patents relating to memantine hydrochloride. Canadian patents 2,014,453 ('453 patent) and 2,426,492 ('492 patent) were listed by Lundbeck on the Patent Register under section 4 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (PMNOC Regulations). The patents relate to memantine, a drug used to treat individuals with Alzheimers. The '453 patent outlines the mechanism of action for memantine and the '492 patent suggests a method for combining memantine with other acetylcholine inhibitors (ACE inhibitors) to provide a synergistic effect. Ratiopharm served a Notice of Allegation on Lundbeck alleging that both the '453 and the '492 patents were invalid. The FC ruled that Ratiopharm's allegations of invalidity were justified with respect to both patents. In doing so, the FC employed the tests for anticipation, obviousness, utility and found a lack of good faith prosecution due to the failure to specifically identify adverse material in a disclosed prior art reference. (more...)

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